WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NYSE Group, Inc. v. Anna Andreevana Mikhaylova

Case No. D2013-1480

1. The Parties

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

The Respondent is Anna Andreevana Mikhaylova of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <nysealert.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2013. On August 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2013, 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.

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 August 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2013.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 26, 2013. 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 is the successor-in-interest to the New York Stock Exchange, Inc., which was founded and organized in New York city in 1792. The Complainant is primarily engaged in the operation of a national and international market for the trading of securities. In addition, the Complainant provides many ancillary and educational services to traders, investors and the public in general. The Complainant is a leading provider of securities listing, trading and information products and services, with a well established reputation of integrity, permanence, liquidity, breadth and the quality of its regulation.

The Complainant owns numerous trademarks including NYSE and NYSE ALERTS in the United States, the Russian Federation, the European Union, Argentina, Australia, Brazil, Ecuador, Indonesia, Israel, India, China, Honk Kong, China and Mexico.

The disputed domain name was registered on April 7, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant states that the NYSE trademark is well known by virtue of its long, extensive and exclusive use by the Complainant. Since 1863, the Complainant (and its predecessors) has continuously used the trademark NYSE in relation to its operation of a securities exchange and related stock market services. The Complainant has spent a significant amount of time, effort and money ensuring that consumers associate NYSE exclusively with the Complainant. The Complainant owns numerous United States trademark registrations which consist of or incorporate NYSE, and also owns registered NYSE trademarks in many other countries.

The disputed domain name is confusingly similar to the NYSE trademark. The disputed domain name uses the Complainant’s famous NYSE trademark and is identical to the Complainant NYSE ALERTS trademark, except for the omission of the letter “s” in the disputed domain name. Indeed the disputed domain name is a singular form of the Complainant NYSE ALERTS mark. The omission of the letter “s” does not create a domain name that is distinct from the Complainant’s NYSE ALERTS trademark.

The Respondent has had no use of, nor any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services before any notice to the Respondent of the dispute.

The Respondent Anna Andreevana Mikhaylova has never been commonly known by the disputed domain name.

The Respondent is not a licensee of the Complainant and has never received permission or consent to use the Complainant’s NYSE and NYSE ALERTS trademarks in any fashion or to register the disputed domain name.

The Respondent registered and has been using the disputed domain name in bad faith to play off the fame of the Complainant’s NYSE mark and profit from the consumer confusion that the Respondent is creating with the disputed domain name. The Respondent has linked the disputed domain name to a commercial website that makes unauthorized use of the NYSE trademarks.

The Respondent’s bad faith is demonstrated by (i) the fact that the Respondent registered the disputed domain name on April 7, 2009, many decades after the Complainant adopted and made its NYSE trademarks famous, after NYSE was registered as trademark in the United States and the Russian Federation and after the Complainant established rights in the trademark NYSE ALERTS.

The Respondent’s bad faith use of the disputed domain name is shown by its use for a website offering financial information regarding stocks listed on the Complainant’s stock exchange (the New York Stock Exchange) and wherein the Respondent is collecting email information and registering the number of visitors to the website presumably for commercial gain. The Respondent’s use of the disputed domain name in this matter violates paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use of the disputed domain name.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in NYSE and NYSE ALERTS.

The Panel is also prepared to find that the disputed domain name <nysealert.com> is confusingly similar to the Complainant’s trademarks. The fact that the disputed domain name has omitted the letter “s” does not change this conclusion. The disputed domain name is using in its entirety one of the Complainant’s trademark NYSE and is also confusingly similar to the trademark NYSE ALERTS.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for the Respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

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

(ii) Where the Respondent as an individual, business, or other organization, has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

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

The Complainant is required to make out at least a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that while the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests, the Respondent has failed to show that it has acquired any trademark rights or legitimate interests in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

Consequently the Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. 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 name in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name 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 and NYSE ALERTS trademarks in mind when registering the disputed domain name. The record supports a conclusion that the Respondent registered the disputed domain name seeking to exploit and profit from the Complainant’s rights in the NYSE and NYSE ALERTS trademarks.

The Respondent’s bad faith registration and use of the disputed domain name is shown by its use for a website offering financial information of stocks listed on the Complainant’s stock exchange (the New York Stock Exchange) and collecting email information. In addition the disputed domain name contains links to the Complainant webpage “www.nyse.com”. It is the view of the Panel that this is demonstrating knowledge of the Complainant’s trademark rights (see “www.nysealert.com/listed/A/” with a link to “www.nyse.com”).

It is the view of the Panel that these are circumstances indicating that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s use of the disputed domain name in this matter violates paragraph 4(b)(iv) of the Policy and constitutes bad faith registration and use of the disputed domain name.

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 name <nysealert.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: October 1, 2013