WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Nasdaq OMX Group, Inc. v. Forsyte Corporation Case No. D2010-0191 1. The Parties
Complainant is The Nasdaq OMX Group, Inc. of New York, New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
Respondent is Forsyte Corporation of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 9, 2010. On February 10, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On February 15, 2010, R Corp. transmitted by email to the Center its verification response confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 15, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on March 18, 2010. 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
Complainant formerly known as “The Nasdaq Stock Market, Inc” operates the Nasdaq Stock Market, which is the largest securities exchange in the world with approximately 3,700 listed companies in 50 countries on six continents, representing USD 4.1 trillion in total market value. Its trading, technology, and public company service capabilities extend across the world. Complainant's business globally covers the widest geography with its large number of company listings and executes more transactions than any other exchange in the world. Owning exchanges in North America and Europe, Complainant serves as a trading venue for multiple asset classes including equities, derivatives, debt, commodities, structured products and ETFs. Complainant delivers services and advanced technology with the power to drive capital formation, transform business, and fuel economic growth around the world.
Complainant and its predecessors-in-interest have used and Complainant continues to use the trademark and name NASDAQ alone and with other components, in connection with a variety of financial products and services, including in the operation of the Nasdaq Stock Market, continuously since 1968.
Complainant owns numerous trademarks and service marks containing or comprising Nasdaq (and applications and registrations therefore) for various financial products and services. The NASDAQ mark has been in continuous use in the United States in commerce since 1968. The NASDAQ mark is registered in the U.S. Patent and Trademark Office and in approximately 40 other countries/jurisdictions around the world, and a large number of such registrations have attained incontestable status.
Among the many trademark registrations owned by Complainant are United States Trademark Registration No. 922,973 for the trademark NASDAQ registered on October 26, 1971 for “listing of securities for quotation for sale or information purposes” in Class 101 (Int. Cl. 35). First use in commerce is stated as May 27, 1968. Additionally, United States Registration No. 1,259,277 for the trademark NASDAQ registered on November 29, 1983 in relation to goods in Classes 9 and 16 and in relation to services in Classes 35, 36 and 38.
The disputed domain name was registered on December 28, 2001.
Respondent in this case is a known cybersquatter. A review of UDRP decisions show that Respondent has been named in at least eight (8) panel decisions in the last two years alone, all of which found bad faith on the part of Respondent. See, for example, Kathryn Findlay Limited trading as Ushida Findlay Architects v. Forsyte Corporation,WIPO Case No. D2009-0742 (); Bellbourne House Limited v. Forsyte Corporation,WIPO Case No. D2009-0204 (). 5. Parties' Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant submits that the disputed domain name is essentially identical to Complainant's NASDAQ trademark and is confusingly similar (visually and phonetically). The mere use of the letter “c” in place of the letter “Q” is clearly intended to misdirect unsuspecting Internet traffic (i.e., Internet users who have accidentally misspelled Complainant's NASDAQ mark) to Respondent's unauthorized website. Accordingly, Complainant submits that the confusing similarity of the disputed domain name to Complainant's trademark is not subject to reasonable dispute. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no legitimate interest in the disputed domain name. Respondent has no relationship to Complainant or the letters comprising the disputed domain name. Respondent's only use of the disputed domain name is to intentionally mislead Internet viewers and attract confused users to a website totally unrelated to Complainant.
The website resolving from the disputed domain name has specific references to various Complainants' “Nasdaq” links. See, e.g., The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.,WIPO Case No. D2002-1125 (“It is highly unlikely that Respondent was unaware of [Nasdaq's] well-known trademark when he registered the domain name…. Accordingly, the evidence tends to show that Respondent did not have his own legitimate interest in the name - rather, his interest in the name was due to its proximity to Complainant's high traffic “” site.”). A.3 Registration in Bad Faith
Complainant states that it commenced use of its trademark NASDAQ in commerce in association with the operation of a stock market in 1968. Complainant states that as a result of the extensive and prominent use of the mark, NASDAQ had become a famous mark in the United States prior to the registration of the disputed domain name on December 28, 2001. Complainant states that in a landmark decision, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office determined that prior to the date of an application for a trademark filed on September 1, 1998 by an applicant for a trademark including NASDAQ, the Trademark Trial and Appeal Board found that Complainant's mark NASDAQ was famous within the high standard set forth under the U.S. Anti-Dilution Act (The Nasdaq Stock Market, Inc. v. Antartica S.r.l., 69 U.S.P.Q.2d 1718 (T.T.A.B. 2003)). Complainant further submits that given the international fame of the NASDAQ marks and name, which existed in the U.S. and elsewhere long prior to the registration date of the disputed domain name, there is no doubt that Respondent was well aware of Complainant's rights in the NASDAQ trademark when the disputed domain name was registered. A.4 Use in Bad Faith
Complainant submits that Respondent has no rights in the trademark NASDAQ and has never been authorized to use said trademark. Despite having absolutely no rights in NASDAQ, Respondent has opportunistically registered a domain name which incorporates a slight misspelling of the NASDAQ trademark in order to take advantage of misdirected Internet traffic.
Complainant further submits that as of the date of this Complaint, the disputed domain name resolves to a website containing miscellaneous portal links to other websites, many for investment-related services and goods. Complainant has no control over the disputed domain name and Respondent's use of the disputed domain name can change at any time.
Complainant states that Respondent's activities have harmed and continue to harm Complainant by depriving it of use of an obvious domain name to use in association with its company. See, e.g., Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968 (“Respondent registered a domain name incorporating the Complainant's Mark, despite having no connection to the Complainant . . . . This alone is powerful evidence of the Respondent's bad faith.”); see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 (finding bad faith based on confusing similarity of the parties' marks: “Part of the reason for confusing similarity was the potential confusion created regarding the source, sponsorship, affiliation, or endorsement by Microsoft of the Domain Name and the website to which it resolves. Under these circumstances, the Sole Panelist finds that this confusing similarity is equivalent to the likelihood of confusion required under the Policy paragraph 4(b)(iv).”).
Complainant further states that as further evidence of Respondent's bad faith, Respondent has attempted to sell the disputed domain name to Complainant for a fee of USD 1,850.00. Complainant responded by offering Respondent USD 100 to cover for the actual out of pocket expenses incurred by Registrant in registering the disputed domain name. To date, Respondent has refused to respond to Complainant's offer of settlement and continues to engage in infringing activities. Based on the foregoing, Respondent has absolutely no legitimate interest in the disputed domain name and is using the same in bad faith to Complainant's detriment.
The attempted sale of the disputed domain name to Complainant, the owner of the subject trademark, for a price well in excess of Respondent's expenses in acquiring the disputed domain name further constitutes evidence of bad faith of Respondent. See TOROC & IOC v. Peter H. Hufschmid,WIPO Case No. D2001-0604. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of United States Trademark Reg. No. 922,973 for the trademark NASDAQ registered on October 26, 1971 for “listing of securities for quotation for sale or information purposes” in Class 101 (Int. Cl. 35). First use in commerce is stated as May 27, 1968. Complainant is also the owner of United States Registration No. 1,259,277 for the trademark NASDAQ registered on November 29, 1983 in relation to goods in Classes 9 and 16 and in relation to services in Classes 35, 36 and 38.
The disputed domain name was registered on December 28, 2001, more than thirty years after registration of Complainant's first registration of the trademark NASDAQ.
The disputed domain name is identical to Complainant's registered trademark NASDAQ in sound, but differs by the absence of one letter “c” which is substituted for the letter “Q” found in Complainant's registered trademark. Respondent is involved in “typosquatting”; the practice of using a domain name misspelling of a complainant's well-known trademark. In Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, the panel found that the domain name , with a “zero” in place of the letter “O” was calculated to trade on the complainant's name by exploiting likely mistakes by users of the URL.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similar. UDRP panels have repeatedly held that the specific top-level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant's registered trademark NASDAQ. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has no United States trademark registration for the trademark NASDAC. Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's registered trademark or any trademark confusingly similar thereto.
The web page associated with the disputed domain name resolves to a website offering miscellaneous financial links to investment-related goods and services, none of which originate from or are otherwise authorized by Complainant. Each header provides a list of links to other sites purporting to offer investment-related goods and services (“Penny Stock”, “Stock Trading”, “Stock Market Investing”, “Forex Trading”, “Stock Chart”), none of which are affiliated with or authorized by Complainant. UDRP decisions have consistently found that registrants that “park” their domain name using redirecting services have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
It is difficult for a complainant to prove the negative that the respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for complainant to make a prima facie showing that respondent does not have any rights or legitimate interests in the disputed domain name. Respondent did not file a Response and avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has made an undisputed prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C. 1 Registered in Bad Faith
Complainant commenced use of its trademark NASDAQ in commerce in the United States of America in association with the operation of a stock market in 1968. As a result of the extensive advertising and widespread and extensive use, the trademark NASDAQ had become a very well-known trademark in the United States and many other countries prior to the registration of the disputed domain name by Respondent on December 28, 2001. In a decision in 2003, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office determined that Complainant's mark NASDAQ was famous within the high standard set forth under the U.S. Anti-Dilution Act (The Nasdaq Stock Market, Inc. v. Antartica S.r.l., 69 U.S.P.Q.2d 1718 (T.T.A.B. 2003)) prior to the date of an application for a trademark on September 1, 1998 by an applicant filing for a trademark including NASDAQ.
The Panel finds that Complainant has established that its trademark NASDAQ, which had been extensively advertised and widely-used in association with goods and services associated with the promotion and operation of a stock market, was a very well-known trademark prior to the registration of the disputed domain name by Respondent. Respondent has failed to submit any evidence of any legitimate use of “nasdac” in association with goods, services or a business and Respondent is a known cybersquatter.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent registered the disputed domain name in bad faith. C. 2 Domain Name Used in Bad Faith
The Panel finds that Respondent is involved in “typosquatting”; the practice of using a domain name which is a misspelling of a well-known trademark. Respondent was also been found to be involved in cybersquatting and acting in bad faith in numerous UDRP cases referred to above.
Respondent is using the confusingly similar disputed domain name to attract users to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's trademark as to source, sponsorship, affiliation or endorsement of Respondent's website constituting bad faith use under paragraph 4(b)(iv) of the Policy.
Respondent's offer to sell the disputed domain name to Complainant for a price well in excess of Respondent's expenses in acquiring the disputed domain name and ignoring Complainant's offer of USD 100.00 to cover Respondent's actual out of pocket expenses incurred in registering the disputed domain name further constitutes evidence of bad faith of Respondent under paragraph 4(b)(i) of the Policy. See TOROC & IOC v. Peter H. Hufschmid,WIPO Case No. D2001-0604.
The Panel finds that Respondent used the disputed domain name in bad faith. 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 disputed domain name be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: March 24, 2010
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