The Complainants are NYSE Group, Inc. of New York, New York, United States of America (“US”), NYSE AMEX LLC of New York, New York, US, Euronext N.V. of Amsterdam, the Netherlands, represented by Arent Fox LLP, US.
The Respondent is Keith A. Casey d/b/a KAC Enterprises of Decatur, Alabama, US. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2013. On September 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25, 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 October 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2013.
The Center appointed Lawrence K. Nodine 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 NYSE Group, Inc is engaged primarily in the operation of a national and international market for the trading of securities, as well as providing ancillary and educational services. The Complainant NYSE Group is the successor to The New York Stock Exchange, founded in 1792. The Complainant NYSE AMEX LLC. is the successor in interest to the American Stock Exchange. The Complainant Euronext N.V. is a limited liability company of the Netherlands, and a jointly owned affiliated company of the other complainants. The Complainant NYSE Group owns many trademark registrations, including US Registration No. 909350, dated March 2, 1971 for the mark NYSE covering services related to conducting a securities exchange.
The Complainant NYSE AMEX LLC also owns several trademark registrations, including US Registration No. 896924 of August 18, 1970, for AMEX covering securities and exchange services.
The Complainant Euronext N.V. owns US Registration No. 3758306 of March 9, 2010 for ALTERNEXT covering financial services, as well as international registrations for the mark ALTERNEXT.
The disputed domain names were registered between 2003 and 2012 inclusively. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, the Complainants allege that, as evidenced by numerous trademark registrations, they have rights in marks that are confusingly similar to the disputed domain names, that the Respondent has no rights or legitimate interests in any of the disputed domain names and that the disputed domain names were registered and are being used in bad faith. Specifically, the Respondent has linked the disputed domain names to commercial websites that make unauthorized uses of the Complainants’ NYSE Marks. The Complainants also contend that the Respondent’s registration has prevented the Complainants from reflecting their trademarks in corresponding domain names. Moreover, the Complainants notified the Respondent by a cease and desist letter at the Respondent’s email on February 4, 2013, and twice by Federal Express letter to the Respondent’s address, the latest on May 8, 2013. The Complainants have not received any reply. B. Respondent
The Respondent did not respond to the complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
Given the Complainants’ trademark registrations, the Panel finds that they have trademark rights in NYSE, NYX, AMEX and ALTERNEXT. The Panel also finds that the disputed domain names are confusingly similar to these marks. All of the disputed domain names include at least one of these marks, and in some case two of them. None of the additional elements prevent the confusion similarity. B. Rights or Legitimate Interests
There is no evidence here that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain names or a name corresponding to them in connection with a bona fide offering of goods or services. Neither is there any evidence that the Respondent has ever been commonly known by the disputed domain names. And there is no evidence that the Respondent has made a legitimate noncommercial or fair use of the disputed domain names. Accordingly, Respondent has not demonstrated rights or legitimate interests in any of the ways recognized in the Policy, paragraphs 4(c)(i)(ii) or (iii).The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
It is highly unlikely that the Respondent was unaware of the Complainants’ well know trademark rights when the Respondent registered the numerous disputed domain names from 2003 to 2012 since the Complainant NYSE Group had used the NYSE Marks nationally and internationally in the field of trading securities, and the Respondent was using the websites at the disputed domain names to offer goods and services related to the trading of securities. The Panel finds that the Respondent registered the disputed domain names in bad faith.
This Panel is satisfied that the Respondent’s websites generate income for the Respondent through the commercial offerings of services related to providing financial information regarding stock dividends. This is bad faith registration and use under paragraph 4(b)(iv). Under the Policy, it is evidence of bad faith registration and use that “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainants.
Lawrence K. Nodine
Sole Panelist
Date: November 21, 2013
Full & Egal Universal Law Academy