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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NYSE Group, Inc. v. Gateway Venture Group

Case No. D2012-0175

1. The Parties

The Complainant is NYSE Group, Inc. of New York, New York, United States of America (“United States), represented by Arent Fox LLP, United States.

The Respondent is Gateway Venture Group of Tucson, Arizona, United States.

2. The Domain Names and Registrar

The disputed domain names <nysejobs.biz>, <nysejobs.com>, <nysejobs.info>, and <nysejobs.net> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2012. On February 2, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On February 2, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2012.

The Center appointed William R. Towns as the sole panelist in this matter on March 1, 2012. 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

The Complainant, successor to the New York Stock Exchange, Inc., operates stock exchanges, and provides other financial products and services. In connection therewith, the Complainant owns numerous registrations for NYSE and NYSE-formative marks in the United States, the European Union, and in other countries around the world. The NYSE mark has been used in commerce by the Complainant and its predecessor in the United States since as early as 1863.

The disputed domain name <nysejobs.net> was registered by the Respondent in February 2006, <nysejobs.biz> and <nysejobs.info> were registered in October 2009, and <nysejobs.com> in February 2009. The disputed domain names currently resolve to parked pages provided by the Registrar, GoDaddy.com, LLC. The record reflects that the Respondent’s administrative contact, Dan Burkhart, filed an intent-to-use application with the United States Patent and Trademark Office (“USPTO”) on November 20, 2010 to registrar NYSEJOBS.COM for employment agency and executive search and placement services, which application was subsequently abandoned on September 12, 2011, after the USPTO issued an Office Action refusing registration based on likelihood of confusion with the Complainant’s NYSE mark.

Prior to commencing this administrative proceeding under the Policy, the Complainant sent cease and desist letters to the Respondent, dated December 28, 2010, and January 10, 2011, respectively. In a subsequent communication dated March 11, 2011, Dan Burkhart offered to sell the disputed domain names to the Complainant for USD 74,250.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the NYSE mark, in which the Complainant asserts rights arising from registration and use long before the disputed domain names were registered by the Respondent. The Complainant maintains by virtue of the continuous and extensive use of the NYSE mark in interstate and international commerce that the mark is not only highly distinctive as to the Complainant’s goods and services but famous as well.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names. The Complaint contends that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain names with in connection with a bona fide offering of goods or services. The Complainant notes that the USPTO issued an Office Action refusing to register the trademark application for NYSEJOBS.COM filed by the Respondent based on the likelihood of confusion with the Complainant’s registered NYSE mark. In addition, the Complainant maintains that the disputed domain names are being offered for sale online, and that the Respondent attempted to sell the disputed domain names to the Complainant directly for USD 74,250. The Complaint further asserts that the Respondent has not been authorized to use the Complainant’s mark, is not commonly known by the disputed domain names, and has made no legitimate noncommercial or fair use of the disputed domain names.

According to the Complainant, the Respondent registered and is using disputed domain names in bad faith. The Complainant urges that the disputed domain names have but a single connotation – jobs associated with the New York Stock Exchange – and that the Respondent was well aware of the Complainant’s mark when registering the disputed domain names. The Complainant contends that the disputed domain names are being offered for sale to the public on the parked pages to which they resolve, and that the Respondent offered to sell them directly to the Complainant at an exorbitant price. The Complainant also claims the Respondent previously used the disputed domain names to divert Internet users to a commercial website maintained by the Respondent at “www.gatewayventuregroup.com”. For all of the foregoing reasons, the Complainant concludes that the disputed domain name have been registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain names are confusingly similar to the NYSE mark, in which the Complainant clearly has established rights. Regarding the question of identity or confusing similarity, the first element of the Policy functions essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and the disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.

In this case, the disputed domain names incorporate the Complainant’s NYSE mark in its entirety, and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark under the above-described standard. The confusing similarity resulting from the use of the Complainant’s mark is not diminished by the addition of the common word “jobs”. The Complainant’s mark is well known, and Internet users seeking employment opportunities with the Complainant would be likely to seek out websites associated with the disputed domain names. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names incorporate the Complainant’s well known and distinctive mark in its entirety and are confusingly similar. It is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s NYSE mark. The Respondent notwithstanding has registered multiple domain names incorporating the NYSE mark, which currently resolve to parked pages on which these domain names are advertised for sale.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel notes that under certain circumstances an offer to sell a domain name may be considered an “offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy. Nevertheless, for an offering of goods or services to be bona fide under paragraph 4(c)(i), the use of the disputed domain name must be in good faith. See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)).

Based on the undisputed facts and circumstances in the record before it, the Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. The Panel concludes from the record that the Respondent had the Complainant’s NYSE mark in mind when registering the disputed domain names, and that the Respondent most likely registered domain names in order exploit and profit from the Complainant’s trademark rights through the creation of initial interest confusion.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds from the relevant circumstances as reflected in the record that the Respondent more likely than not was aware of the Complainant and had the Complainant’s NYSE mark in mind when registering the disputed domain names. The record supports a conclusion that the Respondent registered the disputed domain names seeking to exploit and profit from the Complainant’s rights in the NYSE mark. As noted above, when a domain name is so obviously connected with a complainant and its mark or products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. Research In Motion Limited v. Dustin Picov, supra.

Whether the Respondent in apparently allowing the disputed domain names to resolve to registrar parking pages would be regarded as passively holding the disputed domain names would not preclude a finding of bad faith registration and use in the circumstances of this case. Under certain circumstances bad faith may be inferred from a respondent’s passive holding of a domain name. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel concluded that passive holding of a domain name may support a finding of bad faith use where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that “would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.

The considerations that supported a finding of bad faith in Telstra are present in this case as well. As in Telstra, the Complainant’s NYSE mark had a strong reputation, is well known, and not susceptible to use in a generic sense. As in Telstra, there is no evidence of any actual or contemplated good faith use of the disputed domain names by the Respondent as such. To the contrary, and in the absence of any credible explanation by the Respondent, there is evidence in the record that could sustain a finding of bad faith under paragraph 4(b)(i) 2 and 4(b)(iv) of the Policy.

The Policy is designed to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. This Panel is persuaded by the totality of the circumstances in this case that the Respondent’s primary motive for the registration of the disputed domain names was cybersquatting. For the reasons set forth above, the Panel finds that the disputed domain names have been registered and are being used in bad faith by the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <nysejobs.biz>, <nysejobs.com>, <nysejobs.info>, and <nysejobs.net> be transferred to the Complainant.

William R. Towns
Sole Panelist
Dated: March 12, 2012

1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.

2 In addition to directly offering to sell the disputed domain names to the Complainant, the Respondent’s offer to sell the domain names to the public on the parked pages to which they resolve can be deemed an offer to sell to the Complainant or its competitors. Gateway, Inc. v. Bellgr, Inc., WIPO Case No. D2000-0129.

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