Another interesting UDRP where a domain name was found to be used for Phishing and fraud but the panel refuses to transfer it because the trademark wasn’t identical or confusingly similar to a trademark or service mark in which Complainant had rights.
Yes its a head scratcher.
Bridgewater Associates, LP (“Complainant”), brought a UDRP on the new gTLD bwater.site
The sole panelist David E. Sorkin found although the domain was registered and was being used in bad faith and that the domain owner had no rights or legitimate interests in respect of the domain name, found the registration was not identical or confusingly similar to a trademark or service mark in which Complainant had rights.
Oh yeah the domain holder didn’t even bother to file a response.
Here are the highlights
The disputed domain name bwater.site corresponds to Complainant’s registered BRIDGEWATER mark, abbreviating the name BRIDGEWATER to “bwater” and appending the top-level domain “.site” thereto. Complainant uses the same abbreviation in its own domain name, . However, Complainant does not claim any trademark rights in BWATER, relying instead upon a claim of confusing similarity to BRIDGEWATER.
Confusing similarity is to be determined by reference only to the disputed domain name and the mark or marks in which Complainant claims rights. The manner in which the domain name has been used, including the content of the corresponding website, is not relevant for purposes of paragraph 4(a)(i) of the Policy.
It is true, as Complainant argues, that a domain name containing an abbreviated form of a mark may be confusingly similar to the mark. Complainant cites three previous UDRP proceedings as examples: Capital One Financial Corp. v. Mike Morgan, FA 1579519 (Nat. Arb. Forum Oct. 24, 2014) finding confusingly similar to MORGAN STANLEY and SMITH BARNEY); and AOL Inc. v. Pauta’s International SA, FA 1402910 (Nat. Arb. Forum Sept. 19, 2001) (finding confusingly similar to HUFFINGTON POST). But the trademark must be easily recognizable within the domain name, and a higher degree of similarity may be required where the mark exists within a crowded field.
The Panel notes that Complainant is not the exclusive user of the term BRIDGEWATER.
To the contrary, there are numerous instances of the term as a geographic name (including multiple instances in both the United States and Australia), and there are many businesses and institutions apart from Complainant that use the term as a name or mark—indeed, Wikipedia includes a lengthy page devoted to various uses of the term. See Wikipedia, Bridgewater, http://en.wikipedia.org/wiki/Bridgewater (disambiguation page).
Furthermore, BWATER could refer equally well to many other terms (e.g., backwater, blackwater, bluewater, brightwater, broadwater, etc)
However despite finding that the domain holder “clearly intended to target Complainant by using a domain name similar to Complainant’s domain name, the Respondent’s use of the domain name is irrelevant here; only the domain name and the trademark are to be considered.
The Panel finds that the disputed domain name is not confusingly similar to Complainant’s BRIDGEWATER mark for purposes of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests.
The disputed domain name corresponds closely to Complainant’s own domain name, and apparently its sole use has been in connection with a website designed to exploit confusion with Complainant and mislead Internet users into providing personal information to Respondent for fraudulent purposes.
Registration and Use in Bad Faith
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.”
Respondent’s registration and use of the disputed domain name for what appears to be a fraudulent phishing scheme aimed at Complainant’s clients or potential clients is evidence of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). See, e.g., Morgan Stanley, supra. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Why is it a headscratcher?
You posted the exact reason is what denied in your post. The UDRP is not interested in usage control of names at large. This is not confusing at all ! The name is not confusing.
I’m not an apologist for nefarious behavior or misuse of the site but just that the issue be resolved differently. A transfer in this case would be a huge problem for domain holders who would all of a sudden have to worry about all potential abbreviations of a trademark which is not what the trademark system is supposed to provide for as far as I know.
John Berryhill says
I agree, if “BWATER” is confusingly similar to “BRIDGEWATER”, then everyone can just get rid of their domains right now.
The impulse is to say “this guy was doing ‘something bad’, so let’s stop it”.
But if that’s the way things are going to go, instead of writing down rules and applying them, then everyone has their own definition of ‘something bad’.
Don’t throw out the baby with the bwater. UDRP Is strictly for rights holders to redress clear infringement, and expanding it to other causes of actions would be unwise.
The decision was correct.
I agree with the panel. The complainant should have gone to court for redress on the phishing issue and not the filing of a UDRP.