WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nasdaq, Inc. v. WHOIS Privacy Protection Service, Inc. / Nasdaq English, Carlos Iremar Melo Meira
Case No. D2016-2345
1. The Parties
The Complainant is Nasdaq, Inc. of New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
The Respondent is WHOIS Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Nasdaq English, Carlos Iremar Melo Meira of Belo Horizonte, Brazil.
2. The Domain Name and Registrar
The disputed domain name <nasdaqenglish.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2016. On November 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 21, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2016.
The Center appointed Charles Gielen as the sole panelist in this matter on January 10, 2017. 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 owns registrations for the trademark NASDAQ in many countries around the world, such as the Brazilian trademark registration No. 819312533, filed on June 4, 1996 for services in Class 36 and issued on December 29, 1998.
The disputed domain name <nasdaqenglish.com> was created on December 4, 2015 and resolved to a web site for an English language school located in Brazil operating under the name “Nasdaq English”.
5. Parties’ Contentions
The Complainant argues that it is a world-leading provider of trading, clearing, exchange technology, listing, information and public company services through the largest networks of exchanges in the world, spanning 26 markets, 1 clearinghouse, and 5 central security depositories. As the creator of the world’s first electronic stock market, its technology powers more than 70 marketplaces in 50 countries, and one in ten of the world’s securities transactions. The Complainant is home to more than 3,600 listed companies with a market value of approximately USD 9.6 trillion and more than 10,000 corporate clients and it is the preferred listing destination for major brands. The exchange operated by the Complainant is home to four of the top five Fortune “World’s Most Admired Brands” and five of the top seven Fortune “Fastest Growing Tech Companies”.
In addition to its core exchange services, the Complainant provides a wide range of informational and technical support and solutions for its customers and the financial and business sector generally.
According to the Complainant, the relevant public in the United States and around the world, including in Brazil, has come to associate the trademark NASDAQ with not only the financial services, but also with various other business-related services that are provided to its customers.
The Complainant has used the word “Nasdaq” as the distinctive part of its trade name in connection with its business continuously in commerce since 1992. The Complainant commonly refers to itself as “Nasdaq” and is commonly referred to as “Nasdaq” by members of the general public as well as by members of the financial industry and the media, including those located in Brazil. The trademark NASDAQ is inherently distinctive and it has no meaning other than as a trademark of the Complainant.
Furthermore, the Complainant argues that the trademark NASDAQ and its business are well known in Brazil and have been well known in Brazil long before the registration date of the disputed domain name. As a result of the extensive and prominent use, NASDAQ has become a famous mark. According to the Complainant, when consumers across the world hear the word “Nasdaq” or any of the other domain names or marks comprising this word, they think of the Complainant and its related companies and no other source.
Accordingly, the goods and services offered under the trademark NASDAQ mark have achieved such a reputation for excellence that the mark has become synonymous with the provision of high-quality and reliable financial information and securities trading services.
The Complainant contends that the disputed domain name resolved to a web site for a purported English language school located in Brazil and operating under the name “Nasdaq English”. Based on a Facebook and LinkedIn page, the Complainant concludes that the Respondent is targeting business people by claiming to offer executive-level language courses. The Complainant as well as its United States and Brazilian counsels sent cease and desist letters and emails to the Respondent that did not result in a solution of the dispute. The Complainant, however, learned that the Respondent changed the mark on its web site from NASDAQ ENGLISH to NASDAK ENGLISH and furthermore, on the basis of an onsite investigation, that the name “Nasdaq” is still being used in a style and font similar to an older version of the Complainant’s logo. The Complainant further contends that the Respondent’s purported school had no brochures or written information, that there were no students at the time of the visit and that a person acting for Respondent onsite was not able or willing to provide a schedule of classes or their fees.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. Furthermore the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name which was registered long after the Complainant established substantial rights in the trademark NASDAQ and also because NASDAQ is a coined term with no other meaning except to refer to the Complainant and its businesses. In view of the international fame of the trademark NASDAQ the Respondent must have been aware of the prior existence of this trademark. Finally the Complainant argues that the Respondent registered and is using the disputed domain in bad faith. The Respondent’s only use is to intentionally mislead viewers and attract confused users to its purported school. The Complainant contends that the Respondent was aware of the trademark NASDAQ and the registration and use thereof in the disputed domain name intentionally trades on the fame of the Complainant’s trademark and therefore cannot constitute a bona fide offering of goods or services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark NASDAQ based on numerous trademark registrations. The term “nasdaq” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the word “english” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark NASDAQ. The reason is twofold. First of all, the word “english” is purely descriptive and secondly the term “nasdaq” in the disputed domain name is the first word and the dominant element. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” is generally understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark NASDAQ. The Panel is convinced that the term “nasdaq” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses. In view of the international fame of the trademark NASDAQ, the Respondent must have been aware of the prior existence of this trademark. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. The trademark NASDAQ enjoys international fame and consists of a coined term. The intention of the Respondent is to mislead consumers in believing that the disputed domain name and the business that the Respondent apparently wants to exploit are in one way or the other connected to the Complainant and its business. This intention also follows from the fact that the Respondent is using a logo which is similar to an older logo of the Complainant. Furthermore the Complainant made it clear that the Respondent is not offering any services in a bona fide way. The website to which the disputed domain name resolved seemed to offer language courses. However there is no information whatsoever containing any serious offering of such courses. The Panel is therefore of the opinion that by registering and using the disputed domain name the Respondent intentionally attempted to attract Internet users by causing confusion with the Complainant’s trademark and its business and to ride on the coattails of the fame of this trademark.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.
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 <nasdaqenglish.com> be transferred to the Complainant.
Date: January 12, 2017