WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nasdaq, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Henrik Larssen
Case No. D2018-0653
1. The Parties
The Complainant is Nasdaq, Inc. of New York, New York, United States of America (“United States”), represented by Akin, Gump, Strauss, Hauer & Feld, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Henrik Larssen of Stockholm, Sweden.
2. The Domain Name and Registrar
The Disputed Domain Name <nasdaqomxnordic.org> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2018. On March 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2018, 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 April 5, 2018, 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 April 5, 2018.
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 April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on May 3, 2018. 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, Nasdaq Inc. (previously NASDAQ Stock Market Inc.) is a provider of trading, clearing, exchange technology, listing, information and public company services with the largest networks of exchanges in the world, spanning 29 international markets, 1 clearinghouse, and 4 central security depositories. It is the creator of the world’s first electronic stock market, and its technology is used in more than 90 marketplaces in 50 countries, and 1 in 10 of the world’s securities transactions. The Nasdaq Stock Market is one of the world’s largest electronic stock exchanges and has approximately 3,900 total listings with a market value of approximately USD 13 trillion.
The OMX Nordic Exchange in 2007 was Europe’s third largest marketplace for trading and clearing equity-related derivatives.
In 2007, the NASDAQ Stock Market, Inc. (the Complainant’s predecessor name) and OMX AB (the owner of the OMX Nordic Exchange) jointly announced that they had entered into an agreement to combine the two companies. This combined company was named “The NASDAQ OMX Group, Inc.” until a recent rebranding.
The Complainant (under its predecessor name) has registered numerous trademarks and service marks comprising “NASDAQ OMX”, in various jurisdictions around the world, including:
- NASDAQ OMX registered in the European Union on March 25, 2008;
- NASDAQ OMX registered internationally under the Madrid Protocol on March 25, 2008; and
- NASDAQ OMX GREEN ENERGY INDEX registered in the United States on November 8, 2011.
The Complainant also has other current trademark registrations of NASDAQ OMX in Armenia, Australia, China, Egypt, Hong Kong, China, Iceland, Japan, Norway, Singapore, Switzerland, the United Arab Emirates, and Viet Nam.
The Complainant has, under its predecessor name, registered numerous domain names that include the name “NASDAQ OMX” and “NASDAQ”, such as:
- <nasdaqomxnordic.com> registered August 4, 2008
- <nasdaq.com> registered December 15, 1993
- <nasdaqeurope.com> registered June 17, 1999, and
- <nasdaq.org> registered January 5, 2000.
The Disputed Domain Name <nasdaqomxnordic.org> was registered on December 14, 2017.
On December 15, 2017, an email incorporating the disputed name was sent from the email address […]@nasdaqomxnordic.org to a representative of a third party organization, seeking to change the Complainant’s bank account information. The email address contained the name of a senior employee of the Complainant; however, the real employee of that name did not send this email. After learning of this, the Complainant sent the Respondent a cease and desist letter, along with follow up emails to the Registrar. The Complainant has never received any response to these emails or any other communication from the Respondent.
On March 10, 2018, the Complainant was made aware of another attempt by the Respondent seeking to change the Complainant’s banking information.
The webpage to which the Disputed Domain Name resolves (as viewed by the Panel on May 25, 2018) has a prominent list of ten links to other websites, six of which were marked (respectively): “Stock Stock Market”, “Exchange Stock”, “Index Nasdaq Stock”, “Market Data Nasdaq” and “Nasdaq Stock Market The”.
5. Parties’ Contentions
The Complainant asserts that:
- it has used “NASDAQ” as the distinctive part of its trade name in connection with its business continuously in commerce since at least as early as 1968;
- it is the preferred market exchange listing destination for major brands;
- using advanced computer and telecommunication technologies, its services enable securities firms to execute transactions from anywhere they are located in real-time trade reporting and automated market surveillance;
- it is distinguished from other exchanges by its use of multiple market makers (independent dealers who openly compete with one another for investors’ orders); and
- through its portfolio of solutions, it enables customers to plan, optimize and execute their business using technologies that provide transparency and insight for navigating global capital markets.
The Complainant also says that it provides via various websites (including “www.nasdaq.com”) up-to-date information regarding trading, finance, investment, and stock market data, among others, and that millions of Internet users regularly rely on it for such information.
The Complainant contends that the relevant public in the United States and around the world has come to associate Nasdaq with not only the financial services, but also with various other business-related services, that are provided by the Complainant to its customers. The Complainant contends that it is commonly referred to as “Nasdaq” by members of the general public as well as by members of the financial industry and the media, and that NASDAQ is inherently distinctive as applied to the NASDAQ products and services, concluding that since Nasdaq has coined the word, NASDAQ has no meaning other than as a trademark of the Complainant, so that there is no way the Respondent could have innocently registered the Disputed Domain Name.
The Complainant asserts that, following the merger of NASDAQ Stock Market Inc. with OMX AB, it has used the name “The NASDAQ OMX Group, Inc.” until a recent rebranding to its current name, however (it is asserted) the mark and name “NASDAQ OMX” continues to be synonymous with Nasdaq in the general public as well as in the finance industry.
The Complainant argues that by virtue of the continuous and substantially exclusive and extensive use in commerce of the “NASDAQ” and “NASDAQ OMX” marks and names by the Complainant and its predecessor-in-interest, and the commercial success of the products and services provided under such marks, such marks and names have come to have significance in the mind of the relevant public as an indicator of services originating with, sponsored by, or otherwise associated with the Complainant, and no other person or entity, worldwide. The Complainant adds that, in a number cases in which Nasdaq has prevailed, it has aggressively protected its “NASDAQ” mark against cybersquatters like the Respondent.
The Complainant submits that it has spent and continues to spend large sums of money promoting the NASDAQ Marks and extensively and prominently uses the NASDAQ Marks in connection with advertisements and its domain names and websites in the dissemination, marketing, and advertising of its services. The Complainant contends that as a result of its extensive and prominent use of the NASDAQ Marks, the marks have become famous around the world so that when consumers across the world hear the word NASDAQ or any of the other domain names or marks comprising NASDAQ, including NASDAQ OMX, they think of the Complainant and its related companies and no other source.
The Complainant contends that the Disputed Domain Name is confusing similar to the Complainant’s famous NASDAQ Marks because it incorporates the Complainant’s famous NASDAQ Marks in their entirety, namely that the Disputed Domain Name incorporate the trademarks NASDAQ and NASDAQ OMX and the Complainant’s domain names <nasdaq.com> and <nasdaqomxnordic.com>. The Complainant submits that the confusing similarity of the Complainant’s marks and domain names is not in reasonable dispute since the Disputed Domain Name incorporates in its entirety the trademark NASDAQ which the Complainant contends is a distinctive mark.
The Complainant also contends that the Respondent has no legitimate interest in the Disputed Domain Name because the Respondent is not connected in any way to the Complainant and has no rights whatsoever in NASDAQ or NASDAQ OMX, and the Respondent’s only use of the Disputed Domain Name is to commit financial fraud by seeking to change Nasdaq’s banking information so that funds can be diverted to fraudulent accounts. The Complainant argues that the fact the Respondent was aware of Nasdaq’s mark and name is not subject to any dispute, and it is absolutely clear that the Respondent was intentionally trying to associate itself with Nasdaq to commit its fraud. The Complainant emphasizes that it has neither agreed nor consented to the Respondent’s use or registration of the Disputed Domain Name, adding that the Respondent possesses no legitimate interest in the Disputed Domain Name and has no connection to the famous NASDAQ mark and name.
The Complainant asserts that the Respondent is using the Disputed Domain Name in bad faith because, despite having absolutely no rights in NASDAQ, the Respondent has registered a domain name which incorporates Nasdaq’s famous NASDAQ mark and name. The Complainant submits that such use, involving intentionally trading on the fame of another, cannot constitute a bona fide offering of goods or services, and accordingly the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith. The Complainant argues that to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which (according to the Complainant) is obviously contrary to the intent of the Policy.
The Complainant asserts that the use of the Disputed Domain Name to send false emails in the name of a senior employee of the Complainant seeking to change the Complainant’s bank account information was a fraudulent scheme of the Respondent to trick a third party organization to change the Complainant’s bank information in order for the Respondent to commit financial fraud. The Complainant adds that such conduct clearly shows that the Respondent registered the Disputed Domain Name to create email addresses to impersonate Nasdaq officers to commit financial fraud, noting also that the Disputed Domain name even resolves to Nasdaq’s legitimate site at “www.nasdaqomxnordic.com”. The Complainant also notes that the Respondent’s email of record does not work, indicating that despite numerous follow up emails, until the date of the Complaint, the Complainant had not received any communication from the Respondent. The Complainant concludes that the foregoing clearly establishes bad faith intent and that the Respondent has registered and is using the Disputed Domain Name to commit financial fraud and that there can be no other reason for the adoption of the Disputed Domain Name.
The Complainant concludes that, as of the date of the Complaint, to the Complainant’s knowledge, the Respondent’s scams have not been successful, however the Complainant is of the opinion that the Respondent will continue to engage in such illegal activities, and by continuing to engage in such bad faith, fraudulent activities, it is clear the Respondent has absolutely no legitimate interest in the Disputed Domain Name and is using it in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled 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 trademark or service 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.
The Rules at paragraph 15(a) require that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In the absence of any substantive rebuttal by the Respondent to the Complainant’s assertions, the Panel therefore proceeds on the basis of the Complaint submitted by the Complainant as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.
A. Identical or Confusingly Similar
The Disputed Domain Name <nasdaqomxnordic.org> includes in substantive part the Complainant’s trademark NASDAQ OMX. The only difference is the omission of the space between “NASDAQ” and “OMX” and the addition of the word “nordic” which is an English word used to describe something that relates to the Scandinavian countries of northern Europe. In the Panel’s view the omission of the space between “NASDAQ” and “OMX” is of no consequence in assessing the similarity between the Complainant’s trademark NASDAQ OMX and the Disputed Domain Name. The use of the word “nordic” also does not prevent a finding of confusing similarity under the first element.
In the absence of any submission from the Respondent, the Panel finds therefore, that the Disputed Domain Name is confusingly similar to the trademark NASDAQ OMX owned by the Complainant.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name. The evidence provided by the Complainant indicates that:
the Complainant has not agreed or otherwise authorized the Respondent to use any of the NASDAQ or NASDAQ OMX trademarks that form part of the Disputed Domain Name.
the Respondent has no relationship with the Complainant;
the Respondent’s name does not incorporate and has no similarity with any part of the Disputed Domain Name;
a) the Complainant has not permitted the Respondent to register or to use any domain name incorporating the NASDAQ or NASDAQ OMX trademarks.
Since at least March 2008 the mark NASDAQ OMX has been registered by the Complainant in the European Union where the Respondent has its address. The Disputed Domain Name was not registered until nearly ten years later on December 14, 2017.
The webpage to which the Disputed Domain Name resolves has prominent links at the words “Stock Market”, “Exchange Stock”, “Index Nasdaq Stock”, “Market Data Nasdaq” and “Nasdaq Stock Market”. These are descriptions of financial products and services supplied by the Complainant under its NASDAQ or NASDAQ OMX trademarks. The use of these links prominently on the website to which the Disputed Domain Name resolves, suggests that the Respondent knew of the Complainant’s business that uses the Complainant’s trademarks. In these circumstances it is difficult to see how the Respondent could not have, and indeed should have, been aware of the Complainant’s trademark rights and that he may be attempting to trade off the goodwill attached to the Complainant’s trademarks without having any rights or legitimate interests in the trademarks incorporated into the Disputed Domain Name.
The evidence provided by the Complainant suggests there is likely to be limited circumstances in which the Respondent might have any rights or legitimate interests in the Disputed Domain Name. In the absence of any submission from the Respondent on this element of the Policy, paragraph 4(a)(ii), a prima facie case has been established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has failed to provide any rebuttal of this prima facie case. In the Panel’s view it is more likely than not that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Disputed Domain Name, which includes the Complainant’s trademark NASDAQ OMX and the word “nordic”, indicates the Respondent knew of the Complainant and its trademark when registering the Disputed Domain Name. The use of the same fanciful words as are used in the Complainant’s trademark with the addition of “nordic” would, when viewed by an Internet user as part of the Disputed Domain Name, most likely result in the Internet user assuming that the Disputed Domain Name had some sort of connection between the Scandinavian countries and the Complainant’s trademark NASDAQ OMX. However, the Disputed Domain Name has no association or connection with the Complainant’s trademark, suggesting the Respondent registered and used the Disputed Domain Name in bad faith.
The evidence provided by the Complainant indicates that the Respondent is using the Disputed Domain Name to send emails impersonating a senior employee of the Complainant in an attempt to fraudulently change the Complainant’s bank account information to a false account. This amounts to an attempt at financial fraud and, absent any explanation from the Respondent, is clearly bad faith use of the Disputed Domain Name. Given that the first attempt at such financial fraud occurred the day after registration of the Disputed Domain Name by the Respondent, it is likely that the registration was made and planned with that purpose in mind. The Panel notes that there was more than one attempt to use the Disputed Domain Name to engage in financial fraud by seeking to change the Complainant’s banking information. The Respondent provides no explanation for such use of, or rebuttal of allegations of attempted fraud using, the Disputed Domain Name. In those circumstances, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
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, <nasdaqomxnordic.org>, be transferred to the Complainant.
Date: May 28, 2018