Bridgewater Associates, LP v. Tony Klausing
Claim Number: FA2101001928070
Complainant is Bridgewater Associates, LP (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tony Klausing (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bridgewaterbitcoin.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2021; the Forum received payment on January 12, 2021.
On January 13, 2021, Google LLC confirmed by e-mail to the Forum that the <bridgewaterbitcoin.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bridgewaterbitcoin.com. Also on January 14, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 1, 2021.
Complainant submitted an Additional Submission on February 3, 2021. From the documentation available to the Administrative Panel (the "Panel"), the Additional Submission does comply with Rule 7 of the Forum’s Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Forum Supplemental Rules").
Also on February 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Petillion as Panelist.
Having reviewed the communications records, the Panel finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSION
Complainant made an Additional Submission beyond the initial Complaint.
Forum Supplemental Rule 7 gives the Panel complete discretion on whether to accept any late-filed materials. Although the Panel has the right to request additional materials, the parties have no right to submit additional materials absent the Panel’s agreement. Rule 12; Forum Supplemental Rule 7.
In exercising this discretion, the Panel is mindful that one of the promises of the Policy is to ensure the rapid review and adjudication of domain name disputes. That promise would be undermined were parties encouraged to submit replies, which may themselves engender sur-replies.
Panels are generally not inclined to allow unsolicited additional submissions by the parties unless the party seeking to make the additional submission has shown some exceptional circumstances or the panel in its discretion finds there is some additional information or pertinent facts in the additional submissions that is crucial to the case and such new information could not have possibly been included in the original or amended complaint.
In this case, the Panel finds there is no such exceptional circumstance, crucial information or pertinent facts that justifies allowing Complainant’s Additional Submission. The Panel therefore disregards this Additional Submission.
A. Complainant
Complainant is an investment management firm that manages over $160 billion in global investments for a wide variety of clients world-wide. Complainant claims to have rights in the BRIDGEWATER mark based upon various registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,395,503, registered Oct. 17, 2000). See Compl. Ex. 4. According to Complainant, Respondent’s <bridgewaterbitcoin.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark, simply adding the generic or descriptive term “bitcoin” and the “.com” generic top-level domain (“gTLD”).
Complainant argues that Respondent does not have rights or legitimate interests in the <bridgewaterbitcoin.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to register or use Complainant’s BRIDGEWATER mark or the disputed domain name. Additionally, Complainant submits, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent makes no active use of the disputed domain name.
According the Complainant, Respondent registered and uses the <bridgewaterbitcoin.com> domain name in bad faith because Respondent fails to make any active use of the disputed domain name. Further, given the reputation of Complainant and its BRIDGEWATER mark in the global financial and investment services industries, Complainant submits there can be no doubt that Respondent was aware of Complainant and its BRIDGEWATER mark when it registered the disputed domain name.
B. Respondent
Respondent claims being a professional web developer and to have acquired the <bridgewaterbitcoin.com> domain name to market and distribute its tools to a broader audience. Respondent maintains to have registered the domain name for the following reasons: “I liked the alliteration and Bridgewater has a regal connotation and is affiliated closely with England and staid New England. I note that many geography-focused bitcoin domain names are very popular.”
Respondent essentially claims that the term “Bridgewater” is not only linked to Complainant but has other meanings or connotations.
Complainant, Bridgewater Associates, is an investment management firm providing various financial services, including without limitation financial investment and fund management services. Complainant has rights in the BRIDGEWATER mark based upon various registrations, including in the United States where the Respondent is located (e.g. Reg. No. 2,395,503, registered with the USPTO on October 17, 2000). See Compl. Ex. 4.
The disputed domain name was registered on January 5, 2021. See Compl. Ex. 5. According to the evidence provided by Complainant, the disputed domain name did not resolve to any active website. See Compl. Ex. 6.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has rights in the BRIDGEWATER mark based upon various registrations, including with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of registrations with the USPTO (e.g. Reg. No. 2,395,503, registered Oct. 17, 2000). See Compl. Ex. 4. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <bridgewaterbitcoin.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark, simply adding the generic or descriptive term “bitcoin” and the “.com” gTLD. The addition of a generic/descriptive term and a gTLD is inconsequential in determining confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Here, Complainant asserts that consumers would expect the term “bitcoin” to be associated with Complainant and its financial services. The confusing nature of this additional term will likely bear on the assessment of the second and third elements of the Policy. In any event, the Panel finds that Complainant’s BRIDGEWATER mark is clearly recognizable within the <bridgewaterbitcoin.com> domain name and the addition of the term “bitcoin” is not sufficient to distinguish the disputed domain name from Complainant’s mark. The Panel therefore finds that the disputed domain name is confusingly similar to the BRIDGEWATER mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <bridgewaterbitcoin.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or to use Complainant’s BRIDGEWATER mark. Lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the Respondent is named “Tony Klausing” and no information in the record indicates that Respondent was authorized to use Complainant’s mark.
Additionally, Complainant claims that Respondent fails to use the <bridgewaterbitcoin.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent makes no active use of the domain name. Passively holding a disputed domain is generally not considered a bona fide offering of goods or services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the error page resolving at the disputed domain name. See Compl. Ex. 6.
Therefore, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The burden therefore shifts to Respondent to come forward with evidence of its rights or legitimate interests.
Respondent implies that it has rights and legitimate interests in the disputed domain name by referring to the regal connotation and geographic meaning of the term “Bridgewater”. Respondent states that the term “Bridgewater” is a compound word of forceful connotation and refers to a list of Wikipedia pages which all start with this term and mainly refer to “Bridgewater” as a geographic location. Respondent also provides a list of domain names registered by third parties which combine a geographic location and the term “bitcoin”.
While the Panel agrees that the term “Bridgewater” could refer to a geographic location, in this case Respondent fails to prove use or preparations to use the <bridgewaterbitcoin.com> domain name in connection with such geographic location. In fact, Respondent does not prove any preparations to use the disputed domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. The existence of other domain names combining a geographic term and the term “bitcoin” is irrelevant in this regard. Respondent must prove its rights or legitimate interests in the concrete circumstances of the present case. However, the Panel finds that Respondent fails to meet its burden of proof.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). In this case, the disputed domain name incorporates Complainant’s BRIDGEWATER trademark in its entirety and adds the term “bitcoin”, which refers to a cryptocurrency. In view of Complainant’s financial services business, the Panel finds that the disputed domain name carries a risk of implied affiliation with Complainant. The Panel therefore concludes that Respondent has no rights or legitimate interests in the <bridgewaterbitcoin.com> domain name.
Complainant argues Respondent registered the <bridgewaterbitcoin.com> domain name in bad faith. Specifically, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the BRIDGEWATER mark at the time of registering the <bridgewaterbitcoin.com> domain name. According to Complainant, Respondent could not have registered the disputed domain name by coincidence based upon Complainant’s well-established reputation and long-term use of the BRIDGEWATER mark in the global financial and investment services industries. While constructive knowledge is insufficient, actual knowledge of a complainant’s rights in a mark may support a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
In the present case, the Panel finds it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name. Complainant provided ample evidence of the reputation of its BRIDGEWATER mark in the financial industry through frequent media coverage. See Compl. Ex. 3. The disputed domain name includes Complainant’s known trademark in its entirety and combines it with a term which also relates to the financial and investment services industries. Moreover, the first link in the list of Wikipedia articles beginning with “Bridgewater” provided by Respondent mentions Complainant as the first result. The Panel therefore finds that Respondent did have actual knowledge of Complainant’s mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered and uses the <bridgewaterbitcoin.com> domain name in bad faith because Respondent fails to make any active use of the domain name. Passively holding a disputed domain name may evidence bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). As previously noted, Complainant provides a screenshot of the error page resolving at the disputed domain name. See Compl. Ex. 6. In the circumstances of this case, the Panel finds that this is a further indication of bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgewaterbitcoin.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: February 8, 2021
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