WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. H. Pouran
Case No. D2002-0770
1. The Parties
1.1 The Complainant is The Nasdaq Stock Market, Inc. a corporation organized and existing under the laws of Delaware with a place of business at New York, New York 10036, United States of America. The Complainant is represented by Karol A. Kepchar and Chad T. O'Hara, McLean, Virginia 22102, United States of America ("Complainant").
1.2 The Respondent is H. Pouran, Islamic Republic of Iran ("Respondent").
2. The Domain Name and Registrar
2.1 The domain names at issue are:
2.2 The Registrar is OnlineNic, Inc. dba China-C, San Francisco, California 94116, United States of America (the "Registrar").
3. Procedural History
3.1 On August 16, 2002, the WIPO Arbitration and Mediation Center (the "Center") received the Complaint (in electronic form, via e-mail). On August 19, 2002, hardcopies of the said Complaint arrived at the Center.
3.2 On August 19, 2002, the Center acknowledged receipt of the Complaint, sending a copy of this acknowledgement to Respondent. The Center specified to the parties that it would review the Complaint to determine whether it complied with the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 (the "Policy"), 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"); that if the Complaint satisfied such formal requirements, the Center would notify so to Respondent in accordance with Paragraph 4 (a) of the Rules and that Respondent would then have 20 calendar days within which to submit a Response.
3.3 On the same date the Center sent a Request for Registrar Verification to the Registrar of the disputed domain names. The Registrar submitted a response to the Center on August 26, 2002, wherein such Registrar confirmed that it had received a copy of the Complaint, that the domain names and are registered with the Registrar and that Mr. H. Pouran is the Registrant, Administrator, Technical Contact and Billing Contact for the said domain names. Full Whois contact details regarding the said domain names were provided by the Registrar. The Registrar further confirmed that the Policy applies to the two contested domain names, that these domains will remain locked during the course of this administrative proceeding, and that the language of the registration agreements regarding the disputed domain names is English. The Registrar noted that the Registrant had not submitted in his Registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the disputed domain names.
3.4 On August 20, 2002, Respondent sent an e-mail communication to the Center. Said communication read:
"Dear:
Please read our attachments we are ready to transfer our websites and we will acc[ep]t what you will offer.
I look forward to hearing from you.
H. Pouran
Respectfully submitted"
This correspondence (and its attachments) will be addressed in more detail hereinafter.
3.5 On August 21, 2002, the Center forwarded the foregoing e-mail communication to Complainant.
3.6 On that same day, Complainant sent a reply to the Center, stating, inter alia, that
"Mr. Pouran's email originally offered to transfer the domain names for thousands of dollars, based upon his alleged expenses. Complainant will not agree to such outrageous expenses and has informed Mr. Pouran of this. Complainant has offered to reimburse Mr. Pouran for his out of pocket expenses incurred in the registration and transfer of the domain name. Such expenses would be limited to the actual registration and transfer fees charged by the registrar, OnlineNIC."
3.7 On August 26, 2002, the Center sent a Request for Amendment to Mutual Jurisdiction to Complainant, to inform Complainant that according to the Registrar, Respondent had not "submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names(s) (Rules, Paragraph 1)", and that Complainant had to amend its Complaint in order to "consent to the jurisdiction of the courts at the location of the domain-holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the Complaint was submitted to the Center." The deadline granted to cure this deficiency was August 31, 2002. This communication from the Center was copied to Respondent. On the same day, Complainant sent a reply to the Center. Complainant requested copies of Registrar's communications regarding the matter set forth in this paragraph. Complainant stated that, in its opinion, "[a]ccording to the Agreement, Respondent HAS submitted to the jurisdiction of the court identified in Complainant's Complaint (The U.S. District Court for the Northern District of California)" and thus claimed that it "need not expressly consent to the jurisdiction of the courts of Respondent's domicile." On August 27, 2002, the Center required the Registrar to confirm where the location of its principal office was. On the same day, the Registrar confirmed that the principal office of the Registrar is in China. On August 28, 2002, the Center informed Complainant of this fact, and advised that according to paragraph 1 of the Rules, mutual jurisdiction means:
"[...]a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider." (Emphasis added by the Center).
The Center continued its explanation by saying that accordingly, since Respondent had not submitted in its Registration agreement to the jurisdiction at the location of Registrar's principal office (China), Complainant was obliged to expressly consent to the jurisdiction of the courts at the location of Respondent as shown in Registrar's Whois database at the time the Complaint was submitted to the Center (Iran).
3.8 On August 27, 2002, Respondent sent an e-mail to the Center, and a copy thereof to Complainant, in order to "clarify some of Iran business conditions and rules." This e-mail will be properly addressed hereinafter.
3.9 On August 29, 2002, the Center issued a reply to the Respondent, acknowledging receipt of the communication mentioned in the previous paragraph, and explaining that "the Administrative Proceeding in the above case ha[d] not yet commenced." The Center also explained that "[a]ll concerned Parties [would] be informed of the commencement of the Administrative Proceeding by the issuance of [the] 'Notification of Complaint and Commencement of Administrative Proceeding'" and that such notification would "inform the Respondent of the procedures that need[ed] to be followed in filing of a Response and of the Response due date." The Center also provided Respondent with guidance as to where to find information regarding the Center's Dispute Resolution Service, the Policy and the filing of a Response.
3.10 On August 30, 2002, Complainant submitted to the Center an Amended Complaint in hardcopy, which was followed by an e-mail confirmation received by the Center on September 3, 2002.
3.11 On September 3, 2002, the Center verified that the Complaint satisfied the formal requirements of Policy, the Rules and the Supplemental Rules. The Center also confirmed that payment was made by the Complainant.
3.12 On September 4, 2002, according to Paragraph 2(a) of the Rules, the Center notified the Respondent by courier (to the postal addresses provided by Respondent to Registrar and published on the Registrar's Whois database �before and after the changes made to Respondent's contact information on August 8, 2002, i.e., one address in Iran and one address in the U.S.) and e-mail (to the e-mail addresses provided by Respondent to Registrar with respect to each of the disputed domain names and published on the Registrar's Whois database, as well as the electronic addresses mandated by Paragraph 2(a)(ii)(B) of the Rules), that an administrative proceeding had been commenced against him pursuant to the Policy and that the formal date of the commencement of the administrative proceeding would be September 4, 2002, (in accordance with the Rules, Paragraph 4 (c)). The Center also informed Respondent that the last day for sending his Response to the Complainant and to the Center was September 24, 2002. The Center further explained to Respondent that if his Response was not sent by the said date, he would be considered in default; the consequences of a default were also explained to Respondent. This Panel was presented with evidence showing that the Center transmitted the said notification to the above mentioned e-mail addresses and that the courier service hired by the Center to deliver the said notifications actually delivered them at the addresses (in Iran and the U.S.) set forth by Respondent as his contact information. Therefore, this Administrative Panel assumes that the above mentioned notifications were delivered to the electronic and physical addresses provided by Respondent to Registrar.
3.13 On September 26, 2002, the Center sent to the Respondent, via e-mail, a Notification of Respondent Default.
3.14 On September 29, 2002, Respondent sent an e-mail communication with attachments to the Center. The communication read:
[...] The attachments are my replys [sic] to your questions and I am ready to offer any document that you want to save our rights.
Sincerely yours
H. Pouran"
The attachments to this communication are entitled: document NO. 1, document NO. 2, and document NO. 3. They comprise those attachments already mentioned in points 3.4 and 3.8, plus an additional document with comments from Respondent.
3.15 Considering that Respondent did not produce a valid Response that fulfills the requirements set forth in Paragraph 5 of the Rules, Respondent is in default (see point 3.13 supra). Therefore, according to Paragraph 5(e) of the Rules, this Panel is not bound to admit and consider it in rendering its decision. Respondent has been communicating in English with Complainant since June 6, 2002, and with the Center since August 20, 2002. Respondent was duly informed of the nature of this administrative proceeding and of the importance of submitting a Response before the September 24, 2002, deadline, the steps that needed to be taken to prepare and file the said Response, as well as the consequences of not doing so (see point 3.12 supra). However, following The Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002), this Panel will admit and consider Respondent's communications mentioned in points 3.4, 3.8 and 3.14 of this decision, in order to ensure "that each Party is given a fair opportunity to present its case" (Paragraph 10(b) of the Rules).
3.16 On September 30, 2002, the Center acknowledged receipt of Respondent's e-mail of September 29, 2002, (see point 3.15 supra), informing Respondent that since no Response was submitted within the September 24, 2002, due date, the Center had issued a "Notification of Respondent Default" on September 26, 2002, (see points 3.13 and 3.15 supra), and that therefore, the Administrative Panel would be informed of the fact of the Center's receipt of the September 29, 2002, communication, but that it would be the sole discretion of the Panel to determine whether to admit such document. Pursuant to Paragraph 10(d) of the Rules stating that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence, the appointed Panel has decided to consider the documents submitted by Respondent to the Center in the present case.
3.17 On October 2, 2002, the Center notified the parties that an Administrative Panel ("the Panel"), consisting of a sole member panelist, i.e. Kiyoshi Tsuru, had been appointed and that the panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
3.18 After reviewing the complete record relating to this proceeding, the Panel agrees with the Center in that the Complaint is in compliance with the Policy, the Rules and the Supplemental Rules. The sole Panelist further finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Panel also concludes that the Center has employed "reasonably available means calculated to achieve actual notice to Respondent" of this proceeding (Paragraph 2(a) of the Rules). In accordance with Paragraph 11 of the Rules, and taking into account the language of the relevant registration agreements, this proceeding has been conducted in English.
4. Factual Background
A. The Complainant
4.1 The Complainant is The Nasdaq Stock Market, Inc, a U.S. corporation (see supra point 1). Complainant states that it is the largest electronic, screen-based market in the world, the largest stock market in the world per daily share volume and the world's best-recognized stock market. Complainant mentions that it carries into effect, inter alia, the following activities: development, operation, and maintenance of systems, services, and products for a number of securities markets that it operates for the ultimate benefit and protection of investors, maintenance of complex technological infrastructures for the collection, processing, and dissemination of trade and quotation information.
4.2 The Complainant states that it has used the trademark and name NASDAQ in connection with a variety of financial products and services, including in the operation of The Nasdaq Stock Market, continuously since 1968. Complainant declares that it has used NASDAQ as the distinctive part of its trade name in connection with its business continuously in commerce since 1992. Complainant commonly refers to itself as "Nasdaq" and asserts that it is commonly referred to as "Nasdaq" by members of the general public as well as by members of the financial industry and the media.
4.3 The Complainant claims to own numerous trademarks and service marks containing or comprising the term "NASDAQ" for various financial products and services. Complainant asserts that the NASDAQ mark is registered in the U.S. Patent and Trademark Office and in approximately 40 other countries around the world. As a result of the long and extensive use of the NASDAQ mark for financial products and services, Complainant asserts that the NASDAQ mark has become a famous mark around the world and indicates the source of products and services originating exclusively with Complainant.
4.4 The Complainant has submitted evidence of the existence of U.S. Trademark Registration No. 0922973 "NASDAQ" and U.S. Trademark Registration No. 1259277 "NASDAQ". Some of the services covered by the said trademarks are:
Listing of securities for quotation for sale or information purposes; electronic securities information retrieval services, computerized securities surveillance services, securities brokerage services, securities indices services, and securities analyzing services; gathering, tabulating and supplying securities information, quotations, data, indices, and listings to subscribers; newspaper sections, newspapers, newsletters, magazine sections and magazines dealing with securities, securities markets, securities market makers, stock indices, national list of securities, national market system list of securities, specific and composite securities indices, performance and comparative securities indices, securities trading volume indices, margin securities indices, securities indices meeting a given tier criteria; computer programs for access to securities information.
4.5 The Complainant asserts that "'NASDAQ' is inherently distinctive as applied to the "NASDAQ" products and services, and, as [Complainant] has coined the word, "NASDAQ" has no meaning other than as a trademark of [Complainant]."
4.6 The Complainant claims that "[b]y virtue of the continuous and substantially exclusive and extensive use in commerce of the "NASDAQ" mark by [Complainant], and the commercial success of the products and services provided under such mark, such mark has come to have significance in the mind of the relevant public as an indicator of services originating with, sponsored by, or otherwise associated with [Complainant] and no other person or entity." The Complainant further asserts that it "has generated substantial goodwill in the "NASDAQ" mark and name and its numerous registered domain names based upon its long and continuous use of the "NASDAQ" name, trademarks, and domain names in the marketplace."
4.7 The Complainant states that it has registered hundreds of domain names comprising "NASDAQ", including names such as , and Complainant claims that most of its domain names are used and have been used by Complainant "in connection with active websites containing content originating from or approved by [Complainant]." According to Complainant, " is one of the world's most popular financial web sites, with approximately 50 million 'hits' every day."
4.8 The Complainant asserts that its investment in the NASDAQ trademark and domain names is substantial. Complainant claims to have spent hundreds of millions of dollars promoting the NASDAQ mark and name and in developing and maintaining its websites. Complainant asserts that it has extensively and prominently used the NASDAQ trademark, as well as domain names incorporating the mark (such as ) in disseminating, marketing, and advertising its services, and spent hundreds of millions of dollars in advertising and marketing its services under the NASDAQ trademark.
4.9 The Complainant alleges that "[a]n example of [its] prominent use of the 'NASDAQ' mark that has enhanced the recognition of and goodwill in [its] 'NASDAQ' mark and name is the Nasdaq MarketSite in New York City, including a giant outdoor visual display overlooking Times Square."
4.10 The Complainant also argues that "[g]oods and services offered under the 'NASDAQ' mark have achieved such a reputation for excellence that the mark has become synonymous with the provision of high-quality and reliable financial information and securities trading services."
4.11 The Complainant submitted a copy of an e-mail apparently sent on June 6, 2002, from Respondent (apparently originated from Respondent's email address) to Complainant, which reads:
"Dear Sirs:
I am the owner of these domains:
''; 'N'; 'NYSE-R' and '' and I want to sell these domains?
Do you want to buy them with the best conditions?
Please tell me your Idea!
I look forward to hearing from you soon.
Sincerely yours
H. Pouran"
4.12 On the same day, Complainant's counsel sent a cease and desist letter to Respondent, stating that Respondent's registration of the disputed domain names violated U.S. trademark law, and requesting that the said names be transferred promptly to Complainant.
4.13 The Complainant has submitted a copy of an e-mail which seems to have been originated from Respondent's e-mail address on June 7, 2002. This document reads:
"Dear Sirs:
First of all thank you for email and then pl[ea]se notice to my important message (attachment)
Please view attachment"
The attachment reads:
"Dear Sirs:
Thank you for informing me about some of your country rules, but plaese note to somethings, I mentioned below:
1-According to my country rules the Nasdaqbiz or Nasdaqtoday belong to me (Hamid R M Pouran) and no one, can change this constant situation.
2-The Nasdaqbiz and Nasdaqtoday have consisted of N-A-S-D-A-Q+(biz or today) and these are letters that make the full name of my company:
New Algorihtm System Design Assay Quick
3-I have paid lots of money for these domains and I don't know How you can expect me for giving my expensive domains to you?
4-We can solve our problems on a meeting, please ask everybody that you want; to come to IRAN and visit my office, then I will tell to him/her what are my conditions for an agreement with you
5- Maybe an International Court will be a good way for you and me for accepting an agreement.
6-Please note to this important matter: There are TOP LAWYERS that wish to be my ATTORNEY in a law court for free, because Just they want to be more Famous than before.
7-I am Sure you know better than me some International newspapers and medias Love these top topics
8-I know you, such as me, don't like to pay lots of money for wasting your time. I think very likely we can submit an agreement, but it depends on me." [sic]
4.14 On the same day, Complainant's counsel replied to this e-mail, stating that Complainant was the exclusive owner of the "NASDAQ" trademark "in the United States and throughout many other countries", reiterating his demand "that the and domain names be transferred to [Complainant]" and offering to reimburse Respondent for "the out-of-pocket expenses incurred in the registration and transfer of the and domain names."
4.15 The Complainant has provided a copy of an e-mail dated June 10, 2002, which is a reply from Complainant's counsel to an e-mail apparently sent by Respondent on June 8, 2002. Out of respect for chronological order, we will address the latter first. According to this document, Respondent stated, inter alia, the following: "When I registered my domains I submitted some agreements for advertising some international companies on my company Internet websites and some other top agreements. I don't know what do you mean of OUT-OF-POCKET expenses? Please note, ALL OF EXPENSES is the CORRECT expression, that I (my company) will use, if we want to submit any agreement. Bye the way my employees will estimate our (my company) total agreements (with other companies) values [sic]. Then I will offer ALL OF our company expenses [sic] to your company and then we can decide about submitting an agreement our NOT [sic]".
Complainant's counsel stated: "[sic] The Nasdaq Stock Market, Inc. will reimburse you for the registration fees incurred in registering the and domain names and any transfer fees associated with the transfer of those domain names to Nasdaq. In other words, Nasdaq will NOT reimburse you for other expenses such as website design or the value of any agreements you may have with other companies [sic]."
4.16 By means of some e-mail communications dated June 10 and 11, 2002, respectively, the parties engaged in a discussion regarding whether Iranian or US law would be applicable to their controversy.
4.17 According to another set of e-mails dated June 10, 2002, submitted as evidence by Complainant, Respondent stated that he did not register the disputed domain names directly, but through 'another company'; Respondent continued by saying: "When we cancel our agreements with our partnership (our banners) companies, we must returne their money and we loose our credite and they never submit an agreement with us [sic]. At the end please, consider to our total agreement values: "WWW.". Total agreement values Submitted for advertising on this web site is about: 32,470.00 $ (After exchange[sic]) "WWW.N" Total agreement values Submitted for advertising on this web site is about: 29,215.00 $ (After exchange [sic]) We can offer International documents for these agreements[sic]. We are Agree for transferring these 2 domains, but if you offer LOGICAL amounts of money. If we accept, we will give you a Direct Account in the US[sic]."
4.18 The Complainant also provides a copy of an e-mail apparently generated from Respondent's site on June 11, 2002, wherein Respondent explains to the Complainant that he would prefer to solve their problems in an "International (Creditable) law court". Respondent also attached a copy of a letter allegedly sent to 'some lawyers', explaining Respondent's point of view. Among other things, Respondent stated "They sayed we give you Out-of-Pocket expenses but our agreements value between us and our banners is about 70,000.00 US $ (after exchanging our country current money to US $)[sic] Please let me know what can we do under this complex conditions because Before registering our domains we didn't know any thing about Nasdaq and we Just Add N+A+S+D+A+Q and know if we transfer these domains we must returne lots of money to our banners"[sic].
4.19 The Complainant further submits a printout of an e-mail which appears to have originated from Respondent, dated August 7, 2002. At the top of this document, the following words can be read:
"NEW ALGORITHM SYSTEM DESIGNED ASSAY QUICK
www.
www."
These are some excerpts of such a document: "Please note that we will publish our websites "www." and "www.d" and you must accept all of its responsibility." "Please accept all of responsibility of any interaction between your company and us and also your costumers confusing.[sic]" "The unique owner of 'NEW ALGORITHM SYSTEM DESIGNED ASSAY QUICK' rights."
Complainant's counsel replied on the same day, stating that Respondent had no rights in the "NASDAQ" trademark "dispite [Respondent's] untrustworthy statements[sic]", and requesting once again that Respondent immediately transferred the disputed domain names to Complainant.
4.20 The Complainant has finally submitted a printout of an e-mail which appears to have been generated by Respondent on August 8, 2002. According to said printout, Respondent stated, inter alia, that "[w]ith reference to your email 7th august 2002, we are extremely sorry that you have used 'untrustworthy statements that 'NASDAQ' is a new Acronym for 'New Algorithm System Designed Assay Quick.' We have to point out that the new algorithm, we mentioned before is an individual business algorithm. It has based on Fuzzy logic Mathemathics, in this algorithm there are several options and each option has a value, you must just select an option or explain it in your way, then this algorithm calculate your country business conditions for next week. As you know and we mentioned before we have enough creditable documents for offering to your company[sic]. We are ready to buy NASDAQ total rights for our company and we can pay about 1,500,000.00 US $ for using NASDAQ business name and transferring and ALL of NASDAQ business rights to our company. Also we would like to inform you that we are ready to transfer our websites "www." and "www." To your company immediately when we receive a logical offer from your company[sic].Otherwise, we have no alternative, but to accept Iran e-business rules."
B. The Respondent
4.21 The Respondent registered and on June 4, 2002.
4.22 Even when Respondent's e-mail communications to the Center, dated August 20, 2002, August 27, 2002, and September 29, 2002, were extemporaneous and cannot qualify as a valid Response under Paragraph 5 of the Rules, this Panel has decided in its discretion to admit and consider such communications. See points 3.4, 3.8, 3.14 3.15 supra.
4.23 On August 20, 2002, the Respondent transmitted a communication via e-mail to the Center. Said e-mail contained a reference to the attachments thereof (see point 3.4 supra). The initial part of such attachment reads:
"Dear Sirs:
Thank you for your response.
We are ready to transfer our websites to your company.
But there are some important matters in your letter.
First of all here is the document that we have sent to your lawyer and
"NASDAQNEWSROOM" department about 2 months ago, please read it
carefully. Then it will be clear that why we sent an email for you for selling
our websites to your company for the first time 6 June 2002."
4.24 Subsequently, the attachments comprise an excerpt from a letter sent from a Colorado Attorney to Respondent, stating that said Attorney was licensed in the state of Colorado only, and that since "NASDAQ is a stock exchange in the U.S., located in New York City" such counsel could not assist Respondent. Counsel advised Respondent to "contact counsel in New York City to determine whether they [could] assist [him]". The attachments also comprise excerpts from diverse correspondence exchanged between Respondent and Complainant
4.25 These attachments also comprise a letter which is similar to the letter allegedly sent by Respondent to 'some lawyers', and which was analyzed in point 4.18 supra.
4.26 The Respondent continued by responding to some of Complainant's assertions set forth in some of Complainant's letters to Respondent, and Complainant's Complaint, as follows:
4.27 Regarding Complainant's assertion that its trademark "NASDAQ" is prominently used by means of an outdoor display overlooking Times Square (see point 4.9 supra), Respondent said: "If you read my address you will understand, I live in Iran,I have never come to US yet. Then please let me know How can I see Nasdaq Market Site in New York City, including a giant outdoor visual display overlooking times square? And also we don't have any stock market in Mashhad and any international stock market in Iran and as I mentioned before I didn't know any thing about nasdaq company until I registered my websites and I tried to check my websites then I found there is stock market in the US with this name then I sent an email for them for preventing any interaction between our company and your business."
4.28 Regarding Complainant's cease and desist letter in response to Respondent's e-mail of June 6, 2002, Respondent commented: "on August 8, 2002 I replied again and I offered to buy Nasdaq business rights for my company but you have selected just one part of my letter." See point 4.20 supra.
4.29 Respondent also commented the following: "If your attorney research more about internet they will understand that for publishing any websites on internet you must define your websites and your keywords (for searching) to Search engines such as 'Google' but for preventing of your customers confusion I didn't define my websites for any search engine and JUST you and some of my company employees know about these 2 websites ."
4.30 Respondent further stated: "Please let us know about your reasons for this matter: 'Respondent's sole and indisputable interest in the domain names is to extort large sums of money from the Nasdaq.' If we want this matter we didn't offer for buying nasdaq business rights for our company. In all of our messages we mentioned we are ready for offering international creditable documents for our business 'NEW ALGORITHM SYSTEM DESIGNED ASSAY QUICK' but we are extremely sorry that you have said 'formulated story' please be sure it's a reality."
4.31 Respondent transmitted another e-mail communication to the Center on August 27, 2002, (see point 3.8 supra). Some of the issues addressed therein include: "First of all about e-business, in Iran we don't have any e-business rules yet. Also we don't have any organization for intellectual property[sic]. We don't know (nearly 99% of Iranian people) about international companies even famous companies specially about stock market, we don't have any international stock market in Iran yet[sic]. [W]e (our company and myself and nearly all of Iranian people except for less than 0.5% of people) don't have any credit card. This is the reason that we didn't register our websites ourselves and another company did it for us ,then we cant make any change until they accept(we have, all of submitted agreements about accepting this kind of registeration, because we didn't have any way except for accepting their rules and paying lots of money to them for registerating and web hosting [sic])."
4.32 Finally, Respondent transmitted his e-mail communication dated September 29, 2002, to the Center (see point 3.14 supra). By means of such communication, Respondent expressed the following: "I would like to inform you Document No1, Document No2 and Document No 3 are my replies to your questions and I am ready to offer any document that you want to prove my reasons. As I mentioned before when I registered my websites I didn't know anything about nasdaq stock markets, and you can ask, in Iran nearly no one knows about nasdaq stock market. Please be informed social and economic conditions in Iran are quite different with many countries specially US. There is no any intellectual property organization in Iran and you can't get patent number[sic]." Respondent summarized his position as follows:
[...]After all I would like to say, I have all of documents for proving that:
1-I have paid lots of money for registering my websites and I didn't register my websites my self and also to prove that I cant change the registrant name my self ,and I must ask of the company who have registered these websites to change this name.
2-I have submitted agreements with some companies for advertising on my websites and one of them guaranteed to increase my websites visitors at least 50000 visitors a day after one year, I have all of these documents, but due to some problems you know better than me we suspended these agreements until we clear and solve our problems with nasdaq.
3-I have sent some messages for them after they asked for transferring these websites, but they didn't answer to them, even I have sent messages to nasdaq news room.
4-I think we have all documents that you need to prove our reality and for saving our rights, I don't accuse any one (nasdaq stock market or their attorney) but I ask you Please clear the reality, please let them know I live in Iran and how can I know about nasdaq stock market and we don't have any stock market in Iran!
5-Nearly I have transferred my two website to nasdaq stock market, but I didn't give them the password for changing the information of these websites and who is search and as I mentioned before I cant change the registrant information my self and I must ask of the company who has registered these websites for me to change the registrant name." [sic]
5. Parties' Contentions
A. Complainant
Confusing Similarity
5.1 Complainant argues that the disputed domain names and incorporate Complainant's trademark "NASDAQ" in its entirety; that "[t]he sole and immaterial difference is the addition of the descriptive wording "TODAY" and "BIZ" to [Complainant's] registered mark" and that "[t]hese are not distinguishing features and do not negate the likelihood of confusion." (Citing The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (September 30, 2001); Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001)).
Lack of Respondent's Rights or Legitimate Interests
5.2 Complainant asserts that Respondent has no legitimate interest in or business purpose for the and the domain names. Complainant further argues that Respondent has no trademark rights in "NASDAQ". That people who may access or in an attempt to reach Complainant's website may incorrectly believe that Complainant is affiliated or somehow connected with Respondent's, or that such sites are sponsored by Complainant. Complainant alleges that "Respondent's sole and indisputable interest in the domain names is to extort large sums of money from the [Complainant]."
Bad Faith Registration and Use
5.3 Complainant claims that its trademark "NASDAQ" is famous and that based on this assumption, "bad faith can properly be inferred from circumstantial evidence, including but not limited to whether the Respondent's explanation of why it chose a domain name that 'coincidentally' corresponds to a well-known mark defies credulity." (Citing Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 (August 9, 2000)).
5.4 Complainant also asserts that Respondent registered and used the disputed domain names in bad faith, because of the following circumstances:
· Respondent had constructive notice under 15 U.S.C. � 1072 that the "NASDAQ" mark was a registered trademark.
· Complainant has not agreed or consented to or licensed Respondent's use or registration of domain names containing its mark.
· Respondent is not using the domain names for any bona fide business purpose, much less in a non-commercial "fair use" manner.
· People who may access or in an attempt to reach Complainant's website may incorrectly believe that Complainant is affiliated or somehow connected with Respondent, or that such sites are sponsored by Complainant (see point 5.2 supra). Complainant contends that Administrative Panels have previously indicated that the Policy does not permit registration of a domain name that contains the trademark of another in an attempt to gain credibility for the services offered by misleading users into believing there is an association with the trademark owner (citing Reed Elsevier Inc. v. Carlos M. Alvarez d/b/a IT Lexis, NAF Case No. FA0107000098249 (August 20, 2001), Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 (November 30, 2000), (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that complainant is the source of or is sponsoring the services offered at the site); eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (March 16, 2001), (finding bad faith were Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent's website).
· It was only after receiving a cease and desist letter correspondence from Complainant that Respondent formulated a story that the contested domain names are intended to be used in connection with an alleged "New Algorithm System Design Assay Quick" system. This unsubstantiated allegation is simply not credible especially in light of Respondent's initial correspondence to Nasdaq offering to sell the domain names. (Citing Panavision International L.P. v. Toeppen, 14 F.3d 1316 (9th Cir. 1998)) (placing aerial photographs of Pana, Illinois on website); Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 (August 9, 2000) (claim that domain name originated with a dog named "Yahoo" not convincing); The Nasdaq Stock Market, Inc. v. Grewal, WIPO Case No. DTV2001-0001 (March 12, 2001), (claim that was registered for organization called "North American Sikhs Demanding Answers to their Questions," or "NASDAQ", not credible)). Like these other cases, the claim that Respondent chose to register the famous "NASDAQ" mark because it stands for some awkward acronym simply does not ring true. This is a classic case of speculative domain name registration of the type the Policy is meant to remedy.
· Respondent has offered to sell the contested domain names at prices that well exceed the costs incurred in the registration of the infringing Domain Names. Following U.S. case law and Policy precedents, Respondent's offer to sell the domain names constitutes use of the domain names in commerce and meets the use requirement of the Policy. (Citing Panavision International, L.P. v. Dennis Toeppen, et al., 141 F.3d 1316 (9th Cir. 1998); World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000); Jordan Grand Prix Ltd. v. Gerry Sweeney, WIPO Case No. D2000-0233 (May 11, 2000); Capcom Co. Ltd. and Capcom U.S.A. Inc. v. Dan Walker trading as "Namesale", WIPO Case No. D2000-0200 (May 1, 2000)).
B. Respondent
The Respondent has not submitted a valid Response under Paragraph 5 of the Rules.
6. Discussion and Findings
6.1 In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
"(i) the domain name in question 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."
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
6.2 As the Respondent has failed to submit a valid Response to the Complaint, the Panel may accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487 (August 12, 2002); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Based on Paragraph 10(b) of the Rules, this Panel has decided to admit and consider Respondent's communications mentioned in points 3.4, 3.8 and 3.14 of this decision, in order to ensure "that each Party is given a fair opportunity to present its case" (Paragraph 10(b) of the Rules) (see The Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 (August 6, 2002)), however, this does not mean that such communications are admitted as a valid Response filed pursuant to Paragraph 5 of the Rules or that the Respondent is not in default.
(i) Identical or Confusingly Similar
6.3 The domain names and are confusingly similar to the trademarks "NASDAQ" in which Complainant has rights. Both domain names incorporate the trademark "NASDAQ" which is a distinctive mark. The addition of descriptive words such as "TODAY" and "BIZ" do not change the overall impression of the designation as being a domain name connected to the Complainant. These words do not eliminate the likelihood of confusion. The two-contested domain names have a strong likelihood of confusion with Complainant's trademark "NASDAQ."
6.4 Numerous Policy decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (September 30, 2001), (citing in turn Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001); Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615 (August 27, 2002); Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504 (August 1, 2002); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001)).
6.5 Moreover, a considerable number of Panels have established that the trademark 'NASDAQ' is either widely publicized or well-known; see The Nasdaq Stock Market, Inc. v. Green Angel, (see paragraph supra)(where the Panel considered that "the NASDAQ and associated marks [were] extremely well known throughout the world"); The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 (February 27, 2002), and The Nasdaq Stock Market, Inc. v Vidudala Prasad, WIPO Case No. D2001-1493 (February 27, 2002), (in both cases the Panel expressed: "The Panel agrees that the NASDAQ trademark is extremely well-known throughout the world. The Panel believes that the word "NASDAQ" would be associated with the goods and service of the Complainant in the minds of relevant consumers. The Complainant has developed significant goodwill in the NASDAQ trademark. Indeed, the Panel believes that the NASDAQ trademark is one of the world's famous trademarks."); The NASDAQ Stock Market, Inc. v. Seventh Summit Ventures, WIPO Case No. D2001-1497 (March 15, 2002), (wherein the Panel stated that "Complainant has long established registered and unregistered trade mark rights in the mark 'NASDAQ' throughout the world."); Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 (November 16, 2000), (wherein the Panel stated "the Respondent has registered many other well-known trademarks owned by third parties such as 'Nasdaq'").
6.6 This Panel does not need to decide for the purposes of this proceeding whether the trademark "NASDAQ" is famous (see The Nasdaq Stock Market, Inc. v. Global America, WIPO Case No. DNU2002-0002 (May 14, 2002)), but it certainly recognizes that the trademark "NASDAQ" is a highly distinctive trademark in which Complainant clearly has exclusive rights, and that such trademark has been extensively publicized, constantly protected and effectively enforced.
6.7 In light of the above, this Panel concludes that Respondent's addition of the words "TODAY" and "BIZ" to Complainant's solid, highly distinctive trademark "NASDAQ" to form the domain names and respectively, does not render these domain names sufficiently different from Complainant's mark so as to avoid the risk of confusion.
6.8 Thus, this Panel decides that the domain names and are confusingly similar to Complainant's trademark "NASDAQ."
(ii) Rights or Legitimate Interests in Respect of the Domain Names
6.9 Paragraph 4(a)(ii) of the Policy establishes the following principles: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
6.10 Respondent has not provided evidence of ownership of any intellectual property rights to the words or .
6.11 This Panel is not convinced that before Respondent had received notice of the dispute, it was using or making demonstrable preparations to use the contested domain names in connection with a bona fide offering of goods or services. Respondent's first communication sent to Complainant on June 6, 2002, was a simple offer to sell a series of domain names (see point 4.11 supra). What Respondent offered to Complainant at that point were four domain names, all four of them related to well-publicized trademarks in the global business/financial environment:
[comprising the trademark NASDAQ]
[id.]
[comprising the acronym for the New York Stock Exchange-NYSE]
[comprising the trademark "THE STREET", regarding a specialized and prestigious publication for business and financial matters]
6.12 It is difficult for this Panel to find good faith in this offer to sell such particular domain names.
6.13 Respondent changed his approach towards this offer promptly. After learning that Complainant was willing to initiate a trademark infringement action, Respondent said that he had registered the disputed domain names to use them in connection to a 'business algorithm' allegedly called "New Algorithm System Design Assay Quick" (NASDAQ), but in reality Respondent was not offering a business algorithm, he was doing the same thing he did when he first contacted Complainant, trying to sell domain names. Almost all of Respondent's e-mail communications end with a solicitation or an offer to sell the disputed domain names. The argument regarding the business algorithm and its acronym is constantly used by Respondent as a defense against Complainant's counsel's accusation of trademark infringement, but in the opinion of this Panel, it does not constitute a use or a preparation to use the domain name in connection with a bona fide offering of goods or services. Throughout his letters, Respondent expresses not so much his concern to offer his business algorithm, but his desire to transfer the contested domain names to Complainant for a 'logical' amount of money (See section 4 supra). If Respondent's primary concern was to commercialize his business algorithm in good faith, then it would not have been likely that he contacted Complainant in the first place, in order to offer to sell a group of domain names.
6.14 This Panel also perceives a rapid change in the manner in which the Respondent regarded himself, and a sudden change in his company name. In the beginning, Respondent acted as an individual who offered to sell domain names (see point 4.11 supra). No reference was made to a business algorithm or a company. The next day, he alleged that NASDAQ referred to the full name of his company: New Algorihtm System Design Assay Quick (see point 4.13 supra). In a few weeks, Respondent's company name had changed to: New Algorithm System Designed Assay Quick [emphasis added] and this modified name was featured in the letterhead of Respondent's e-mail, which also featured the two disputed domains (see point 4.19 supra). In the opinion of this Panel, it would be very difficult for an individual or a corporation to be commonly known by a domain name by using such domain name on a letterhead for a reduced number of days. This Panel concludes that Respondent is not commonly known by either of the contested domain names.
6.15 There are no circumstances showing that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Respondent has mentioned the existence of advertisements and banners, and has suggested that these media require 'lots of money' (see point 4.18 supra).
6.16 In light of the above, the Panel finds that Respondent has no rights or legitimate interest in the domain names or , in accordance with Paragraph 4(a)(ii) of the Policy.
(iii) Bad Faith
6.17 Paragraph 4(b) of the Policy establishes circumstances that, without limitation, constitute evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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."
6.18 Respondent claims that prior to having registered the disputed domain names he did not know of the existence of Complainant. This Panel is skeptical about such an affirmation, for the following reasons: 1) the four domain names offered by Respondent to Complainant are related to major players in the business/financial environment (see point 6.11 supra) -it is hard to believe that Respondent coincidentally chose the names/acronyms of the New York Stock Exchange, NASDAQ and THE STREET as domain names; 2) Respondent has mentioned having signed International contracts (including those relating to advertisements and banners) and claims to have developed a business algorithm (see points 4.13, 4.18 and 4.19 supra); 3) Respondent has mentioned that he can manage a Bank account in the U.S. (see point 4.17 supra); 4) Respondent is clearly exposed to the Internet (based on his multiple communications with Complainant and with the Center) and has demonstrated to have a level of sophistication in handling computers and search engines such as Google (see point 4.29 supra); 5) Respondent is also exposed to International newspapers (see point 4.13 supra); 6) Independent investigation conducted by this Panel shows that when entering a query for the word 'NASDAQ' on Google, the first sites that this search engine cites are those of Complainant (in fact, Google lists approximately 5,760,000 sites related to NASDAQ); moreover, this Panel found some sites relating to Iran wherein the trademark NASDAQ is displayed or cited (some examples are: "", "", "", "", "").
6.19 It is hard to believe that someone who has demonstrated a skill for being precise at obtaining domain names that incorporate names of famous financial actors, who enters into International business contracts, who transacts business regarding electronic media (banners), who develops a business algorithm (business variables generally include financial information and securities markets, two of the services covered by Complainant's trademarks), who has a certain degree of computer sophistication, who talks about the impact that International newspapers can have on corporations and who has admitted to knowing how search engines work with regard to domain names, particularly the contested domains, it is indeed difficult to infer that such a person had not heard about NASDAQ, especially if that person makes his argument a posteriori, having carefully picked four domain names that are closely related to the global financial arena and then having successfully contacted NASDAQ itself offering to sell those domain names to this entity.
6.20 Thus, this Panel concludes that Respondent knew or should have known of the existence of Complainant, Complainant's trademark being widely publicized globally and constantly featured throughout the Internet, and thus the Panel decides that the disputed domain names were registered in bad faith.
6.21 Respondent's behavior is clear. It was straightforward on June 6, 2002, (see points 4.11 6.11 supra) when Respondent offered to sell the disputed domain names to Complainant and it took a different appearance thereafter, but the underlying intent has remained consistent. Respondent's intention has been to charge sums up to USD 70,000.00 for the transfer of the contested domain names (see point 4.18 supra). Respondent has argued that his International agreements signed with third parties, as well as his endeavors to commercialize advertisements and banners in connection to his websites linked to the disputed domains, justify such a payment. Even when Respondent has changed the appearance of his offer (e.g., by offering to 'buy' all of Complainant's trademark NASDAQ and business rights, but immediately thereafter offering to transfer the disputed domain names to Complainant - see point 4.20 supra), his purpose has remained unchanged: extracting "LOGICAL amounts of money" from Complainant (see point 4.17 supra).
6.22 Such an offer for sale constitutes bad faith use according to Paragraph 4(b)(i) of the Policy. Certainly, expenses and/or losses derived from contracts with third parties, web-hosting services or banner agreements do not fall within the scope of "documented out-of-pocket costs directly related to the domain name." See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000), (citing in turn Panavision International, L.P. v. Dennis Toeppen, et al., 141 F.3d 1316 (9th Cir. 1998)); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000); Jordan Grand Prix Ltd. v. Gerry Sweeney, WIPO Case No. D2000-0233 (May 11, 2000); Capcom Co. Ltd. and Capcom U.S.A. Inc. v. Dan Walker trading as "Namesale", WIPO Case No. D2000-0200 (May 1, 2000).
6.23 Respondent's argument that it intends to use the disputed domain names in connection to his business algorithm allegedly titled "New Algorithm System Design Assay Quick" is not admissible. This argument was made after a clear, straight, simple offer to sell the disputed domain names (see points 6.11 4.11 supra) and after Complainant expressed its willingness to enforce its rights (see points 4.12 supra). Respondent's behavior is contrary to Respondent's assertions and suggests that his main purpose is selling the contested domain names while alleging some sort of rights derived from a rather strange acronym. Previous Panels have faced similar types of conduct: Yahoo! Inc. v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 (August 9, 2000), (claim that domain name originated with a dog named "Yahoo"); The Nasdaq Stock Market, Inc. v. Grewal, WIPO Case No. DTV2001-0001 (March 12, 2001), (claim that was registered for organization called "North American Sikhs Demanding Answers to their Questions," or "NASDAQ")
6.24 Finally, Respondent's use of the disputed domain names creates a likelihood of confusion with Complainant's mark as to the sponsorship, affiliation or endorsement of Respondent's site. Complainant has submitted printouts of Respondent's websites, showing this likelihood of confusion. Considering that Respondent has mentioned that he has entered into agreements with third parties to feature banner advertisements on the web sites resolving to the disputed domain names, this Panel is inclined to believe that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, based on the confusion derived from the similarity existing between the contested domain names and Complainant's trademark "NASDAQ." See Reed Elsevier Inc. v. Carlos M. Alvarez d/b/a IT Lexis, NAF Case No. FA0107000098249 (August 20, 2001), Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 (November 30, 2000); eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (March 16, 2001). This conduct falls within the scope of Paragraph 4(b)(i) of the Policy and thus constitutes bad faith use of the disputed domain names.
Based on the foregoing analysis, the Administrative Panel concludes that the Complainant has provided sufficient evidence that Respondent's registration and use of the domain names and are in bad faith.
7. Decision
According to Paragraphs 4(i) of the Policy and 15 of the Rules, this Administrative Panel decides that the Complainant has established that the domain names and are confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interest in said domain names and that Respondent has registered and is using said domain names in bad faith.
This Administrative Panel therefore orders that the domain names and be transferred to the Complainant.
Kiyoshi I. Tsuru
Sole Panelist
Dated: October 16, 2002
Full & Egal Universal Law Academy