The Complainant is Tudor Investment Corporation, United States of America (“United States”), represented by Ropes & Gray LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carl Neger, Tudor Capital Group, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 19, 2021.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. On July 30, 2021 and on August 25, 2021, the Respondent sent email communications to the Center, but did not submit a formal response. The Center informed the Parties that it would proceed to Panel Appointment on August 26, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 15, 2021. The Panel finds that it 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 BackgroundThe Complainant is a hedge fund founded by Paul Tudor Jones II and incorporated in 1980 under the law of the State of Delaware, United States. The Complainant operates from offices in Connecticut, New York, and California in the United States, and the Tudor Group has affiliated entities in London, Sydney, Paris, and Singapore, all which use the name “Tudor”. The Complainant is frequently mentioned in financial media, and the Complainant’s second quarter 2021 filings with the United States Securities and Exchange Commission (SEC) stated that it managed nearly USD 5.3 billion for institutional investors. The Complainant has operated online at “www.tudor.com” since 1992.
The Complainant holds United States Trademark Registration Number 3585341 (registered on March 10, 2009) for TUDOR as a standard character mark. The Complainant also claims common law rights in TUDOR.COM as a service mark.
The Registrar reports that the Domain Name was created on October 9, 2013 and was registered in the name of a domain privacy service. After receiving notice of the Complaint in this proceeding, the Registrar identified the underlying registrant as the Respondent Carl Neger, who listed his organization as Tudor Capital Group, with a postal address in Lakewood, New Jersey, United States. The online database of the New Jersey Division of Revenue and Enterprise Services shows that Tudor Capital Group LLC of Lakewood, New Jersey is a foreign limited liability company first registered on October 14, 2010. The online database of the New York Division of Corporations shows that Tudor Capital Group LLC is a New York limited liability company registered since August 6, 2010, listing its address in Lakewood, New Jersey.
The Complaint attaches an alert from the SEC dated July 30, 2019, adding “Tudor Capital Group a.k.a. Tudor Capital Global Financial Consultancy Firm” to the SEC PAUSE list of “unregistered soliciting entities” that “falsely claim to be registered, licensed, and/or located in the United States in their solicitation of investors” or “impersonate genuine U.S. registered securities firms”. This entry remains on the SEC PAUSE list as of the date of this Decision, listing a postal address in Seattle, Washington, United States but showing the Domain Name as the website address. Thus, it appears that the SEC has identified the Respondent as an entity that falsely presents itself as a registered securities firm or impersonates a registered securities firm.
The Domain Name resolves to a landing page parked “free” by the Registrar, with a button to “Get This Domain” leading to a web page advertising the Registrar’s services, followed by a series of links for “Related searches” leading to third-party pay-per-click (“PPC”) advertising on such topics as “Investment Management”, “Financial Management”, “Capital Management Investment”, and “Investment Fund”. The Panel notes that screenshots archived by the Internet Archive’s Wayback Machine show several such landing pages associated with the Domain Name over a period of several years.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Name is confusingly similar to its TUDOR mark and states that the Complainant has no affiliation with the Respondent and has never granted the Respondent permission to use its mark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name and has not used it for a bona fide commercial purpose but only to falsely present itself as a legitimate United States securities firm, as indicated by the SEC PAUSE alert. The Complainant argues that allowing the Domain Name to be used for third-party PPC advertising of unrelated or potentially competing financial services also reflects bad faith. Even if the Respondent has not yet developed its own active website associated with the Domain Name, the Complainant cites the “passive holding” doctrine to characterize the Respondent’s conduct as bad faith, “an abusive threat hanging over the head of the Complainant.”
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
On July 30, 2021, the Respondent stated that “[i]t will cost me around $100,000 to reset all my marketing and LLC and business relationships etc. Im not looking for a fight but im not changing my entire network because someone woke up ten years after I opened this LLC” and that “I have listed the domain for sale for the $100,000 I mentioned . I will leave like that until monday evening .I will pull the listing by then.”
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds a trademark registration for TUDOR as a standard character mark; it is not necessary to assess its common law trademark claims. The Domain Name incorporates this mark in its entirety and adds the dictionary words “capital” and “group”. Such terms do not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id., section 1.11.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered mark for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights, a lack of permissive use, and use by the Respondent only for PPC advertising, some of it competing with the Complainant, and with respect to a business that the United States federal securities regulator deems to be falsely representing itself as a registered securities firm. These do not appear to be uses in connection with a bona fide commercial offering. Thus, the burden passes to the Respondent.
The Respondent established a limited liability company with a name corresponding to the Domain Name in 2010. This was before the current dispute arose, but it was after the Complainant obtained its trademark registration and after the Complainant had been doing business for some thirty years under the TUDOR name. The record suggests that at some point during those thirty years the mark became protectable as a common law mark, and it was registered in 2009. “Tudor” is a family name, and the TUDOR mark was well known in financial circles by the time the Respondent registered the company name and Domain Name. But it does not appear from the Internet Archive’s Wayback Machine that the Respondent has ever published an active website associated with the Domain Name, and the Respondent has not come forward to show that it is conducting a lawful business under that name or has otherwise established rights or legitimate interests in the Domain Name.
It is now more than eleven years since the Respondent registered a limited liability company with a name corresponding to the Domain Name, and it is incumbent on the Respondent to show credible preparations for a legitimate use of the Domain Name. See WIPO Overview 3.0, section 2.2 (“the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual”). In this case, even apart from the cautionary SEC listing, allowing the Domain Name to be used in the interim for PPC advertising, exploiting confusing similarity with a well-known mark in the securities industry, would undercut any potential claim to legitimate use during an extended period of “preparation”.
The Panel finds on this record that the Respondent has not demonstrated rights or legitimate interests and concludes that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant’s mark is distinctive, long-established, and well known in connection with securities investments. Even in 2010, at the time of the Domain Name registration, the mark represented a successful, thirty-year-old hedge fund. The Respondent appears to have attempted to present itself as a securities investment firm, based on the Domain Name and the SEC caution. It may be presumed, therefore, that the Respondent was aware of the Complainant and sought to benefit from an implied association with the Complainant. Notably, the Respondent has not come forward to offer an alternative explanation for registering the Domain Name.
The record demonstrates that the Respondent, who remains responsible for the use of the Domain Name, has allowed the Domain Name to be used for PPC advertising over a period of years, diverting Internet users to the commercial websites of third parties including the Complainant’s competitors. This accords with the illustration of bad faith in the Policy, paragraph 4(b)(iv).
In addition, based on the SEC PAUSE alert, it seems that the Respondent has also used the Domain Name in its address in presenting itself falsely as a registered securities firm. This must also be considered a bad faith use of the Domain Name.
The Panel finds that the Respondent registered and used the Domain Name in bad faith and that the third element of the Complaint has been established.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
W. Scott Blackmer
Sole Panelist
Date: October 29, 2021