The Complainant is NYSE Group, Inc. of New York, United States of America, represented by Arent Fox LLP, United States of America (the “United States” or “U.S.”).
The Respondent is Dehai Yu of Dezhou, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2013. On September 24 and 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2013, the Registrar 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” 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 the Respondent of the Complaint, and the proceedings commenced on September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2013.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 6, 2013. 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 is the owner of different trademarks, including without limitation the following:
REGISTRATION NO. TRADEMARK COUNTRY REGISTRATION DATE
909350
NYSE
U.S.
02/03/1971
2665267
NYSE
U.S.
24/12/2002
1517162
NYSE COMPOSITE INDEX
U.S.
20/12/1988
3603163
NYSE EURONEXT
U.S.
07/04/2009
3401941
NYSE GROUP
U.S.
25/03/2008
1744285
NYSE
China
07/04/2002
1749549
NYSE COMPOSITE INDEX
China
14/04/2002
3276418
NYSE COMPOSITE INDEX (chinese characters)
China
21/11/2007
7002980
NYSE LIFFE
China
28/09/2010
7003467
NYSE LIFFE
China
14/10/2010
The disputed domain name was registered on April 13, 2010. 5. Parties’ Contentions A. Complainant
The Complainant states the following:
That NYSE Group, Inc., is successor to the New York Stock Exchange Inc.
That the Complainant is engaged in the operation of a national and international market for the trading of securities. Identical and confusingly similar
That it owns several trademarks around different countries.
That long before the Respondent’s registration of the disputed domain name, the Complainant and its predecessors adopted and began to use the NYSE mark to advertise, promote and provide financial services and related products.
That the NYSE mark is used and promoted throughout the United States and around the world through numerous media channels, including the Internet.
That the NYSE mark is used extensively on the Internet, which is a significant method of promoting the Complainant’s goods and services. That as a result, consumers associate the NYSE mark, when used in a domain name, with the Complainant and its goods and services.
That the disputed domain name is nearly identical as well as confusingly similar to the NYSE mark, and that consumer confusion is likely to happen because the disputed domain name incorporates the NYSE mark plus a geographically descriptive word such as Asia, which indicates a region in which the Complainant advertises and conducts business.
That the addition of a hyphen in the disputed domain name is irrelevant in the interpretation of whether the disputed domain name is nearly identical as well as confusingly similar to the NYSE mark.
That anyone who encounters the disputed domain name is likely to mistakenly believe that said disputed domain name and the website to which it resolves, are owned, authorized, sponsored, or somehow otherwise affiliated with the Complainant. Rights or legitimate interests
That the disputed domain name resolves to a non active website and that there is no use or apparent preparations to use the disputed domain name in connection with a bona fide offering of goods or services by the Respondent.
That even though the disputed domain name is currently inactive, the Respondent was using the disputed domain name to resolve to a website that used the Complainant’s NYSE mark. That the header included in the website of the disputed domain name, included the misspelled phrase “NYSE Aisa” and some of Complainant’s NYSE marks such as “NYSE Euronext” and “NYSE Liffe”.
That the website to which disputed domain name resolved included links, labeled with some of the Complainant’s trademarks such as “NYSE Euronext” and “NYSE Liffe”, which were associated to some of the Complainant’s websites, and that the Respondent’s website invited visitors to register and obtain a “NYSE ADT ID and password”. That attempts made by the Complainant’s representatives to register via the website were unsuccessful, because after inputting a valid email address and clicking on the “register” button, the engine only returned the user to the home page of the site.
That the Respondent was using the disputed domain name to attract consumers to its website using the Complainant’s famous mark and in order to collect consumers’ email addresses for commercial gain and use.
That the Respondent included in the website of the disputed domain name a registered trademark and a link to the website of NASDAQ, a competitor of the Complainant, and that the Respondent is clearly using the Complainant’s NYSE mark to mislead Internet users to a commercial website of the Complainant’s competitor.
That the Respondent has never been commonly known by the disputed domain name, and is not making any legitimate, noncommercial or fair use of the disputed domain name.
That the Respondent is not a licensee of the Complainant and has never received any permission or consent to use the Complainant’s NYSE mark to register the disputed domain name.
That since the trademark NYSE is widely recognized and has been used in connection with the operation of a national and international market for the trading of securities, there can be no legitimate use of the disputed domain name by the Respondent and that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s trademark rights through the creation of initial Internet confusion. Bad Faith
That the Respondent uses the website at the disputed domain name with an unauthorized use of the Complainants NYSE Mark.
That the previous use of the disputed domain name was made by the Respondent to collect email addresses for commercial purposes.
That the Respondent registered and has been using the disputed domain name in bad faith, to intentionally attract Internet users to its website for commercial gain.
That the following is evidence of the Respondent’s bad faith registration: a) the Respondent registered the disputed domain name in 2010, many decades after the Complainant adopted and made its NYSE mark famous, therefore the Respondent is deemed to have had at least constructive knowledge of the Complainant’s exclusive trademark rights in the NYSE mark; b) the Respondent’s bad faith use of the disputed domain name is demonstrated by the commercial websites accessed through the website at the disputed domain name which has links to the Complainant’s websites and the Complainant’s competitor’s website; c) that the combination of the NYSE mark with the term “Asia” misleads Internet users to believe that the website is a regional website of the Complainant and therefore, the Respondent is generating traffic to the website, misleading Internet users by making them falsely believe that the disputed domain name is a regional site of the Complainant.
That based upon the fame of the NYSE mark and the Complainant’s many trademark registrations and applications, together with the Respondent’s inclusion of a website to collect consumer email addresses, along with the use of the disputed domain name to route traffic by creating a likelihood of confusion for the public with regard to the Respondent’s activities, in conjunction with the Respondent’s inclusion of links to the Complainant’s websites and a link to one of the Complainant’s competitors on the website that was accessible through the disputed domain name, and taking into account that the Respondent is using the geographically descriptive word “Asia” following the famous mark NYSE, the Respondent cannot claim in good faith that it made a legitimate noncommercial or fair use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark NYSE, because said disputed domain name entirely incorporates the trademark NYSE, with the addition of the geographically descriptive term “Asia”, a hyphen, and the generic top-level domain (gTLD) “.com”.
The addition of a geographically descriptive term like “Asia” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademark, and could lead to confusion among Internet users, since it could be interpreted that the disputed domain name refers to a site of the New York Stock Exchange in Asia, or authorized by said Stock Exchange to operate in Asia.
The addition of a hyphen between the terms “NYSE” and “Asia” is also irrelevant. The disputed domain name taken as a whole is confusingly similar to the Complainant’s trademark NYSE.
The acronym NYSE has acquired sufficient distinctiveness and renown around the world, and is generally associated to the New York Stock Exchange. Thus, the adoption of the term “NYSE” by the Respondent does not seem to have been coincidental. The Complainant’s Chinese trademark registration for NYSE was filed in 2002, and granted in 2002, many years before the disputed domain name was registered in 2010.
The addition of the gTLD “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel typically does not take into account the gTLD (gTLD) “.com”, because such gTLD has no legal significance.
Therefore, the first element of the Policy has been met. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a domain name:
(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. (Policy, paragraph 4(c)).
The Respondent did not submit any evidence showing that he has been using the disputed domain name in connection with a bona fide offering of goods or services. The evidence filed by the Complainant shows that the disputed domain name is not currently resolving to a web page, thus no use can be found at this point.
The Complainant also filed evidence proving that at some point the disputed domain name resolved to a website with references to “NYSE-Aisa”, “Euronext”, and “NYSE Liffe”. Said website also featured a link to the Complainant’s competitor NASDAQ. The website did not announce that said site did not belong to the Complainant (or competitor NASDAQ), or that the domain name holder did not have a relationship with the Complainant (or NASDAQ). This previous use cannot be deemed to have been done in good faith, for it generates a risk of confusion among users.
There is no evidence in the case file showing that the Respondent has been commonly known by the disputed domain name. In fact, it is the Complainant who has been known as “NYSE” for decades, around the world. This acronym is highly distinctive and it is associated to the Complainant in the minds of the public. The Respondent has not explained why he chose to register such a distinctive acronym as “NYSE”, and tie it to the geographically descriptive term “Asia” (or the misspelled term “Aisa”), especially considering that the Respondent’s address is in China. There is a clear risk of confusion among users who will think that the disputed domain name is authorized by the Complainant for the Asia region.
As discussed in previous paragraphs, the disputed domain name does not resolve to any website at this point. However, according to the evidence filed by the Complainant, and not disputed by the Respondent, the disputed domain name did resolve to a website with references to “NYSE-Aisa” (even if the term “Asia” is misspelled as “Aisa”), and references and links to “Euronext” , “NYSE Liffe” and NASDAQ. This use cannot be deemed to be a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The evidence submitted by the Complainant shows that there is a risk that consumers be misleadingly diverted and confused.
The Complainant discussed and proved another use of the disputed domain name carried out by the Respondent: The inclusion of a window within the Respondent’s website, labeled “NYSE ADT ID and password”, which according to the Complainant’s arguments and evidence contained fields where users could input their login information. The Complainant declared that after having tried to “register” on the Respondent’s site, the window simply returned the user to the home page. The Complainant suspects that the Respondent was collecting email addresses from users, and that it was doing so for commercial gain. There is no evidence of such use in the record, but the Complainant’s assertion has not been contested by the Respondent, and the Respondent has not explained why he was collecting “NYSE ADT ID and password” information, passing himself off as the Complainant or a Complainant’s accredited entity. Any user who may actually have been deceived by the Respondent’s website, and input its ID and password therein, would have placed its identity and operations at risk. Even if this possibility is relatively remote, since financial operators are sophisticated enough to take sufficient security measures, the mere possibility of compromising this type of information is undesirable. Given the facts of this case, the Panel finds that the use that the Respondent made or could have made of this delicate data could not have been made in good faith.
Therefore, the Respondent has no rights or legitimate interests in the disputed domain name. The second element of the Policy has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered 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.
The disputed domain name is inactive. However, the evidence filed by the Complainant proves that said domain name has resolved in the past to a website with references to “NYSE-Aisa” (“Aisa” being misspelled), and references and links to “Euronext”, “NYSE Liffe” and NASDAQ. This conduct falls within paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s services and trademarks as to the source, legitimacy, sponsorship, affiliation and endorsement of the Respondent’s website.
Internet users are likely to be mislead as to thinking that the website to which the disputed domain name resolved was associated to the Complainant, or that the Respondent was representing the Complainant in Asia. There is a risk of association between the Complainant’s well-known trademark NYSE, and the disputed domain name and site products. It may seem that the Complainant endorses or sponsors the Respondent’s site, when this is not the case.
The fact that the Respondent was collecting “NYSE ADT ID and password” information, by means of a website that is designed to confuse users by creating an impression that said site is associated to the Complainant, constitutes bad faith. In addition to the risk of confusion, this case deals with a situation where the Respondent has set up a trap for users and their private/delicate information. If successful, these kinds of traps could pose a risk to individual financial actors and operations, and possibly to a portion of the financial system. This conduct is not only parasitic and abusive, but could give rise to more serious responsibilities in national jurisdictions.
The third element of the Policy has been met. 7. Decision
For 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 the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: November 20, 2013
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