WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. Nasdaq Kid.com
Case No. D2002-0942
1. The Parties
The Complainant is The Nasdaq Stock Market, Inc., New York, NY 10036, United States of America, of United States of America, represented by Akin, Gump, Strauss, Hauer & Feld of United States of America.
The Respondent is Nasdaq Kid.com, La Jolla, CA 92038, United States of America, of United States of America.
2. The Domain Names and Registrar
The disputed domain names <nasdaqkid.com> and <nasdaqkid.net> are registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2002. On October 14, 2002, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On October 15, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 21, 2002. The Center verified that the Complaint together with the amendment to 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 October 24, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on November 15, 2002.
The Center appointed Frederick M. Abbott as the sole Panelist in this matter on December 6, 2002. 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 has registered the term "NASDAQ" as a trademark and service mark on the Principal Register of the United States Patent and Trademark Office (USPTO) (Reg. No. 922, 973, dated October 26, 1971, service mark in international class (IC) 35, covering "listing of securities for quotation for sale or information purposes), and Reg. No. 1, 259,277, dated November 29, 1983, trademark and service mark in IC 9, covering closed circuit information apparatus, as further specified; IC 16, covering periodicals and indexes, as further specified; IC 35, covering data gathering and tabulation, as further specified; IC 36, covering electronic securities information retrieval services, as further specified, and; IC 38, covering communications networks for securities information, as further specified. The aforesaid registrations are valid and subsisting. (Complaint, para. 11 and Annexes D & E.)
Complainant has also registered the "NASDAQ" mark in a substantial number of countries outside the United States (id., para. 11).
"NASDAQ" is a term originated by Complainant (id.).
Complainant has registered the domain name <nasdaq.com> and maintains an active commercial website at Internet address (URL) "www.nasdaq.com". This website is heavily visited by Internet users. Complainant has registered a substantial number of additional "NASDAQ"-formative domain names and maintains active commercial websites at URLs incorporating those names. (Id., para. 11, and Annexes F & G.)
The "NASDAQ" mark is well known in the field of securities marketing, transacting and reporting.
According to the Registrarís (Network Solutionsí) verification response to the Center, dated October 15, 2002, "NASDAQ KID.COM" is the listed registrant of the disputed domain names <nasdaqkid.com> and <nasdaqkid.net>. According to a VeriSign WHOIS database report submitted by Complainant, the record of registration for the disputed domain name <nasdaqkid.com> was created on April 28, 2002, and was last updated on October 4, 2002. According to a VeriSign WHOIS database report submitted by Complainant, the record of registration for the disputed domain name <nasdaqkid.net> was created on April 29, 2002, and was last updated on October 4, 2002. (Complaint, Annex A).
As of October 4, 2002, Respondent used the disputed domain name <nasdaqkid.com> to post a webpage at URL "www.nasdaqkid.com". This webpage was headed most prominently with the term "nasdaqkid.com", and in somewhat smaller typeface stated "We will be coming out with new stuff real soon, stay tuned for whatís next". At the top center of the webpage is a heading "CHECK IT OUT!" followed by the following text:
"We are working on the new catalog. although [sic] you canít order anything yet we at nasdaqkid.com are working hard to get our new catalog together with highclassbitches.com, putting together the hottest girls and finest clothing."
The foregoing text is followed by an illustrated link to a pornographic website.
The disputed domain name <nasdaqkid.net> as of October 24, 2002, was used in connection with a Network Solutions standard form "under construction" webpage.
Complainant has sent cease and desist and transfer demands to Respondent, and has received only (in one instance) an automated e-mail response.
The Service Agreement in effect between Respondent and Network Solutions, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Partiesí Contentions
Complainant asserts that it holds rights in the trademark and service mark "NASDAQ" based on use in commerce in the United States and elsewhere, and as evidenced, inter alia, by registration at the USPTO (see Factual Background supra).
Complainant argues that its mark is inherently distinctive. It states that is has engaged in extensive advertising of the mark, and that the mark is famous.
Complainant argues that the disputed domain names are confusingly similar to its mark.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant indicates that Respondentís use of the disputed domain name <nasdaqkid.com> to divert Internet userís to its website is not a bona fide offering of goods or services.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith, as evidenced by deliberate registration and use of Complainantís well known mark to confuse consumers regarding Complainantís association with or sponsorship of its website at "www.nasdaqkid.com", which inter alia, establishes a link to a pornographic website for commercial gain. Complainant asserts that Respondentís failure to use the domain name <nasdaqkid.net> amounts to speculation with its mark without a demonstrable plan for a bona fide use, and that inactivity can constitute evidence of bad faith.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy and Rules establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the holder of trademark and service mark registrations for the term "NASDAQ" on the Principal Register of the USPTO. It has registered the mark with trademark authorities in a substantial number of other countries. The term "NASDAQ" is inherently distinctive. Complainant has submitted evidence sufficient to establish that the "NASDAQ" mark is well known in the United States in the field of securities marketing, transacting and reporting. The Panel determines that Complainant has rights in the trademark "NASDAQ". Those rights arose before Respondentís registration of the disputed domain names.
The disputed domain names <nasdaqkid.com> and <nasdaqkid.net> add the common descriptive term "kid" after Complainantís mark. The term "kid" does not distinguish the mark so as to alleviate potential Internet user confusion regarding association of the domain names with Complainant and its products and services. In view of the distinctive and well-known character of Complainantís mark, an Internet user viewing the mark in connection with a common descriptive term in the disputed domain names would likely identify the domain names with Complainant, and would similarly assume that Complainant sponsored or was affiliated with associated websites. The addition of the gTLDs .com and .net in the circumstances of this proceeding do nothing to alleviate confusing similarity.
The Panel determines that the disputed domain names are confusingly similar to Complainantís mark. Complainant has established the first element necessary for a finding of abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue." (Policy, paragraph 4(c)).
Respondent did not respond to the Complaint to suggest that it has rights or legitimate interests in the disputed domain names. In view of the distinctive and well known character of Complainantís mark, Respondent was undoubtedly aware of the mark and that Complainant would object to Respondentís use of it. Respondentís use of <nasdaqkid.com> to promote a commercial pornographic website was not a bona fide offering of services. Respondent did not make a bona fide offering of services prior to notice of a dispute with Complainant.
Respondentís mere registration of <nasdaqkid.net> does not suffice to establish rights or legitimate interests in that name under paragraph 4(c) of the Policy.
Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain names, and has established the second element necessary for a finding of abusive domain name registration and use.
C. Registered and Used in Bad Faith
Respondentís use of <nasdaqkid.com> to direct Internet users to a webpage that establishes a prominent (illustrated) link to a commercial pornographic website evidences bad faith registration and use of the disputed domain name for commercial gain by creating confusion among Internet users as to Complainantís sponsorship of or affiliation with Respondentís website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent has not yet used <nasdaqkid.net> in connection with an active commercial website. However, Complainantís mark is distinctive and well known, and Respondent has not provided any plausible good faith explanation for its registration of the second domain name. Respondent has already used <nasdaqkid.com> in connection with establishing a link to a pornographic website, and it is reasonable for the Panel to infer that Respondentís essentially contemporaneous registration of a virtually identical domain name was undertaken with similar intent. It is effectively using <nasdaqkid.net> as a backup or reserve for <nasdaqkid.com>. Bearing in mind that the list of bad faith elements in paragraph 4(b)(iv) of the Policy is non-exhaustive, these circumstances provide a sufficient factual basis for the Panel to conclude that Respondent registered and used <nasdaqkid.net> in bad faith.
Complainant has satisfied the third element necessary for a finding of abusive domain name registration and use by Respondent.
The Panel will therefore direct the registrar to transfer the disputed domain names to Complainant.
Based on its finding that the Respondent, Nasdaq Kid.com, has engaged in abusive registration and use of the domain names <nasdaqkid.com> and <nasdaqkid.net> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <nasdaqkid.com> and <nasdaqkid.net> be transferred to the Complainant, The Nasdaq Stock Market, Inc.
Frederick M. Abbott
Dated: December 19, 2002