WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM
Case No. D2001-1492
1. The Parties
The Complainant is The Nasdaq Stock Market, Inc., a Delaware corporation, having a place of business at One Liberty Place, 165 Broadway, New York, New York, 10006, United States of America.
The Respondents are named as NSDAQ.COM, NASDQ.COM and NASAQ.COM, having their address at 67/j-6vouj Pzscek, Gdynsk 82285, Poland.
2. The Domain Name and Registrar
The contested domain names are <nsdaq.com>, <nasdq.com> and <nasaq.com>.
The registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
The electronic version of the Complaint was filed on December 27, 2001. The hard copy version of the Complaint was received on December 27, 2001.
On December 31, 2002, the Center transmitted via email to Tucows, Inc., a request for registrar verification in connection with this case and on December 31, 2002, the Center received a verification response confirming that the domain names are registered with Tucows, Inc., and that the registrant for each of the domain names is the Respondent whose name corresponds to the disputed domain name.
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 January 4, 2002, the Center formally notified the Respondents of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
In accordance with the ICANN Rules, the last day for submitting a Response was January 24, 2002. The Respondents failed to submit a Response by that date and on January 30, 2002, the Center formally notified them of their failure to submit a Response by that deadline.
The panel’s decision is required to be handed down by February 22, 2002 (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 Center’s assessment concerning the Complainant’s compliance with the formal requirements; the Complaint was properly notified to the Respondents in accordance with paragraph 2(b) of the ICANN Rules; the Respondents were properly notified of their failure to submit a Response within the time period allowed in the Notification of Complaint and Commencement of Administrative Proceeding in accordance with paragraph 2(b) of the ICANN Rules and 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 "Nasdaq" mark, including <nasdaq.com>, registered in 1993.
The disputed domain names were registered by Respondents as follows:
<nasdq.com> - on July 3, 1998
<nsdaq.com> - on July 5, 1998
<nasaq.com> - on September 24, 1998
When the Panel visited the websites at the disputed domain names, all disputed domain names resolve to a website at <www.megago.com>. The address of each of the Respondents in the who-is database is the same.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainant operates the Nasdaq Stock Market, which is the largest electronic, screen-based market in the world. It has the capacity to handle five billion share transactions a day.
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—independent dealers who openly compete with one another for investors’ orders in each Nasdaq security.
The Nasdaq Stock Market is also the largest stock market in the world per daily share volume and the world’s best-recognized stock market.
The Complainant’s evidence shows 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; and
- U.S. Trademark Registration No. 1259277 (filing date September 15, 1982) for the word mark NASDAQ in classes, 9, 16, 35, 36 and 38.
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 Complainant owns a large number of domain names, including the following:
The disputed domain names incorporate common misspellings of the "Nasdaq" mark. In each case, the only difference from the Complainant’s registered "Nasdaq" mark and the three disputed domain names is the lack of one letter. The domain names are therefore confusingly similar to the Complainant’s "Nasdaq" mark.
The Complainant’s complete submission on legitimate interest is as follows:
"Respondent has no legitimate interest in the domain names <nsdaq.com>, <nasdq.com> and <nasaq.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 Nasdaq’s site may incorrectly believe that Nasdaq’s website is not functioning."
The Complainant provided a number of reasons why the Respondents registered and used the contested domain names in bad faith. Some of these reasons include that the Respondents are not using the domain names in a non-commercial "fair-use" manner, the Respondents do not have authority or licence to use the "Nasdaq" mark and that registration of the domain names is an attempt to trade on the value of Nasdaq’s mark through typo-squatting.
The Respondents have not submitted a Response.
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 names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant.
As a preliminary point, the Complainant has sought to joint the Respondents in these proceedings. There is a close degree of similarity between all three domain names and the names of the Respondents. All three Respondents have the same address in Poland and, at the time of preparing this decision, all three domain names resolve to the same website at <megago.com>. Accordingly, the Panel considers it appropriate for the Respondents to be jointed in a common complaint.
6.1 Identical or confusingly similar to a trade mark or service mark
The Panel must find that: (a) the Complainant has a trade mark or service mark; and (b) that the contested domain names are identical or confusingly similar to that trade mark or service mark.
The Panel agrees that the NASDAQ trademark is extremely well-known throughout the world. The Panel believes that the word "NASDAQ" would be associated with the goods and service of the Complainant in the minds of relevant consumers. The Complainant has developed significant goodwill in the NASDAQ trademark. Indeed, the Panel believes that the NASDAQ trademark is one of the world’s famous trademarks. In The Nasdaq Stock Market v. Green Angel, WIPO Case No. D2001-1010, this panelist decided that the NASDAQ trademark was well-known. (Also, in WEB2YOU, INC. v. MYDOTCOM.COM, eResolution Case Number AF-0268, this panelist stated in passing that the "Nasdaq" mark was well-known.) Accordingly, the Panel finds that the Complainant has trademark rights in "Nasdaq".
The Panel will now consider whether the contested domain names are identical or similar to the Complainant’s trademark rights.
The disputed domain names comprise what the Complainant says are common misspellings of the term "Nasdaq". The domain names are almost identical to the Nasdaq mark, the only difference being in each case the lack of only one letter. Quite clearly, the Respondents have sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant’s website, a practice dubbed "typosquatting" and condemned in a number of WIPO panel decisions. (See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587 and Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594).
The Panel finds that all three contested domain names are confusingly similar to the Complainant’s NASDAQ trademark.
Under Paragraph 4(c) of the ICANN Policy, the Respondents may demonstrate their rights and interests in the contested domain names by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparations to use, the contested domain names or names corresponding to the contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute; or
(ii) they (as individuals, a business, or other organization) have been commonly known by the contested domain names, even if they have acquired no trade mark or service mark rights; or
(iii) they are making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests. The Respondent had the opportunity to respond and present evidence, for example, that it has legitimate business and registered the domain name without knowledge of the Complainant’s rights. The Respondent chose not to respond or present evidence. The Complainant is not entitled to win simply by default, but the Panel can and does draw evidentiary infancies from the failure to respond.
The Complainant contends that the Respondents have no legitimate interest or business purpose in the disputed domain names. The Complainant asserts that the disputed domain names were "parked" so that they do not resolve to any content and that this may lead people seeking to access the Complainant’s site to believe it is not functioning.
However, the Panel was directed to a functioning website when typing the contested domain names. Each name resolved to a website at the address <MEGAGO.COM>. The site is an online directory and contains a copyright notice ("© 2002 MegaGo.com") at the foot of the page. While the names are, therefore, being used by the Respondents, the purpose appears to be to direct unwitting users mistyping or misspelling the address for the Nasdaq site to the < MegaGo.com> site, for commercial gain. The Respondents are not using the names in their own right to carry on business under those names. There is no reference to the Respondents on the <MegaGo.com> website.
As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service. . . . 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."
In the circumstances, the Panel finds that the Respondents have no rights or legitimate interests in respect of the 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 Respondents have registered or have acquired the contested domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the contested domain names; or
(ii) the Respondents have registered the contested domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website 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 Respondents’ website or location or of a product or service on the Respondents’ website or location.
As the Complainant asserts, the "Nasdaq" trademark is inherently distinctive and without any meaning other than as a trademark of Nasdaq. Registration of three misspelling variations of the "Nasdaq" mark in circumstances where the mark has no inherent meaning other than as a trademark of the Complainant, and where the Respondents do not appear to be known under that mark, do not appear to be using it in connection with any business under that name and where all three names resolve to another website, suggests that the Respondents are indeed aware of the fame of the "Nasdaq" mark and the Complainant’s rights in that mark.
The only reasonable conclusion is the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the site at <MEGAGO.COM> by creating a likelihood of confusion with the Complainant’s mark. In effect, they are leveraging off the fame of the "Nasdaq" mark for their own benefit. As such, this is evidence of registration and use of the domain names in bad faith. See Yahoo! Inc. v Data Art Corp., (WIPO Case No. D2000-0587), Edmunds.com, Inc v WWWEDMUNDS.com and DMUNDS.com (WIPO Case No, D2001-0937) and Pig Improvement Company, Inc. v. Platinum Net, Inc., (WIPO Case No. D2000-1594).
Based on the evidence presented, the Panel can only conclude that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Internet and financial communities would be seriously confused if mistyping "nasdaq.com" would lead to the MegaGo website. In short, it is clearly bad faith to register three domain names that are all clearly misspellings of a world famous trademark.
The Panel finds that the Respondent has registered and is using the domain name in question in bad faith, in accordance with paragraph 4(b)(iv) of the ICANN Policy.
For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and paragraph 15 of the ICANN Rules, the Panel orders that the contested domain names <nsdaq.com>, <nasdq.com>, and <nasaq.com> be transferred to the Complainant.
Dated: February 27, 2002