WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The NASDAQ Stock Market, Inc. v. Sun People, Inc.
Case No. D2001-1495
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 Sun People, Inc., also known as Seo Jeong-gon, with an address at 1475-3 Yongchun-ri Changsung-gun, Chunam, 515-800, Republic of Korea.
2. The Domain Name and Registrar
The domain name in dispute is <nasdaq-europe.com>.
The Registrar of the domain name is Namescout Corp. of White Park House, White Park Road, Bridgetown, Barbados.
3. Procedural History
An initial complaint was received 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 Namescout Corp. Confirmation was received on January 9, 2002, that the domain name < nasdaq-europe.com > was registered with Namescout Corp. in the name of the Respondent whose administrative and technical contact was shown as Seo Jeong-gon with an address at 1475-3 Yongchun-ri, Changsung-gun, Chunnam, 515-800, Republic of Korea.
On January 11, 2002, notification of the Complaint and the commencement of the administrative proceeding was e-mailed to the Respondent, and a copy sent also by post.
No response having been received from the Respondent, a notification of the Respondent's default was given by the Center by e-mail on February 6, 2002. No further communication having been received from the Respondent, a 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, 1496 and 1497) 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.
Nasdaq is the owner of US application Serial No's 76/277,823 for the mark "NASDAQ.EUROPE" and 76/277,840 for "NASDAQ EUROPE COMPOSITE INDEX" as well as CTM application no 002384162 for "NASDAQ EUROPE" and 002385730 for "NASDAQ EUROPE COMPOSITE INDEX"
At page 6 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 is 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 copies of US Trade Mark Registrations for the mark "Nasdaq" Nos. 0922973 and 1259277 respectively.
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 Annex 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 according to the Complainant is that on or about November 4, 2001, the Respondent registered the domain name <nasdaq-europe.com> with Name Scout Corp. at Annex A to the Complaint. The Complainant exhibits a print out of information relating to the Respondent's registration from the Namescout.com database, which confirms the details of registration in the name of the Respondent on April 11, 2001.
At Annex A (sic) (in fact Annex I) to the Complaint the Complainant exhibits a print out of what would be found if users typed in <nasdaq-europe.com> as a domain name. The print out shows that the name apparently could not be found.
In the absence of a Response and any submissions from the Respondent and having considered the Complainant's submissions and the Annexes to the Complaint the Panel is prepared to accept the facts as asserted by the Complainant.
5. The Complainant's Contentions
In order to succeed in the relief sought the Complainant has to show in accordance with Paragraph 4(a) of the Policy that the following elements are proven:
(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 has been registered and is being used in bad faith.
The Panel proceeds to consider each of these elements in turn.
6. Discussions 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 is satisfied that the Complainant has established trade mark rights in the mark "NASDAQ". It has also applied for a US trade mark "NASDAQ-EUROPE" and a European Community Trade Mark for "NASDAQ-EUROPE". It is also the Panel's view that the Complainant has registered domain names incorporating the word "Europe" coupled with the mark "NASDAQ" e.g. <nasdaq-europe.org>, <nasdaq-europe.net> and <nasdaqeurope.com>.
Pending registration of the marks in the United States and European Community "NASDAQ-EUROPE" the Panel recognises that, as is submitted by the Complainant, the primary difference between the mark "NASDAQ" and the Respondent's domain name <nasdaq-europe.com> is the use of the geographical descriptive wording "Europe".
The Panel finds that the Complainant has rights in the trade mark "NASDAQ" and that the domain name <nasdaq-europe.com> is confusingly similar to the trade mark "NASDAQ".
(ii) The Respondent has no rights or legitimate interests in respect of "NASDAQ-EUROPE.COM"
The Complainant submits that the Respondent has no such legitimate interest and refers to the fact that the Respondent has no trade mark rights in "NASDAQ-EUROPE". It also submits that the Respondent "parked the domain names so that the infringing domain name does not resolve to any content". There is of course no submission from the Respondent as to its intentions. Taking into account the widespread rights that the Complainant has acquired in the mark "NASDAQ" and variations to that mark and in the absence of a Response the Panel finds that the Respondent has no rights or legitimate interest in <nasdaq-europe.com>.
(iii) The Respondent's domain names have been registered and are being used in bad faith
The Complainant relies on a number of grounds to support a finding of bad faith including in particular that the Respondent's failure to use the domain names weigh in favour of a finding of bad faith and that the failure to use the domain names is tantamount to speculative registration of a domain name that is the trade mark of another party without a demonstrable plan for bona fide use of the domain name. Moreover, it submits that inactivity by a Registrant can amount to bad faith use.
There is, in the absence of a Response, no evidence as to why the Respondent registered the domain name <nasdaq-europe.com>. Taking into account particularly that the domain name appears not to be currently used by the Respondent the Panel considers that it is entitled, given the overwhelming nature of the Complainant's rights in the mark "NASDAQ" to find that the domain name was registered at a time when the Respondent would have notice of the extensive trade mark rights of the Complainant and that the registration and failure to use the domain name was not in good faith.
The Complainant cites a significant number of earlier ICANN decisions to support the submission that inactivity by a Registrant can amount to bad faith for use of a domain name. This Panel considers that the principle is now well-founded, at least in cases where there is no evidence of good faith on the part of the Respondent. Taking into account all the circumstances and in particular the failure to use the domain name, the Panel finds that the domain name has been registered and used in bad faith.
It follows that the Complainant has succeeded in its Complaint.
The Complainant requests that the domain name <nasdaq-europe.com> be transferred from the Respondent to the Complainant. The Panel finds for the Complainant and orders that the domain name <nasdaq-europe.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: March 15, 2002