WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Nasdaq Stock Market, Inc. v Vidudala Prasad

Case No. D2001-1493

 

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 Respondent is named as Vidudala Prasad, of 50B, East Crooked Hill Road, Pearl River, New York, 10965, United States of America.

 

2. The Domain Name and Registrar

The contested domain name is <japannasdaq.com>.

The registrar is Register.com, Inc., of 575 Eight Avenue, 11th Floor, New York, New York, United States of America.

 

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 Register.com, 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 name is registered with Register.com, Inc., and that the registrant for the domain name 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 January 4, 2002, 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.

In accordance with the ICANN Rules, the last day for submitting a Response was January 24, 2002. The Respondent failed to submit a Response by that date and on January 30, 2002, the Center formally notified it of its failure to submit a Response by that deadline.

The panelís 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 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 was properly notified of its 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 name was registered on December 27, 1999.

The Complainant sent the Respondent a cease and desist letter on October 29, 2001. The Respondent has refused to transfer or cancel the disputed domain name.

 

5. Partiesí Contentions

A. Complainant

The Complainantís 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 makersóindependent dealers who openly compete with one another for investorsí orders in each Nasdaq security.

The Nasdaq Stock Market is also the largest stock market in the world per daily share volume and the worldís best-recognized stock market.

The Complainant is a global company that provides financial information and operates markets in North America, Asia and Europe. In June 2000, the Nasdaq Japan Market began trading as a section of the Osaka Securities Exchange. This market is operated by the Complainantís affliate, Nasdaq Japan, Inc. The Complainant owns the domain name <nasdaq-japan.com> and operates a website at that address. As at the end of 2000, forty companies were listed on the Nasdaq Japan Market.

The Complainant owns many trademark registrations, both in the United States and in Japan.

The Complainantís 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.

The NASDAQ mark is registered in Japan as Registration Nos. 2,622,912 and 4,044,096.

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:

- <nasdaq.org>;
- <asdaq.com>;
- <nasdaq.net>;
- <nasdaq-japan.com>;
- <nasdaqgermany.com>;
- <nasdaqchina.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>;
- <nasdaqamextrader.com>.

The disputed domain name diverts users to a website at the address <http://search.clickfinders.com> which provides links to other websites featuring stock trading, casino and other services. The disputed domain name incorporates the "Nasdaq" mark in its entirety, the sole difference between them being the addition of the geographic identifier "Japan". The domain name is confusingly similar to the Complainantís "Nasdaq" mark.

The Respondent has no legitimate interest in the disputed domain name. The Respondentís only use of the domain name is to direct visitors to the <http://search.clickfinders.com> website, and those uses may incorrectly believe that this site is sponsored by the Complainant.

The Complainant provided a number of reasons why the Respondent registered and used the contested domain name in bad faith. Some of these reasons include that the Respondent is not using the domain name in a non-commercial "fair-use" manner, the Respondent does not have authority or licence to use the "Nasdaq" mark and that the name is being used in an attempt to gain credibility for the services offered at the site by misleading users into believing that it is associated with the trade mark owner.

B. Respondents

The Respondent has 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 name is identical or confusingly similar to a trade mark 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 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 name is 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 worldís 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 Complainantís trademark rights.

The only differences between the domain name in dispute and the Complainantís "Nasdaq" mark are the addition of the word "Japan" and the generic top level domain name identifier <COM>. Neither deflects from the essential similarity of the domain name from the "Nasdaq" mark. The addition of "Japan" does not prevent a finding of confusing similarity. See Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046. ("Öas many cases have now concluded, the addition of a geographic descriptor does not change the confusing nature of the similarity, see e.g. Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117. I see no reason to depart from this line of authority.")

See also The Nasdaq Stock Market, Inc. v. Star Internet Financial Information Services, Ltd., WIPO Case No. D2001-1210, involving <hknasdaq.com>.

The Panel finds that the disputed domain name is confusingly similar to the Complainantís "Nasdaq" trademark.

6.2 Illegitimacy

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 an individual, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trade mark or service mark rights; or

(iii) it is making a legitimate non-commercial or fair use of the contested domain name, 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 Complainantís 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 Respondent has no legitimate interest or business purpose in the contested name and that it registered and is using the name in order to suggest that the Complainant is affiliated with, or has sponsored, the website entered upon typing the <japannasdaq.com> address.

The Respondent is not trading under the "Nasdaq" mark or using that mark on its site. (If it did so on the website that resolves to the disputed domain name, the Respondent would likely be infringing the Complainantís trademark rights.) The inescapable conclusion is that the Respondent registered and uses the domain name to create an inference of association or connection with the Complainant, and to attract internet users attempting to visit the Complainantís site.

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 Ďbona fideí offering of goods or serviceÖ..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 Respondent has no rights or legitimate interest in respect of the disputed domain name.

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 trade mark 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 trade mark 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 website 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 website or location or of a product or service on the Respondentís website or location.

The "Nasdaq" trademark is inherently distinctive and without any meaning other than as a trademark of the Complainant. Registration of a domain name confusingly similar to the "Nasdaq" trademark in circumstances where that mark has no inherent meaning other than as a trademark of the Complainant, and where the Respondent does not appear to be known under that mark and does not appear to be using it in connection with any business under that name suggests that the Respondent was indeed aware of the fame of the "Nasdaq" mark and the Complainantís rights in that mark.

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 Respondentís website 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 website or location or of a product or service on the Respondentís website or location.

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.

 

7. Decision

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 name <japannasdaq.com> be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: February 27, 2002