Complainant is Nasdaq, Inc. of New York, New York, United States of America ("United States") represented by Akin, Gump, Strauss, Hauer & Feld, Washington, D.C., United States.
Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Becky Bath of Riverton, Utah, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2016. On November 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 18, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day. On November 23, 2016, Complainant submitted an amendment to the Complaint.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 16, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 21, 2016. 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 states that it is "the creator of the world's first electronic stock market" and "a world-leading provider of trading, clearing, exchange technology, listing, information and public company services through the largest networks of exchanges in the world"; that "its technology powers more than 70 marketplaces in 50 countries"; and that "[a]cross its global exchanges, [Complainant] lists more than 3,500 companies in 35 countries, representing more than USD 9.1 trillion in total market value." Further, Complainant states that it "is one of the most sought-after employer[s] in the financial/exchange services field".
Complainant states, and provides evidence to support, that it is the owner of a number of trademark registrations for the mark NASDAQ, which "has been in continuous use in United States commerce since 1968", including U.S. Reg. No. 922,973 (registered October 26, 1971) for use in connection with "listing of securities for quotation for sale or information purposes". Complainant also states that the mark NASDAQ is registered "in approximately 40 other jurisdictions around the world". These registrations are referred to hereafter as the "NASDAQ Trademark".
The Disputed Domain Name was created on October 4, 2016, and (as shown by relevant evidence in support thereof) is being used in connection with the fraudulent advertisement of non-existent jobs or internships with Complainant, in which Respondent "was asking for money from unsuspecting candidates". The Disputed Domain Name does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the NASDAQ Trademark because, inter alia, the Disputed Domain Name "incorporates [Complainant's] s famous NASDAQ mark and name in its entirety"; "[t]he addition of the descriptive designation 'hires' to NASDAQ does [not] distinguish the parties' marks and the domain names"; and "the use of the additional verbiage would further confuse the public into believing that it is [Complainant] that is seeking to hire employees or interns".
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent's only use of the NASDAQHIRES.COM domain name is to intentionally mislead viewers and attract confused users to engage in financial fraud"; and "given the international fame of [Complainant's] NASDAQ mark 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 aware of [Complainant's] rights in the same when the [Disputed] Domain Name was registered."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia,"Respondent is using the [Disputed] [D]omain [N]ame to commit fraud" by falsely advertising and soliciting payment for non-existent jobs at Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the NASDAQ Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the NASDAQ Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "nasdaqhires"), as it is well established that the generic Top-Level Domain ("gTLD") (i.e., ".com") may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("[t]he applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark").
The Disputed Domain Name contains the NASDAQ Trademark in its entirety, plus the word "hires". The inclusion of this additional word does nothing to alleviate any confusing similarity. See, e.g., Barclays Bank PLC v. herethereandeverywhere, inc,WIPO Case No. D2011-1851 (transfer of ); Google Inc. v. Eamonn Smyth,WIPO Case No. D2011-1023 (transfer of ); and Wal-Mart Stores, Inc. v. Hostmaster Hostmaster, Domain Park Limited,WIPO Case No. D2008-1158 (transfer of, inter alia, ).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent's only use of the NASDAQHIRES.COM domain name is to intentionally mislead viewers and attract confused users to engage in financial fraud"; and "given the international fame of [Complainant's] NASDAQ mark 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 aware of [Complainant's] rights in the same when the [Disputed] Domain Name was registered".
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP" WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 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 online 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 or service on the respondent's website or location. Policy, paragraph 4(b).
Although Complainant does not cite any analogous decisions under the Policy, numerous panels have found the registration and use of a domain name that is confusingly similar to a complainant's trademark to constitute bad faith where, as here, the domain name is being used to advertise non-existent jobs at the complainant. See, e.g., Accor v. Paul Hocevar,WIPO Case No. D2012-0025 ("Though the Domain Name is inactive, Respondent uses an email address in relation with the Domain Name for recruitment services as an official member of Complainant to attract job hunters to apply for jobs through said email address. The Panel finds that Respondent's behavior may cause consumers to mistakenly believe that the Domain Name is owned by Complainant and the bad faith is established."); Vifor (International) Ltd. v. Glenn Freeman,WIPO Case No. D2014-2065 ("Complainant has produced evidence that the disputed domain name has been used as a support to an email address used for impersonating Complainant, which was linked to bogus job advertisements on a third party website purportedly posted by Complainant…. Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by Respondent.")..
Accordingly, the Panel finds that Complainant has proven the third element 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 Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: January 3, 2017
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