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Another UDRP FAIL! As Panel Refuses to Transfer a Domain Used for Phishing

Posted on the 28 October 2015 by Worldwide @thedomains

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.

DECISION

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.


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