WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. Green Angel
Case No. D2001-1010
1. The Parties
The Complainant is THE NASDAQ STOCK MARKET, INC., a Delaware corporation, having its principal place of business at 1735 K Street, N.W., Washington, D.C. 20006, United States.
The Respondent is Green Angel of 49 St. Olaves Road, Toronto, Ontario, Canada.
2. The Domain Names and Registrar
The contested domain names are <nasdaqstockexchanges.com>, <nasdaqstockmarket.com>, <nasdaqamexstockexchange.com>, and <nasdaqexchanges.com>.
The Registrar is Bulk Register, Inc., 10 East Baltimore Street, Suite 1500, Baltimore, Maryland, 21202, United States.
3. Procedural History
The electronic version of the Complaint was filed on August 8, 2001. The hardcopy of the Complaint was received on August 10, 2001.
On August 10, 2001, the Center transmitted via email to BulkRegister Inc. a request for registrar verification in connection with this case and on August 15, 2001, the Center received a verification response confirming that the domain names are registered with BulkRegister Inc. and that the Registrant for the domain names is the Respondent.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On August 10, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this Administrative Proceeding and sent copies to the Complainant, the Registrar and ICANN.
The Respondent filed an electronic version of the Response on September 4, 2001. The hardcopy of the Response was received on September 10, 2001.
On September 17, 2001, the parties were notified that Mr. Swinson had been appointed as the Sole Panelist and that a decision was to be handed down by October 1, 2001, (save exceptional circumstances).
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Respondent electronically filed a copy of the Response within the timeframe set out in the ICANN Rules; the Administrative Panel was properly constituted.
4. Factual Background
The Complainant is well-known as the organization that operates the Nasdaq stock market.
The Complainant has registered numerous domain names containing the term NASDAQ, including <nasdaq.com>, registered in 1993.
The Respondent became the Registrant of the following domain names on the following dates:
- <nasdaqexchanges.com> on November 10, 2000;
- <nasdaqamexstockexchange.com> on January 7, 2000;
- <nasdaqstockexchanges.com> on January 9, 2001; and
- <nasdaqstockmarket.com> on January 7, 2000.
5. Partiesí Contentions
The Complainantís submissions can be summarized as follows:
The Complainant is a subsidiary of the National Association of Securities Dealers, Inc., the self-regulatory organization of the securities industry responsible for the regulation of The Nasdaq Stock Market and the many products traded in it.
The Complainant develops, operates, and maintains systems, services, and products for a number of securities markets that it operates for the ultimate benefit and protection of investors. The Complainant also formulates regulatory policies and listing criteria applicable to the markets it operates. Using advanced computer and telecommunication technologies, the Complainant enables securities firms to execute transactions for investors and for themselves from anywhere they are located in an environment of real-time trade reporting and automated market surveillance. In addition to its sophisticated technology, the Complainant is distinguished from exchanges by its use of multiple market makers ó independent dealers who openly compete with one another for investorsí orders in each Nasdaq security.
The Nasdaq Stock Market is the largest electronic, screen-based market in the world, with the capacity to handle share volume in excess of four billion shares a day. The Nasdaq Stock Market is also the largest stock market in the world per daily share volume and the worldís best-recognized stock market.
By virtue of the continuous and substantially exclusive and extensive use in commerce of the "NASDAQ" mark by the Complainant and its predecessor in interest, and the commercial success of the products and services provided under such mark, such mark has come to have significance in the mind of the relevant public as an indicator of services originating with, sponsored by, or otherwise associated with the Complainant, and no other person or entity.
The <nasdaq.com> web site is the worldís second most popular financial web site, with approximately 50 million "hits" every day. The Complainant operates a number of other web sites.
The Complainant has spent considerable amounts of money in promoting the NASDAQ mark as well as developing and maintaining its web sites. The Complainant states that it owns a large number of domain names, including the following:
The contested domain names wholly incorporate the Complainantís NASDAQ mark. The primary difference between the mark and the domain names is the inclusion of generic wording. AMEX designates the American Stock Exchange, which the Complainant states is an entity related to the Complainant.
The Complainantís complete submission on legitimate interest is as follows:
"Respondent has no legitimate interest in the domain names <nasdaqamexstockexchange.com>, <asdaqexchanges.com>, <nasdaqstockmarket.com>, and <nasdaqstockexchanges.com>. Respondent has no trademark rights in or license to use "NASDAQ". Respondent parked the domain names, so that the Infringing Domain Names do not resolve to any content. People who may access the Infringing Domain Names in an attempt to reach Nasdaqís site may incorrectly believe that Nasdaqís web site is not functioning."
The Complainant provided ten reasons why the Respondent registered the contested domain names in bad faith. Some of these reasons include that the Respondent registered the contested domain names in bad faith because the Respondent is not using the domain names, that the Respondent registered the domain names for the purpose of transferring the domain names to the Complainant in exchange for advertising, and that the Respondent has engaged in a pattern of conduct of registering other famous domain names.
The Respondent filed a brief response. The Respondentís submissions can be summarized as follows:
The Respondent alleges that the Respondent was using the domain names, but the web sites accessible via the domain names were shut down on the Complainantís request. The Respondent further submits that the domain names in question are a description of a bookstore owned by the Respondent, which sold financial books and newsletters. The Respondent denied owning the domain name <torontostockexchange.com>.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in paragraph 4(a) of the ICANN Policy, namely:
(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 onus of proving these elements is on the Complainant.
6.1 Identical or Confusingly Similar to a Trademark or Service Mark
The Panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the contested domain names are identical or confusingly similar to that trademark or service mark.
The Complainant states that it owns numerous United States trademark registrations for marks containing the term NASDAQ, including the following:
∘ U.S. Trademark Registration No. 922973 (filing date September 14, 1970), for the word mark NASDAQ in class 35;
∘ U.S. Trademark Registration No. 1259277 (filing date September 15, 1982), for the word mark NASDAQ in classes, 9, 16, 35, 36 and 38.
The Complainant also contends that it owns trademark registrations in a number of other countries for NASDAQ, including in Canada (registration no. TMA 480,355).
However, the materials provided by the Complainant and the Panelistís confirmation of these materials by searching the USPTO web site, show that the trademark NASDAQ is owned by "NATIONAL ASSOCIATION OF SECURITIES DEALERS, INC." of 1735 K Street, N.W. WASHINGTON D.C. 20006.
The Complainant is a subsidiary of the National Association of Security Dealers, Inc.
The Complainant does own a number of U.S. trademark registrations that include "NASDAQ", including U.S. Trademark Registration No. 2156078 (filing date May 23, 1996), for the word mark THE NASDAQ STOCK MARKET in classes 16 and 36.
No explanation was provided in the Complainantís materials regarding this discrepancy. Maybe the NASDAQ registration was assigned to the Complainant, but the trademark register was not updated? The Complainantís web site has a statement that it owns the "NASDAQ" trademark.
Although there is some confusion in the evidence as to ownership of the NASDAQ registered trademark, this confusion is not sufficient for the Panel to decide that the Complainant does not have trademark rights in "NASDAQ". Compare the situation here with Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson eResolution Case Number AF-0638.
The Respondent asserts that the "NASDAQ" trademark has become diluted, because it is used "everywhere," such as in the title of books and newsletters, television shows and magazines. The Respondent also stated that there are other web sites that use NASDAQ that are not owned by the Complainant, such as <nasdaq.cc> and <nasdaqstockmarket.tv>. The Panel disagrees that NASDAQ has become diluted or generic. Use of anotherís trademark as the title of a book or newsletter is not usually use of the mark as a trademark, and so does not dilute the trademark. In fact, this is often a sign that the trademark is famous. Moreover, the Complainant does not have to sue or bring ICANN proceedings against each person who has registered the Complainantís trademark as a domain name -- the Complainant is entitled to pick its defendant and bring proceedings one at a time.
The Panel agrees that the NASDAQ and associated marks are extremely well known throughout the world. The Panel believes that the words "NASDAQ" would be associated with the goods and service of the Complainant in the minds of relevant consumers. (Indeed, this Panelist stated in passing that the "NASDAQ" mark was well known in WEB2YOU, INC. v. MYDOTCOM.COM, eResolution Case Number AF-0268.) Accordingly, the Panel finds that the Complainant has trademark rights in "NASDAQ" and "THE NASDAQ STOCK MARKET".
The Panel will now consider whether the contested domain names are identical or similar to the Complainantís trademark rights.
The <nasdaqstockmarket.com> domain name is virtually identical to the Complainantís U.S. Registration for "THE NASDAQ STOCK MARKET". Only the word "the" is missing.
The <nasdaqexchanges.com> domain name and the <nasdaqstockexchanges.com> domain name are similar to the Complainantís trademarks "NASDAQ" and "THE NASDAQ STOCK MARKET". The only differences are the addition of generic words such as "stock exchanges" and "exchanges". These are not distinguishing features and do not change the likelihood for confusion (See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp. WIPO Case No. D2000-0464; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc. WIPO Case No. D2000-0113; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles WIPO Case No. D2000-1306).
In relation to the <nasdaqamexstockexchange.com> domain name, an additional difference is the addition of "amex" to the domain name. The Complainant submits and the Panel accepts that "amex" designates the American Stock Exchange, an entity related to NASDAQ. (In 1998, the American Stock Exchange became a subsidiary of the National Association of Security Dealers, Inc. The American Stock Exchangeís web site is located at <amex.com>.) This does not change the likelihood for confusion. Compare: Schott Glas and Nec/Schott Components Corp. v. Necschott WIPO Case No. D2001-0127.
As a result, the Panel finds that all four contested domain names are confusingly similar to the Complainantís trademarks.
Under paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as individuals, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent contends that: "My Nasdaq sites were operative. I shut them down after Nasdaq asked me to. The sites were similar to another one of mine, Toronto Stock Exchange.net". The Respondent goes on to state that he has "a legitimate interest in Nasdaq" because his sites were selling financial books and newsletters.
The Respondent provided no tangible evidence proving that sites at the contested domain names were actually used. Thus, the Respondent has not shown any of the circumstances as required by paragraph 4(c).
However, the Panel will assume that the Respondent did use the domain names in a way similar to that on the <torontostockexchange.net> site. The Respondent still is unsuccessful on this point.
The Respondentís alleged use is not use of the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
As stated in Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another can not constitute a Ďbona fideí offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
The Panel concludes that the Respondent knew of the Complainantís trademark rights and <nasdaq.com> domain name at the time of registering the contested domain names. The Respondent appears to receive some financial benefit from the selling of books and advertising from its web site. The Panel concludes that the Respondent registered the contested domain name in order to divert consumers to the Respondentís web site in a way that was misleading and illegitimate. As a result, the Panel finds that the Respondentís offering of goods or services (if it in fact did so) is not a bona fide offering of services in accordance with paragraph 4(c)(i) of the ICANN Policy.
There is also no evidence that the Respondent is commonly known by the domain names in accordance with paragraph 4(c)(ii) of the ICANN Policy, nor that the Respondent is making a legitimate noncommercial or fair use of the contested domain names in accordance with paragraph 4(c)(iii) of the ICANN Policy. The Respondent has not contended that either of these sub-paragraphs apply.
As a result, the Panel finds that the Respondent has no rights or legitimate interests in respect of the contested domain names.
6.3 Bad Faith
Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the contested 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 Respondentís documented out-of-pocket costs directly related to the contested domain name; or
(ii) the Respondent has registered the contested 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 Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.
There are a number of emails between the Complainant (and the Complainantís representatives) and Mr. Zeke Zavier, the administrative, technical and zone and billing contact for the Respondent. In summary, these emails show that the Complainant first contacted the Respondent in February 2001, objecting to the registration of the contested domain names. The Respondent did not initiate contact with the Complainant offering to sell the contested domain names.
Mr. Zavier responded to this letter by offering to transfer <nasdaqstockmarket.com> and <nasdaqstockexchanges.com> to the Complainant in exchange for a link from web sites located at these domain names to other web sites of the Respondent. The Complainant rejected this. Mr. Zavierís next offer was that he would transfer the domain names in exchange for a banner advertisement on the <nasdaqstockmarket.com> and <nasdaqstockexchanges.com> sites, for which he would pay $10. The Complainant rejected this. The Complainant submitted that an advertising banner on one of NASDAQís web sites would cost well in excess of $10, but provided no evidence of this.
The Panel does not believe there is sufficient evidence to prove that the Respondent registered the contested domain name primarily for the purpose of selling, renting or otherwise transferring them to the Complainant or any of its Competitors. The Respondentís offers to the Complainant appear to be genuine (although bold) offers to try to settle a dispute. There is no evidence to suggest that the primary purpose of the Respondent registering the contested domain names was to profit from a transfer of these domain names. Therefore the Panel finds that the Complainant has not satisfied paragraph 4(b)(i) of the ICANN Policy.
Nor does the Panel believe that the Respondent registered the domain names for the purpose of disrupting the business of a competitor. The Panel finds that the Complainant has not established the element set out in paragraph 4(b)(iii) of the ICANN Policy.
The Panel finds, based on the submissions of the Respondent, that the Respondent used the contested domain names intentionally to attract, for commercial gain, Internet users to the Respondentís web sites by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation, or endorsement of the Respondentís web sites. As mentioned above, the Respondent stated that it used the domain names for a web site that sold financial books and newsletters, and had links to the Respondentís other commercial web sites (for example, in relation to selling residential housing, obtaining mortgages and booking travel). If the Respondentís submissions are correct, the Respondent used the Complainantís famous trademarks to trade off the reputation of the Complainant. This is bad faith registration and use pursuant to paragraph 4(b)(iv) of the ICANN Policy.
The Panel believes that there is some evidence to suggest that the Respondent has registered the contested domain names in order to prevent the Complainant from reflecting the mark in corresponding domain names and that the Respondent has engaged in a pattern of such conduct. The Panel notes that the Respondent is the Registrant of the domain names <thetorontostockmarket.com> and <torontostockmarket.net>. However, based on the conclusion above, the Panel does not need to decide whether there is sufficient evidence to satisfy paragraph 4(b)(ii) of the ICANN Policy.
The Respondent, in its submission, stated that it has over 20 web sites operating. The Respondent gave examples of these web sites in its submission. The domain names for these web sites (which are mostly generic terms) appear to be owned by numerous "entities", all at the Respondentís address. Some of these entities include "quiltinc" (with the administrative contact as "zavier, zeet") and "2for1net" (with the administrative contact as "hub, zeet" or "hub, max".) The Panel is concerned that the Respondent is either a bad typist, or has a habit of giving misleading or incorrect information in relation to a domain name registration. The Respondent, in this dispute, gave no explanation as to whether "Green Angel" was a person, partnership, corporation, alias or some other type of entity. The Respondentís submission, signed by "Zeke", suggests that he is the real entity that owns the domain name. The Panel views this conduct as evidence of bad faith, but does not need to decide this dispute on this ground.
The Panel has taken into account the fact that the Respondent appears to have cooperated with the Complainant. However, this does not override the Respondentís bad faith in using domain names to trade off the Complainantís reputation.
In relation to the <nasdaqamexstockexchange.com> domain name, the "amex" part refers to an entity other than the Complainant, namely the American Stock Exchange. As stated above, the National Association of Security Dealers, Inc. owns both the Complainant and the American Stock Exchange. However, the materials presented in this dispute do not show whether the Complainant has rights to use the "AMEX" trademark. The Panel notes World Wrestling Federation Entertainment, Inc. v. Aaron Rift WIPO Case No. D2000-1499, where the Panelist in a similar situation stated:
"The only remedies available under the Policy are cancellation or transfer of the domain name. See Policy, paragraph 4(i). Although I find the domain name to be an abusive registration, it is not clear that Complainant would be entitled to use the domain name because it includes the reference to WCW. The record does not explain the relationship, if any, between Complainant and World Championship Wrestling. If the domain name is cancelled, however, it is not clear how the Respondent would be prevented from immediately reregistering the domain name. Given the available alternatives, I believe the best course is to order a transfer of the domain name to Complainant."
This Panel comes to a similar conclusion in relation to the <nasdaqamexstockexchange.com> domain name.
6.5 Reverse Domain Name Hijacking
The Respondent requested the Panel to make a finding of reverse domain name hijacking by the Complainant. However, the Respondent has provided no grounds for this request. As the Complainant has succeeded in this dispute, the Panel cannot find that this is a case of reverse domain name hijacking.
For the reasons set forth above and pursuant to paragraph 4(i) of the ICANN Policy and 14 of the ICANN Rules, the Panel orders that the contested domain names <nasdaqstockexchanges.com>, <nasdaqstockmarket.com>, <nasdaqamexstockexchange.com>, and <nasdaqexchanges.com> be transferred to the Complainant.
Dated: September 30, 2001