Bridgewater Associates, LP v. Andrew Vail / Maxim Analytico Consultants
Claim Number: FA2103001935650
Complainant is Bridgewater Associates, LP (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Andrew Vail / Maxim Analytico Consultants (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bridgewaterconsultingcorp.info>, <bridgewaterconsultingcorporation.com>, <bridgewaterconsulting.net>, and <bridgewaterconsultingcorp.com>, registered with NameCheap, Inc.; 1&1 IONOS SE.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2021; the Forum received payment on March 6, 2021.
On March 8, 2021; March 9, 2021, NameCheap, Inc.; 1&1 IONOS SE confirmed by e-mail to the Forum that the <bridgewaterconsultingcorp.info>, <bridgewaterconsultingcorporation.com>, <bridgewaterconsulting.net>, and <bridgewaterconsultingcorp.com> domain names are registered with NameCheap, Inc.; 1&1 IONOS SE and that Respondent is the current registrant of the names. NameCheap, Inc.; 1&1 IONOS SE has verified that Respondent is bound by the NameCheap, Inc.; 1&1 IONOS SE 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 March 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@bridgewaterconsultingcorp.info, postmaster@bridgewaterconsultingcorporation.com, postmaster@bridgewaterconsulting.net, postmaster@bridgewaterconsultingcorp.com. Also on March 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2021, the Forum received a request from Respondent for an extension. Respondent was informed of the Extension Fee, and no further correspondence or Response was received by Forum from Respondent.
On April 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the disputed domain names are registered under the name “Andrew Vail” at the same address in New York. The only difference in the registrant information is that two of the domain names also include the name of Respondent’s organization.
Having regard to the evidence and all the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The proceeding may therefore go forward in its present form.
A. Complainant
Complainant made the following contentions.
Complainant, Bridgewater Associates, is an investment management firm in the business of financial services. Complainant has rights in the BRIDGEWATER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,395,503, registered Oct. 17, 2000). See Compl. Ex. 4. Respondent’s <bridgewaterconsultingcorp.info>, <bridgewaterconsultingcorporation.com>, <bridgewaterconsulting.net>, and <bridgewaterconsultingcorp.com> domain names are confusingly similar to Complainant’s BRIDGEWATER mark because they each incorporate the mark in whole, simply adding the generic or descriptive term “consulting,” “corporation,” and/or “corp” as well as a “.net,” “”.com,” or “info” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s BRIDGEWATER mark. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to either host links in competition with Complainant or to host inactive webpages.
Respondent registered and uses the disputed domain names in bad faith. Respondent uses the <bridgewaterconsultingcorp.info> and <bridgewaterconsultingcorporation.com> domain names to host competing hyperlinks and uses the <bridgewaterconsulting.net> and <bridgewaterconsultingcorp.com> domain names to host inactive webpages. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the BRIDGEWATER mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an investment management firm in the business of financial services.
2. Complainant has established its trademark rights in the BRIDGEWATER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,395,503, registered Oct. 17, 2000).
3. Respondent registered the <bridgewaterconsultingcorp.com> domain name on December 15, 2019, the <bridgewaterconsulting.net> domain name on December 16, 2019, and the <bridgewaterconsultingcorp.info> and <bridgewaterconsultingcorporation.com> domain names on January 18, 2021.
4. Respondent uses the domain names to host links in competition with Complainant or to host inactive webpages.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BRIDGEWATER mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per 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 registration 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 BRIDGEWATER mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BRIDGEWATER mark. Complainant argues that Respondent’s <bridgewaterconsultingcorp.info>, <bridgewaterconsultingcorporation.com>, <bridgewaterconsulting.net>, and <bridgewaterconsultingcorp.com> domain names are confusingly similar to Complainant’s BRIDGEWATER mark because they each incorporate the mark in whole, simply adding the generic or descriptive term “consulting,” “corporation,” and/or “corp” as well as a “.net,” “”.com,” or “info” gTLD. Addition of a generic term and a TLD 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). Thus, the Panel agrees with Complainant and finds Respondent’s disputed domain names to be confusingly similar to the Complainant’s BRIDGEWATER mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
(a) Respondent has chosen to take Complainant’s BRIDGEWATER trademark and to use it in its domain names, adding the generic or descriptive term “consulting,” “corporation,” and/or “corp” which does not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <bridgewaterconsultingcorp.com> domain name on December 15, 2019, the <bridgewaterconsulting.net> domain name on December 16, 2019, and the <bridgewaterconsultingcorp.info> and <bridgewaterconsultingcorporation.com> domain names on January 18, 2021.
(c) Respondent uses the domain names to host links in competition with Complainant or to host inactive webpages.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Respondent does not have rights or legitimate interests in the <bridgewaterconsultingcorp.info>, <bridgewaterconsultingcorporation.com>, <bridgewaterconsulting.net>, and <bridgewaterconsultingcorp.com> domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s BRIDGEWATER mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information of record lists the registrant as “Andrew Vail / Maxim Analytico Consultants,” and Complainant contends that it did not authorize respondent’s use of the mark nor is Respondent commonly known by the disputed domain names. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii);
(f) Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use but rather uses the domain names to host links in competition with Complainant or inactive webpages. Use of a disputed domain name to host competing hyperlinks or for no active use at all is not a bona fide offering of goods or services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the links pages resolving at the <bridgewaterconsultingcorp.info> and <bridgewaterconsultingcorporation.com> domain names, claiming that the links are competitive with Complainant’s business. Complainant also provides screenshots of the error messages resolving at the <bridgewaterconsulting.net> and <bridgewaterconsultingcorp.com> domain names. See Compl. Ex. 6. Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <bridgewaterconsultingcorp.info> and <bridgewaterconsultingcorporation.com> domain names in bad faith because Respondent uses the domain names to host competing hyperlinks. Use of a disputed domain name to host competing pay-per-click links may suggest bad faith disruption of business pursuant to Policy ¶ 4(b)(iii) and attraction for commercial gain per Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant notes that the webpages resolving at the <bridgewaterconsultingcorp.info> and <bridgewaterconsultingcorporation.com> domain names contain links to third party financial services offerings from which Respondent most likely receives click-through fees. See Compl. Ex. 6. Therefore, the Panel finds bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Secondly, Complainant also argues that Respondent registered and uses <bridgewaterconsulting.net> and <bridgewaterconsultingcorp.com> domain names in bad faith by hosting inactive webpages. Failure to host an active webpage at a disputed domain name may suggest 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 screenshots of the error messages resolving at the <bridgewaterconsulting.net> and <bridgewaterconsultingcorp.com> domain names. See Compl. Ex. 6. Therefore, as the Panel agrees, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the BRIDGEWATER when it registered the disputed domain names. While constructive knowledge is insufficient to show bad faith, actual knowledge of a Complainant’s rights in a mark may suggest 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).”). Complainant argues that knowledge is evident from the well-known nature of the BRIDGEWATER mark and Complainant’s longstanding registration and use of the mark. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgewaterconsultingcorp.info>, <bridgewaterconsultingcorporation.com>, <bridgewaterconsulting.net>, and <bridgewaterconsultingcorp.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 8, 2021
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