WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.
Case No. D2002-1125
1. The Parties
The Complainant is The Nasdaq Stock Market, Inc., New York, New York 10036, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
The Respondent is Shawn Cain d/b/a Star Inc., South Pittsburg, Tennessee 37380, United States of America..
2. The Domain Name and Registrar
The disputed domain name <nasadaq.com> (the "Domain Name") is registered with Go Daddy Software, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2002. On December 11, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2002, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2003. On January 6, 2003, a Notification of Respondent Default was sent to Respondent. The Response was filed with the Center on January 6, 2003.
The Center appointed Michelle Brownlee as the sole Panelist in this matter on January 15, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant operates the Nasdaq Stock Market, a well recognized stock exchange. Respondent registered the Domain Name on or about November 13, 2002. Respondent operates a web site using the Domain Name that contains links to pornographic materials.
5. Partiesí Contentions
Complainant owns the NASDAQ trademark in the United States for a variety of financial products and services. Complainant and its predecessors in interest have been using the NASDAQ trademark in commerce since 1968. Complainant operates a web site at the domain name <nasdaq.com> that gets 50 million hits a day. Complainant submits that the domain name <nasadaq.com> is confusingly similar to its registered trademark NASADAQ.
Complainant submits that Respondent has no rights or legitimate interests in the domain name, <nasadaq.com>, as Respondent is simply using a mark confusingly similar to Complainantís well-known mark in order to drive traffic to his site. Complainant argues that trading on the fame of anotherís trademark cannot be considered a bona fide offering of services using the domain name.
Complainant also contends that Respondentís practice of "typosquatting" by registering and using a common typographical error made by Internet users who are trying to access Complainantís web site constitutes bad faith registration and use under Paragraph 4(b) of the Policy.
Respondent argues that he is using NASADAQ as an acronym that stands for "Nasty Ass Sluts and Darlings and Queens." Respondent also contends that another party had registered the <nasadaq.com> domain name prior to Respondentís registration of the name and let it lapse. Respondent states that he registered the domain when he saw it available on a web site that listed recently lapsed domain names. He argues that the previous registrant operated an astronomy-themed web site for more than 2 years that got 20,000 hits a day before it expired in September 2002. Respondent argues that Complainant should have known about the previous site and should have taken action against that site, or should have registered the domain name when it expired.
Respondent, citing Corbis Corp. v. Zest Claim, (NAF Case No. FA0107000098441, September 12, 2001), argues that "where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, . . . the trademark holder should be denied relief."
Respondent asks the Panel to make a finding of reverse domain hijacking because Complainant sent an email stating that Respondent could be liable for statutory damages up to $100,000 under the Anti-Cybersquatting Protection Act ("ACPA") and requesting that Respondent agree to transfer the domain name to Complainant, but did not mention that an inexpensive arbitration proceeding was available under the Policy.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The second level of the domain name <nasadaq.com> has only one letter different from Complainantís NASDAQ trademark. Because the NASDAQ trademark has two Aís in it, the addition of another A is easily overlooked. At first glance, "nasadaq" looks nearly identical to NASDAQ. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainantís NASDAQ trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
Respondent argues that it is legitimately using the domain name as an acronym for "Nasty Ass Sluts and Darlings and Queens." However, the evidence presented by Complainant, which was not rebutted by Respondent, shows that this slogan did not appear on Respondentís site until after Complainant sent its Complaint email to Respondent. Prior to Respondentís receipt of a Complaint from Complainant, users who entered the Domain Name <nasadaq.com> were transferred to a site called "babecumshots.com." Thus, it would appear that Respondent invented this acronym in an attempt to have some sort of legitimate claim to the domain name.
The credibility of Respondentís claim to legitimate use of this acronym is further diminished by the degree of fame the NASDAQ trademark has. It is highly unlikely that Respondent was unaware of this well-known trademark when he registered the <nasadaq.com> domain name. Respondent does not argue otherwise. Accordingly, the evidence tends to show that Respondent did not have his own legitimate interest in the name Ė rather, his interest in the name was due to its proximity to Complainantís high traffic "nasdaq.com" site. See Pig Improvement Co. v. Platinum Net, Inc. (WIPO Case No. D2000-1594) (finding no legitimate interest where Respondent registered a domain name that was a common typographical error of Complainantís web site address).
Respondent argues that his use is legitimate, presenting web page referral reports that show that "nasadaq.com" is getting a high volume of hits and that users who visit "nasadaq.com" click through to some of Respondentís other web sites, "creampiegirls.com" and "cocksuckerteen.com." Although Respondent does not include declarations or affidavits explaining how these statistics were compiled, even if we accept them as true, they tend to show that Respondent has not made a legitimate use of the domain name. That is, even though Respondentís data suggests that the "nasadaq.com" site is getting over 900,000 hits a week, in the month of December 2002, only 32 users clicked through to his site "creampiegirls.com" and only 19 users clicked through to his site "cocksuckerteen.com." This suggests that the vast majority of the users who reach the site did not intend to go there to view Respondentís content.
Accordingly, the Panel finds that Respondent does not have any right or legitimate interest in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered 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) 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 its web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith. See Playboy Intíl v. SAND WebNames Ė For Sale (WIPO Case No. D2001-0094, April 3, 2001); General Electric Co. v. Fisher Zvieli a/k/a Zvieli Fisher, (WIPO Case No. D2000-0377).
Although "typosquatting" cases such as this one do not fall squarely within the four enumerated factors, numerous panels have found that registering a name that is a common typographical error from a well-known trademark or web site address is bad faith. See, e.g., Playboy Intíl v. SAND WebNames Ė For Sale (WIPO Case No. D2001-0094); General Electric Co. v. Fisher Zvieli a/k/a Zvieli Fisher, (WIPO Case No. D2000-0377). Respondent is riding the coattails of the fame of Complainantís trademark and is generating traffic to his site by misdirecting people who are searching for Complainantís web site. As discussed above, Complainantís mark is so well known that Respondent was certainly aware when he registered the Domain Name that he was likely to be misdirecting persons searching for Complainantís web site. Accordingly, this Panel finds that Respondentís use and registration of the domain name was in bad faith under Paragraph 4(b) of the Policy.
D. Respondentís Other Defenses and Request for Finding of Reverse Domain Name Hijacking.
Respondent raises an argument that Complainant is foreclosed from complaining about Respondentís registration and use of the Domain Name because Complainant failed to complain about another partyís use of the same domain name prior to Respondentís registration of the Domain Name. The fact that Complainant did not proceed against another party who had registered the same domain name has no bearing on the case at issue. The issue is whether Respondent has a legitimate interest in and good faith use and registration of the Domain Name. The previous partyís registration has no bearing on that issue. See Corbis Corp. v. Zest Claim, supra ("In ordinary cases, the existence of a prior registration that has lapsed is entirely irrelevant to the questions of legitimate interests and bad faith.")
Respondentís citation of language from the Corbis Corp. v. Zest Claim case, supra, is unpersuasive. That panel suggested that when a party registers a domain name that has been abandoned by another, it may be an indication that the previous owner has abandoned any accompanying trademark rights, so it should make the new registrant more confident that it has registered the domain name in good faith than if the party was registering a new domain name that had not previously been registered by another party. The panel even goes so far to suggest that when a domain name registration has lapsed, it relieves a prospective registrant of the obligation to do a trademark search before registration. This Panel does not agree with the Corbis panelís reasoning and is not bound to follow it.
Even if this Panel were inclined to accept the reasoning of the Corbis panel as a general proposition, that case bears several important distinctions from this one that makes the reasoning inapplicable. First, in Corbis, it was the trademark owner who had let the domain name go abandoned, rather than a third party as in this case. Thus, the presumption that the trademark owner somehow abandons rights in the trademark by allowing the domain name to expire does not apply in this case when it is not the trademark owner who abandoned the domain name. Second, and more importantly, the domain name that was at issue in Corbis was a relatively weak term ("digitalstock.com") and the respondent was Korean and submitted an affidavit stating that it was unaware of the complainantís U.S. trademark rights. Thus, there was a plausible argument made that the respondent registered the name without any knowledge of the complainantís trademark rights. In this case, Respondent has not made an argument that he did not have knowledge of Complainantís trademark rights, and considering the fame of Complainantís NASDAQ mark, any such argument would be highly implausible. Finally, in Corbis, the panel found important the fact that the respondent was not using the domain name to "to compete with the Complainant, misdirect its customers, or disrupt its business." The same is not true here Ė Respondent is clearly using "nasadaq.com" to misdirect Internet users who are trying to reach Complainantís web site.
Finally, Respondent asks the Panel to find that Complainant has engaged in reverse domain name hijacking because Complainant sent an email message to Respondent stating that Respondentís failure to transfer the domain name to Complainant could result in statutory damages of up to $100,000 under the ACPA. The Panel declines to make such a finding. Complainantís email letter, although apparently designed with the intent of convincing Respondent to transfer the Domain Name to Complainant, was within Complainantís legal right to send. The letter accurately stated a possible cause of action that Complainant could have brought in federal court under the facts alleged in this Complaint. The fact that Complainant ultimately decided to bring an action under the Policy where damages are not awarded instead of a federal court action under the ACPA does not demonstrate bad faith reverse domain name hijacking.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <nasadaq.com>, be transferred to the Complainant.
Dated: January 27, 2003
1. Respondent claimed in his email of January 6, 2003, that he had filed his Response on December 29, 2002. However, Respondent sent his email to the wrong email address, and, therefore, it was not received by the Center until Respondent resent it on January 6, 2003.