WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bridgewater Associates, LP v. Bridgewater Capital, Eric Noveshen
Case No. D2012-1705
1. The Parties
The Complainant is Bridgewater Associates, LP of Westport, Connecticut, United States represented by Baker & McKenzie, LLP United States.
The Respondent is Bridgewater Capital, Eric Noveshen of Fort Lauderdale, Florida, United States.
2. The Domain Names and Registrar
The disputed domain names <bridgewaterfund.org>, <bridgwaterfund.net> and <bridgewaterfund.info> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2012. On August 27, 2012 the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On August 29, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. On October 1, 2012 the Respondent filed a response to the Complaint. On October 17, 2012 the Center received a Supplemental Filing from the Complainant and on October 18, 2012 a Supplemental Filing from the Respondent.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 11, 2012. The Panel finds that the Complaint was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant possesses trademark rights in BRIDGEWATER, United States Registration No. 2,395,503. Complainant registered its mark with the United States Patent & Trademark office on August 11, 1999. The firm serves institutional clients including pension funds, endowments, foundations, foreign governments and central banks.
Respondent Bridgewater Capital is a small Bermuda registered fund owned and managed by an American individual named Eric Noveshen. In its Response, the Respondent has indicated that “The Respondent Bridgewater Capital Ltd. submits to the United States laws and jurisdiction”. It registered the disputed domain names on April 25, 2012 with the registrar GoDaddy.com, LLC.
5. Parties’ Contentions
The Complainant is one of the largest hedge fund company in the world and a well known global investment manager founded in 1975 with approximately USD 120 billion in assets under management. It owns numerous registrations throughout the world for the service mark BRIDGEWATER. The Complainant’s website is “www.bwater.com”.
The Complainant has used the mark BRIDGEWATER in connection with financial and investment management services for over 35 years.
Complainant asserts that the disputed domain names <bridgewaterfund.org>, <bridgewaterfund.net> and <bridgewaterfund.info> are confusingly similar in terms of sound, appearance and commercial impression to the Complainant’s trademark under paragraph 4(a)(i) of the Policy and that use of entity’s entire trademark with non-distinctive or descriptive matter creates confusion.
In addition, the Respondent is passively holding the domain names on parked sites featuring pay-per-click advertisements. According to the Complainant, the whole goal of parking the disputed domain names appear to be to generate a profit. Therefore the Policy doesn’t require the owner of the domain to be the entity that commercially gains from the diversion.
On May 30, 2012, the Complainant sent to the Respondent’s administrative contact Eric Noveshen a cease and desist letter which informed the Respondent of the Complainant’s rights in its BRIDGEWATER mark, and the Complainant’s concerns as to the Respondent’s use and registration of the disputed domain names.
On August 7, the Complainant received a letter from Eric Noveshen in which he revealed that the Respondent is the owner of the disputed domain names. This letter provides no explanation of what Bridgewater Capital is, or what legitimate interests the Respondent may have in the disputed domain names.
Sometime between receipt of the Respondent’s August 7, 2012 letter and August 19, 2012, the disputed domain names were all redirected to a website at “www.bridgewaterfund.org”. This website appears to be a holding page as it contains no content other than the title “MY SITE” and subtitle “This is my site description”, and provides no explanation of what Bridgewater Capital is, or what legitimate interests the Respondent may have in the disputed domain names.
The Complainant alleges that Respondent’s continued use of the disputed domain names constitutes a violation of UDRP paragraph 4 of the Policy.
It states that the Respondent has no rights or legitimate interests in respect of the disputed domain names since there is no relationship between the Respondent and the Complainant and the Respondent is not licensed by the Complainant nor otherwise authorized to use the Complainant’s service mark.
Further the Complainant alleges that the Respondent acted in bad faith since it had constructive notice of Complainant’s company and well-known trade name.
Thus, in accordance with paragraph 4(i) of the Policy, Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the domain names be transferred to the Complainant.
The Response to Complaint was filed on October 1, 2012 on behalf of Bridgewater Capital and Eric Noveshen and requested the Panel to deny the remedy requested by the Complainant and make a finding that the Complainant is guilty of attempted reverse domain name hijacking.
It stated that Bridgewater Capital is a small Bermuda registered mutual fund designed to provide bridge capital or short term loans directly to small publicly traded and private companies via the purchase of promissory notes and secured asset-based lending. It was established in Bermuda on April 10, 2006 and according to the Respondent it “submits to the United States laws and jurisdiction”. It registered <bridgewaterfund.com> and <bridgewaterfunds.com> on May 1, 2006. It alleges that at all times it has held itself out utilizing <bridgewaterfund.com> and <bridgewaterfunds.com>.
The Respondent alleged that it was not aware of Complainant’s business when the domain <bridgewaterfund.com> was registered in 2006 and any use would not be an infringement of Complainant’s rights because the use is in a segment of the financial industry which is different than Complainant’s.
In addition it alleged that Complainant is not a “fund” as they were a partnership that acts as an investment manager or advisor to the operation of hedge funds and portfolios.
The Respondent considers that because it is not using the disputed domain names, it should not be penalized for holding it for future projects. It alleges that it has not yet constructed a website due to the severe economic downturn and the inability publicly market the Respondent’s business to the general marketplace.
The Respondent denies its bad faith.
6. Discussion and Findings
To prevail on its Complaint, the Complainant must prove that: (i) The disputed domain names are identical or confusingly similar to the trademark; (ii) The Respondent has no right or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Sony Kabushiki Kaisha aka Sony Corp. v. Sony Holland, WIPO Case No. D2008-1025.
The Panel is of the opinion that the Supplemental Filings of the parties in this case do not contain any information that could not have been provided in either the Complaint or the Response. The Panel will therefore ignore then in rendering its decision.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark.
The disputed domain names <bridgewaterfund.org>, <bridgewaterfund.net> and <bridgewaterfund.info> contain sufficient similarity to the Complainant’s mark BRIDGEWATER to be considered confusingly similar under the Policy. Panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety typically results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001) (“[T]he fact that a Domain Name wholly incorporates a Complainant's registered Mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such Marks”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001) (<playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (February 28, 2000) (the distinctive features of the domain name were the complainant's mark).
The addition of the generic name "fund" does not avoid confusion. In fact, since the term describes the Complainant's products, the addition of "fund" is more likely to increase confusion. The incorporation of a Complainant's well-known trademark in the registered domain names is considered sufficient to find the domain names confusingly similar to the Complainant's trademark. (see Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 (April 19, 2000) (finding that because the domain name <quixter-sign-up.com> incorporates in its entirety the Complainant's distinctive mark, QUIXTER, the domain name is confusingly similar); Hewlett-Packard Company v. Posch Software, NAF Case No. FA95322 (September 12, 2000).
In the Panel’s view, it is irrelevant that there exist several companies with the name Bridgewater and even cities in the United States with that name since the Complainant is well known as one of the world’s largest hedge fund company.
B. Rights or Legitimate Interests
The Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names.
There is no relationship between the Complainant and the Respondent. Neither is the Respondent licensed by the Complainant nor otherwise authorized to use the Complainant’s service marks.
The record does not support a finding that Respondent operates the disputed domain names for a legitimate noncommercial or fair use, or in connection with a bona fide offering of goods or services. The Respondent is rather passively holding the disputed domain names. As of July 11, 2012 the disputed domain names resolve to parked sites featuring pay-per-click advertisements.
Thus, based on the evidence of record, the Panel finds that no basis exists which would appear to legitimize a claim by Respondent for the disputed domain name under paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent’s registration and use of the disputed domain names was in bad faith.
The trademark registration of record confirms Complainant's contention that it had long been using its mark and its corresponding domain names when the disputed domain names were registered in 2012. Thus, it is irrelevant that the Respondent registered other domain names like <bridgewaterfund.com> already in 2006 since this is not a subject of this proceeding. The undisputed evidence shows that Respondent has, by using the disputed domain names to resolve to parked sites featuring pay-per-click advertisements, effectively used the disputed domain names to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark. ACCOR v. Nick V, ActionStudio, WIPO Case No. D2008-0644 (finding bad faith).
The Complainant is well-known in the financial sector in 2012 and well before 2006. Since the Respondent is also operating in the financial sector (and indicated a desire to set up a hedge fund) it should have known of Complainant’s trademark and well-known trade name. A simple Internet search of the term “bridgewater” or “bridgewater fund” by the Respondent would have discovered both Complainant and Complainant’s BRIDGEWATER marks. In the Panel’s view, it can therefore be properly concluded that the Respondent must have had knowledge of Complainant and its trade mark at the time the disputed domain names were registered.
The Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
D. Allegation by Respondent of Reverse Domain Name Hijacking
Since the Complainant has succeeded in establishing each of the three essential elements required under the UDRP the requirements of Reverse Domain Name Hijacking of paragraph 15(e) of the Rules are not fulfilled. Therefore the Panel denies the Respondent’s claim.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <bridgewaterfund.org>, <bridgewaterfund.net> and <bridgewaterfund.info> be transferred to Complainant.
Maxim H. Waldbaum
Dated: October 22, 2012