WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Nasdaq OMX Group, Inc v. Bill Case No. D2008-1463 1 The Parties
The Complainant is The Nasdaq OMX Group, Inc, (f/k/a The Nasdaq Stock Market, Inc.) of New York, New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
The Respondent is Bill of Chicago, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2008. On September 29, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On September 29, 2008, Dotster, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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”).
On October 3, 2008, the Center requested a signed copy of the signature page of the Complaint which was provided by the Complainant on October 3, 2008. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2008. The Respondent did not submit any response. Accordingly, the Center issued a Notification of Respondent Default on October 24, 2008.
The domain name registration by the Respondent was set to expire on October 24, 2008. On October 29, 2008, the Complainant confirmed that the domain name had been renewed pursuant to ICANN's “Expired Domain Deletion Policy” and was being held by Dotster, Inc. pending resolution of this proceeding.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 4, 2008. 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 Background
The Complainant owns the NASDAQ mark which was initially registered on the Principal Register of United States Patent and Trademark Office on October 26, 1971. The NASDAQ mark is registered in approximately forty other countries and jurisdictions around the world. The Complainant has registered numerous domain names which incorporate the NASDAQ mark. According to the initial United States mark registration, the Complainant has used the NASDAQ mark continuously since May 27, 1968 for “the listing of securities for quotation or information purposes”. The Complainant registered the NASDAQ mark in 1983 for classifications related to the operation of is electronic securities and information services.
The NASDAQ mark is well-known. Nasdaq Stock Market Inc. v. Antartica S.r.l., 69 U.S. P. Q. 2nd 1718 (T.T.A.B. 2003). The Complainant asserts it has spent hundreds of millions of dollars promoting the NASDAQ mark and in developing and maintaining web sites in the United States and around the world utilizing the NASDAQ mark. The Complainant has successfully protected its NASDAQ mark in a plethora of domain name cases brought under the Policy. “NASDAQ” is a coined word with no natural language meaning.
The Respondent registered the disputed domain name on October 24, 2006. The disputed domain name resolves to a blank page. The Respondent did not respond to a cease and desist letter sent by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts the disputed domain name is confusingly similar to its registered and well-known NASDAQ mark. The disputed domain name wholly incorporates the NASDAQ mark which is followed by the generic term “options”. The Complainant asserts that the Respondent has never received authorization or permission to use the NASDAQ mark and has no rights or legitimate interest in the disputed domain name. Further, the Complainant contends that Respondent has registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove 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.
The Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's NASDAQ mark. The disputed domain name incorporates the NASDAQ mark in its entirety. The use of the generic term “options” following the NASDAQ mark in the disputed domain name does little to dispel confusion and may actually increase the likelihood of confusion and potential consumer deception. The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010; Microsoft Corporation v. MindKind,WIPO Case No. D2001-0193. The Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent 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.
The Respondent has not provided an explanation for the use of the NASDAQ mark in the disputed domain name. The Complainant has disclaimed authorizing any such use by the Respondent. The Respondent has failed to contest Complainant's assertions or demonstrate any business or other activity that would support a claim of rights or legitimate interest in the disputed domain name. The Complainant has thus satisfied its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the Respondent's website or location or of a product.
The Panel has little difficulty in determining the Respondent has registered and used the domain name in bad faith. Where, as in this case, the Respondent has failed to show rights or legitimate interests in the disputed domain name, registration and use in bad faith can commonly be inferred. See Imerys v. Unknown (gfg fdgdf, dfgdfg),WIPO Case No. D2007-0045. The Complainant's mark was adopted in its entirety. The Respondent's registration of the disputed domain name has deprived the Complainant of the use of an obvious domain name for the marketing and promotion of its business services. Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615. The Respondent refused to respond to Complainant's cease and desist letters. The Nasdaq Stock Market, Inc. v. Donal Bergin,WIPO Case No. DTV2002-0003. The Respondent's name of “Bill”, appears to be an incomplete name and therefore an indicia of bad faith. The postal address provided by the Respondent in Chicago, Illinois, is not recognized in a Google® search. There is no doubt that the Respondent was aware of the well-known NASDAQ mark at the time of registering the disputed domain name. The only logical conclusion is that the Respondent knowingly adopted Complainant's inherently distinctive NASDAQ mark into the disputed domain name for illegitimate purposes. The passive holding of the domain name under these circumstances constitutes bad faith use. See Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Dated: November 18, 2008
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