WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The NASDAQ Stock Market, Inc. v. Seventh Summit Ventures
Case No. D2001-1497
1. The Parties
The Complainant is The Nasdaq Stock Market, Inc., a Delaware Corporation with a place of business at One Liberty Plaza, 165 Broadway, New York, New York 10006 USA.
The Complainant is represented by Messrs Akin, Gump, Strauss, Hauer and Feld LLP of 1676 International Drive, Penthouse Suite, McLean, Virginia 22102 USA.
The Respondent is Seventh Summit Ventures whose address is Cleveland Seaforth, 15 Charter Street, St Johns, West Indies, Antigua and Barbuda.
2. The Domain Name and Registrar
The domain name in dispute is <nasdak.com>.
The Registrar is Tucows, Inc. at 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.
3. Procedural History
An initial complaint was received against Stonybrook Investments, Ltd. of 18 Mopan Street, Belize City, Belize by the WIPO Arbitration and Mediation Center on December 27, 2001. Acknowledgement of receipt of the Complaint was given to the Complainant on December 28, 2001.
On December 31, 2001, a request for verification of the domain name was made to Tucows, Inc. Confirmation was received that the domain name <NASDAK.COM> was now registered with Tucows, Inc. in the name of Seventh Summit Ventures. As a result, an Amended Complaint was submitted to the Center on January 8, 2002, by email.
On January 15, 2002, notification of the amended complaint and the commencement of the administrative proceeding was e-mailed to the Respondent and a copy sent also by courier.
No response having been received from the Respondent notification of the Respondent's default was given by the Center on February 6, 2002. No further communication having been received from the Respondent notification of the appointment of the administrative panel consisting of a sole panelist Mr. Clive Duncan Thorne was given on February 19, 2002, with a projected decision date of March 5, 2002. The Panel has since requested an extension of time for submission of the decision. This was on the basis that the Complainant had filed three other complaints (Nos. D2001-1494, 1495 and 1496) and that the Panel wished to consider all four cases at the same time.
The panelist has submitted a statement of acceptance and declaration of impartiality and independence. The Panel understands that payment of the due fees has been properly made by the Complainant.
4. Factual Background
According to the Complainant the Nasdaq Stock Market is the largest electronic screen based market in the world with the capacity to handle a share volume in excess of 5 billion shares a day. It is also the largest stock market in the world per daily share volume and the world's best recognised stock market.
Using advanced computer and telecommunication technologies Nasdaq enables securities firms to execute transactions for investors and for themselves from anywhere they are located. In addition to its sophisticated technology Nasdaq is distinguished from other exchanges by its use of multiple market makers i.e. independent dealers who openly compete with one another for investors’ orders in each Nasdaq security. Nasdaq has two tiers; the Nasdaq National Market with Nasdaq's larger companies whose securities are the most actively traded, and the Nasdaq Small Cap Market with emerging growth companies.
There are approximately 4,300 companies listed on the Nasdaq Stock Market making Nasdaq the market of choice for more companies than any other US securities market. In addition Nasdaq lists more non-US based issues than all other US securities markets combined.
Nasdaq also 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. Nasdaq also formulates regulatory policies and listing criteria applicable to the market it operates. Nasdaq encompasses the maintenance of complex technological infrastructures for the collection, processing, and dissemination of trade and quotation information; a compliment of sophisticated order execution and negotiation systems; an online stock watch unit responsible for trading halts and extensive services provided to Nasdaq companies and Nasdaq market participants.
Nasdaq owns numerous trade marks and service marks containing or comprising NASDAQ "for various financial products and services". The mark "NASDAQ" has been in continuous use in the United States, since 1968. It is registered in the US Patent and Trade Mark Office and in approximately 40 other countries around the world. As a result of a long extensive use of the mark "NASDAQ" for financial products and services the Complainant asserts that Nasdaq has become a famous mark around the world indicating a source of products and services originating exclusively with Nasdaq.
At page 8 of the Complaint the Complainant refers to the fact that Nasdaq has registered hundreds of domain names most of which have been used by Nasdaq in connection with active websites containing content originating from or approved by Nasdaq. Annex D to the Complaint is a NSI Directory Printout showing representative domain names owned by Nasdaq.
It should be noted that as a result of the wide use of the mark NASDAQ the mark NASDAQ has become a distinctive part of the Complainant's trade name in connection with its business. Nasdaq commonly referred to as "Nasdaq" by members of the general public as well as by members of the financial industry and media.
Exhibited at Annexes E and F to the Complaint are US Trade Mark Registrations for the mark "NASDAQ" Nos. 0922973 and 1259277.
The Complainant also submits that Nasdaq has generated substantial goodwill in the mark NASDAQ as a result of its long and continuous use of the mark. The Complainant refers for example to the Nasdaq market site in New York City including the visual display site overlooking Times Square New York an advertisement for which is exhibited at Annexes H to the Complaint. The Complainant submits that goods and services offered under the Nasdaq mark have achieved a reputation for excellence and that the mark has become synonymous with the provision of high quality and reliable stock market information and trading services.
The background to the dispute is that on or about August 8, 1997, long after the first use and registration of the mark "NASDAQ" in the United States and elsewhere Stonybrook Investments Ltd registered the domain name <nasdak.com> with the Registrar Tucows.com, Inc. The Registrar has confirmed that shortly after the receipt of the unamended Complaint Stonybrook Investments, Ltd. transferred the domain name to the present Respondent Seventh Summit Ventures. Exhibited at Annex A to the amended Complaint is a Who Is Search referring to the current registrant as Seventh Summit Ventures.
On January 11, 2001, the Complaint's representatives sent a cease and desist letter via First Class Mail and Electronic Mail to Stonybrook Investments Ltd indicating that its registration of the <nasdak.com> domain name violated Nasdaq's rights in its "Nasdaq" trademark under US Law. No response was received. On January 6, 2002, a similar cease and desist letter was also sent to Seventh Summit Ventures at their address in Antigua. Again no response has been received. Copies of the correspondence is annexed at Annex J to the Amended Complaint.
5. The Complainant's Contentions
In order to succeed in its request for an Order to transfer the domain name to the Complainant the Complainant has the burden of proof ensuring that each of the elements set out in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") at present. These are as follows:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark 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 is registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
6. Discussion and Findings
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Panel accepts the factual evidence of the Complainant's trade mark rights and is satisfied that the Complainant has long established registered and unregistered trade mark rights in the mark "NASDAQ" throughout the world.
The Complainant contends that the Respondent's domain name <nasdak.com> represents a common mis-spelling of the term "NASDAQ" and is the phonetic equivalence to the registered mark "NASDAQ". The Panel accepts that the marks are confusingly similar and finds for the Complainant under this element.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant submits in support of this contention that:
(i) the Respondent has no trade mark rights in "NASDAK"; and
(ii) the Respondent's own use of the domain name is to mis-direct visitors seeking Nasdaq's website to the Super Internet Deals.com website and that this is misleading use which is not and cannot be legitimate use of the mark of another.
There are, in default of a Response, no contrary submissions by the Respondent and the Panel is in those circumstances prepared to accept the Complainant's submissions on this element and accordingly finds for the Complainant on this element.
(iii) The Respondent's domain name has been registered and is being used in bad faith
In support of this submission the Complainant submits inter alia:
(i) the Respondent's use and registration of the domain name <nasdak.com> is an obvious attempt to trade on the value of Nasdaq's mark by taking advantage of typographical errors;
(ii) people who may access <nasdaq.com> in an attempt to reach Nasdaq's website may incorrectly believe that the Nasdaq website is connected or associated with the <Super Internet Deals.com> website;
(iii) the circumstances of the transfer of the domain name to the Respondent after the original complaint was filed is further evidence of bad faith. In support of this view the Complainant relies upon the fact shown by the search exhibited at Annex A to the Complaint that there appears to be a relationship between the original Respondent Stonybrook Investments, Inc. and the current Respondent to the Amended Complaint in that the site which the <nasdak.com> domain name resolves continues to be hosted by Stonybrook Investments.
In the absence of a Response, there are no contrary submissions from the Respondent.
Given the accepted confusing similarity between the mark "NASDAQ" and the domain name <nasdak.com> which the Panel has found the Panel is prepared to accept the above submissions by the Complainant. In particular the Panel considers that the registration of <nasdak.com> was likely to have been an attempt to trade on the value of the Complainant's marks by taking advantage of typographical errors.
The Panel also has in mind Paragraph 4(b)(iv) of the Policy which provides that in particular but without limitation the following, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith:
"(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Panel finds that these circumstances are present on the basis of the submissions of the Complainant and the overall circumstances surrounding the registration and maintenance of the domain name <nasdak.com> by the Respondent.
Accordingly, the Panel finds for the Complainant in respect of this element and therefore finds that the Complainant has succeeded in its complaint.
The Complainant requests that the domain name <nasdak.com> be transferred from the Respondent to the Complainant. The Panel finds for the Complainant and orders that the name <nasdak.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: March 15, 2002