WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. Star Internet Financial Information Services, Ltd.
Case No. D2001-1210
1. The Parties
The Complainant in this administrative proceeding is The Nasdaq Stock Market, Inc., a corporation organized and existing under the laws of Delaware with a place of business at One Liberty Plaza, 165 Broadway, New York, NY 10006, USA.
The Respondent in this administrative proceeding is Star Internet Financial Information Services, Ltd., 45/F, The Center, 99 Queen’s Road, Central, Central, Hong Kong.
2. The Domain Names and Registrar
The disputed domain name is <hknasdaq.com>. The Registrar of the domain name is Network Solutions, Inc. of Herndon, Virginia, USA. ("NSI")
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Uniform Policy for Domain Name Dispute Resolution ("the Policy") and Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules, approved by ICANN on October 24, 1999 and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on November 26, 2001 by WIPO.
The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 4, 2001 by email and on October 8, 2001 by hardcopy. The Center dispatched to the Registrar a Request for Registrar Verification on October 9, 2001. On October 16, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On October 18, 2001 the Center received by fax a Supplement to Complaint. On November 7, 2001, the Center issued a Notification of Respondent Default.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainant’s material.
The Complainant operates the Nasdaq Stock Market. Hereinafter, the Complainant and the Nasdaq Stock Market are referred to collectively as "the Complainant". It is the largest electronic, screen-based market in the world, with the capacity to handle share volume in excess of five billion shares a day. The Complainant also is the largest stock market in the world per daily share volume and the world’s best-recognized stock market.
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 technology, the Complainant is distinguished from other exchanges by its use of multiple market makers—independent dealers who openly compete with one another for investors’ orders in each security. Known for its innovative, leading-edge growth companies, the Complainant has two tiers: the Nasdaq National Market, with the Complainant’s larger companies whose securities are the most actively traded, and the Nasdaq SmallCap Market, with emerging growth companies.
The Complainant is home to world-leading companies in such cutting-edge industries as technology, telecommunications, and biotechnology. There are approximately 4,300 companies listed on the Complainant. It is the market of choice for more companies than any other U.S. securities market. The Complainant also lists more non-U.S.-based issues than all other U.S. securities markets combined. It has achieved these results over the past 27 years.
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. It maintains: a complex technological infrastructure for the collection, processing, and dissemination of trade and quotation information; a complement of sophisticated order execution and negotiation systems; an on-line StockWatch unit responsible for trading halts; extensive services to listed companies and participants in the market.
The Complainant is a global company that provides financial information and operates markets in Europe and Asia. Beginning in 1998, the Complainant and The Stock Exchange of Hong Kong ("SEHK") participated in a cooperative program to share regulatory information and technology in order to begin reciprocal or co-listing of stocks on the Complainant and the SEHK. The Complainant and SEHK maintained a joint website for investors. In addition, on May 31, 2000, the Complainant and the Hong Kong Exchanges and Clearing Ltd. (the holding company of The Stock Exchange of Hong Kong) began a program to quote and trade seven Nasdaq stocks in Hong Kong.
The Complainant’s www.international.nasdaq.com website contains a section entirely devoted to SEHK, with links to SEHK’s website. This section includes stock quotations, news headlines and other financial information specifically related to SEHK and the stocks traded on the exchange.
The Complainant owns numerous trademarks and service marks containing or comprising "NASDAQ" for various financial products and services. The "NASDAQ" mark has been in continuous use in U. S. commerce since 1968. The "NASDAQ" mark is registered in the U.S. Patent and Trademark Office and in approximately 40 other countries around the world. A large number of such registrations have attained incontestable status. The "NASDAQ" mark is registered in Hong Kong as Registration No. 12147/1999. As a result of the long and extensive use of the "NASDAQ" mark for financial products and services, "NASDAQ" has become a famous mark around the world and indicates the source of products and services originating exclusively with the Complainant.
The Complainant has registered hundreds of domain names, including domain names comprising "NASDAQ" and a geographic identifier including: <nasdaqhongkong.com>, <nasdaq-hongkong.net>, <nasdaqhongkong.net>, <nasdaqjapan.com>, nasdaqchina.com>, <nasdaq-brazil.com>, <nasdaqgermany.net>, <nasdaqgermany.com>, <nasdaq-europe.net>; <nasdaq-europe.org>; <nasdaqindia.net>, <nasdaqusa.com>, <nasdaq-canada.com>, <americanasdaq.com>, and <latinnasdaq.com>.
Other domain name registrations include: <nasdaq.org>, <nasdaq.com>, <nasdaq.net>, <nasdaqnews.com>, <nasdaqtrader.com>, <nasdaq-online.com<, <nazdack.com>, <nasdaq-ssi.com>, <nasdaq-primex.com>, <nasdaqaqmfqs.com>, <nasdaqnews.com>, <nasdaqtrader.com>, <nasdaq-online.com>, <nasdaq-market.net>, <nasdaq-market.org>,< nasdaq-exchange.net>, <nasdaq-exchange.org>, <nasdaq-amextrader.com>, <nasdaq-amextrader.org>,< nasdaq-amex-trader.com>, <nasdaq-amex-trader.net>, <nasdaq-amex-trader.org>, <nasdaqamex-trader.org>, <nasdaqamextrader.net>, <nasdaqamextrader.com>, <nasdaqtrace.org>, <nasdaqtrace.net>.
Most of the domain names are used and have been used by the Complainant in connection with active websites containing content originating from or approved by the Complainant.
Millions of people throughout the world visit the <www.nasdaq.com>, <www.nasdaqtrader.com> < www.nasdaq-online.com> and other of the Complainant’s web sites every day; <www.nasdaq.com> is one of the world’s most popular financial web sites, with approximately 50 million "hits" every day.
The Complainant and its predecessor in interest have used the trademark and name "NASDAQ" in connection with a variety of financial products and services, including in the operation of The Nasdaq Stock Market, continuously since 1968, and the Complainant continues to use the trademark. The Complainant has used "NASDAQ" as the distinctive part of its trade name in connection with its business continuously in commerce since 1992. The Complainant commonly refers to itself as "Nasdaq" and is commonly referred to as "Nasdaq" by members of the general public as well as by members of the financial industry and the media.
The Complainant owns incontestable U.S. Registration No. 0922973 on the Principal Register for "NASDAQ" for listing of securities for quotation for sale or information purposes. It is valid, subsisting, incontestable and renewed.
The Complainant owns U.S. Registration No. 1259277 on the Principal Register for "NASDAQ" for closed circuit communication and communications networks for transmission of securities information, quotation, data and indices; electronic securities information retrieval services, computerized securities surveillance services, securities brokerage services, securities indices services, and securities analyzing services; gathering, tabulating and supplying securities information, quotations, data, indices, and listings to subscribers; newspaper sections, newspapers, newsletters, magazine sections and magazines dealing with securities, securities markets, securities market makers, stock indices, national list of securities, national market system list of securities, specific and composite securities indices, performance and comparative securities indices, securities trading volume indices, margin securities indices, securities indices meeting a given tier criteria; closed circuit apparatus for generation and dissemination of securities information, and closed circuit CRT terminals or display of securities information and computer programs for access to securities information. The registration is valid, subsisting and incontestable.
The Complainant has registered its "NASDAQ" mark in Hong Kong as Registration No.12147/1999.
"NASDAQ" is inherently distinctive as applied to the "NASDAQ" products and services, and, because the Complainant coined the word, "NASDAQ" has no meaning other than as its trademark.
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, the 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 with no other person or entity.
The Complainant has generated substantial goodwill in the "NASDAQ" mark and name and the registered domain based upon its long and continuous use of the name, trademarks, and domain names in the marketplace.
The Complainant has spent hundreds of millions of dollars promoting the "NASDAQ" mark and name and in developing and maintaining its websites. The Complainant extensively and prominently uses the "NASDAQ" trademark and its domain names in the dissemination, marketing and advertising of its services. It spends hundreds of millions of dollars in advertising and marketing its services under the "NASDAQ" trademark.
An example of the Complainant’s prominent use of the "NASDAQ" mark that has enhanced the recognition of and goodwill in its "NASDAQ" mark and name is the Nasdaq MarketSite in New York City, including a giant outdoor visual display overlooking Times Square.
As a result of the extensive and prominent use of the mark and name, "NASDAQ" has become a famous mark.
Goods and services offered under the "NASDAQ" mark have achieved such a reputation for excellence that the mark has become synonymous with the provision of high-quality and reliable stock market information and trading services.
On or about June 7, 2000, the Respondent registered the domain name the subject domain name with NSI.
The Respondent’s <hknasdaq.com> website is active and appears to contain investment and financial information as well as financial quotations.
When the Complainant learned that the Respondent had registered the subject domain name, its counsel notified Mr. Lam Gavin, administrative contact for the site at that time, by letter dated June 18, 2001 transmitted by e-mail and Federal Express, that the Respondent’s registration of the subject domain name constituted an infringement of the Complainant’s rights. Federal Express indicated that the address given – the address of record with NSI – was "undeliverable." As of the date of filing the Complaint in this matter, no response had been received from the Respondent.
On October 16, 2001, after the initiation of this matter, the Respondent wrote a letter marked "without prejudice" to counsel for the Complainant referring to an October 4, 2001 communication and stating that it was not conceding "…to any of your requests contained in your complaint filed on behalf of your client…." and offered to assign the subject domain name to the Complainant for US $150,000. It denied that it was acting in bad faith and stated that it had "…spent a lot of money in promoting our services and the website". It asserted that the amount sought was "…to compensate the marketing expenses of the new domain name".
The aforesaid letter was filed in this proceeding in a "Supplement to Complaint" dated October 16, 2001, a copy of which was sent to the Respondent on that date.
The Respondent filed no material in this proceeding.
5. Parties’ Contentions
The Complainant relies on its use and registration of the mark "nasdaq". It notes that the only difference between its mark and the subject domain name is the addition of the initials "HK" and says that the subject domain name is confusingly similar to its mark.
The Complainant asserts that the Respondent has no legitimate interest in the subject domain name because it has no trademark and that people who access the related website may be confused.
As to bad faith, the Complainant says that the Respondent does not have a right or permission to use the word "nasdaq" and that it is not using the name fairly. It relies on the Respondent’s lack of cooperation to resolve the dispute. Use of the Complainant’s trademark to attract business is said to be bad faith.
The Respondent asserted no contentions in this proceeding, although it did write to counsel for the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of the registration and use of a domain name in bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or 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) registration of 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) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 the web site or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy. The Complainant relies on a number of cases decided under the Policy and Rules. While those cases are neither controlling nor binding, they can be instructive and helpful.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the mark "nasdaq". The subject domain name is identical, except for the addition of the letters "HK". It is clear that users would consider that the subject domain name is associated with the business of the Complainant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent’s Legitimate Interest
The Complainant’s position concerning the Respondent’s lack of a legitimate interest in the subject domain name does not address the matter sufficiently. The fact that a respondent uses the trademark of another and that its use may be misleading, does not establish a lack of a legitimate interest in a domain name. Using the mark of another does undercut the legitimacy of use in a commercial context and may give rise to an inference of a lack of legitimate interest. That is, the use may not be legitimate.
In some legal systems the delivery of a communication marked "without prejudice" blocks the introduction of the communication as evidence in subsequent dispute resolution proceedings. In an ICANN domain name dispute it cannot be assumed that this automatically would be the case.
In this proceeding, the Respondent wrote a "without prejudice" communication to the Complainant, which the Complainant filed with the Administrative Panel. Although a copy of the filing was provided to the Respondent, it took no position on the introduction of the "without prejudice" communication into the record of this proceeding. In the absence of any objection to doing so, the Administrative Panel is prepared to consider the communication as part of the information upon which its decision is to be based.
In this case, the Complainant is well known and has been active in Hong Kong where the Respondent resides. On the information presented to the Administrative Panel, it is appropriate to infer that the Respondent, which is in the financial services business, knew of the Complainant and its mark.
Although the Respondent professed in its letter to the Complainant’s lawyer that it had dedicated much to the development of the subject domain name, it appears to be quite willing to sell it. This coupled with no explanation for its use of the Complainant’s mark in the subject domain name in a financial services context, leads to a conclusion that it does not have a legitimate interest in the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
A respondent is not obliged to participate in a domain name dispute. By failing to do so, it does not admit the allegations made against it, but it is open to the inferences and conclusions that flow naturally from the information provided by a complainant.
The facts that a respondent has registered a domain name in which it has no legitimate interest and which is identical or confusingly similar to a complainant’s mark does not lead necessarily to the conclusion that the domain name was registered and is being used in bad faith, but the information which leads to those conclusions may be relevant to a consideration of bad faith.
In this case, the Respondent clearly knew of the Complainant and its mark. Its use of the subject domain name not only was confusingly similar in an objective context, but its use in the financial services industry was designed to attract custom by misleading users into thinking that the subject domain name was associated with the Complainant.
The Respondent’s offer to sell the domain name for considerably more than its documented out-of-pocket costs directly related to the domain name leads to an implication of evidence of bad faith. Although it asserted that it had expended a considerable amount developing the subject domain name, no details were given on which the Administrative Panel could form any legitimate opinion whether they were costs related directly to the subject domain name. Development of a domain name that trespasses on the rights of another and with respect to which the developer does not have a legitimate interest, does not qualify for consideration as out-of-pocket costs related directly to the domain name. Similarly, the costs of establishing another name – in this case the Respondent refers to a "new" name, do not qualify in that context.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information presented to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name be transferred to it. Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: December 10, 2001.