Complainant is NYSE Group, Inc. of New York, New York, United States of America (“USA”), represented by Arent Fox LLP, USA.
Respondent is Jhon Patric of Sarasota, Florida, USA.
The disputed domain name <nysemedia.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2013. On November 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2013. In accordance with the paragraph 5(a) of the Rules, the due date for Response was December 15, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2013.
Following the default notification, Respondent sent an email to the Center on December 18, 2013, as follows:
“Dear sir,
“With due respect i beg to state that we are extremely sorry for late reply. Two and half months ago, we bought this domain (nysemedia.com) for general use from Godaddy.com Domain Action worth $1950.
“After getting your notice, we are trying hard to contact with main host of this domain. Till now we haven't got any reply. So we need more time to complete the action.
“Hope you will grant us the time we need.
“Thanks”
The Center acknowledged Respondent’s communication, noting that any late-filed response would be forwarded to the Panel. No further communication from Respondent was received.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on December 27, 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 paragraph 7 of the Rules.
Complainant owns numerous worldwide registrations that include its famous NYSE mark, including for example NYSE, U.S. Trademark Registration No. 340,813 filed October 15, 1969 in International Class 36 with a first use in commerce date of January 29, 1863.
The disputed domain name was registered on December 26, 2012. The registration for the disputed domain name was transferred to Respondent on September 30, 2013. The disputed domain name routes to a website carrying a variety of news items, including stories relating to stocks listed on the New York Stock Exchange.1 The website also displays sponsored advertising and links to major U.S. network media events.
Under the Policy, Complainant alleges that the disputed domain name is confusingly similar to its trademarks, that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. In particular, Complainant contends that the use of false address details and various instances of allegedly fraudulent activity related to Respondent’s website establishes Respondent’s (1) lack of rights or legitimate interests and (2) bad faith.
The Complaint avers that counsel sent a cease and desist letter by courier and email to the then-listed registrant on September 16, 2013, to which no response was ever received. On the basis of specific allegations and evidentiary support, Complainant contends that the WhoIs address and contact details were false. The Complaint further alleges that the registrant to whom the disputed domain name was transferred on September 30, 2013 is the same entity as the prior registrant. In support of the latter point, the Complaint notes that the content on the website to which the disputed domain name routes did not change substantially following the September 30 transfer.
Complainant seeks transfer.
Respondent did not reply to Complainant’s contentions.
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not submit a Response to the Complaint. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
UDRP panels generally disregard the generic Top-Level Domain (“gTLD”) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Without the gTLD suffix “.com”, the disputed domain name consists of the combination of Complainant’s famous NYSE trademark with the added word “media.” The Panel concludes that the addition of that descriptive term does not negate the confusing similarity created by Respondent’s complete inclusion of the NYSE trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772;Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
The Panel therefore determines that the first element of Policy paragraph 4(a) is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once a prima facie showing is made, the burden to come forward with evidence establishing rights or legitimate interests shifts to the respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Complainant contends that Respondent is taking advantage of consumer confusion by using Complainant’s trademark to attract Internet users to visit Respondent’s website, which displays business and commercial information.
It is alleged that Respondent does not have rights or legitimate interests because Complainant has not authorized Respondent to use Complainant’s trademarks and Respondent is not commonly known by the disputed domain name. In the absence of any contrary allegations by Respondent, the Panel accepts as true these undisputed factual averments. Though not addressed in the Complaint, based on the record, the Panel further finds that Respondent does not own trademark rights related to the disputed domain name.
As noted previously, the record shows that the website to which the disputed domain name routes displays commercial links to third parties. The Panel infers that Respondent receives revenue when users click through the links displayed on the page to which the disputed domain name routes. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“the Panel is free to infer that Respondent is likely receiving some pecuniary benefit […] in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. Therefore, the Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Panel also agrees that Respondent is not making a bona fide use of the disputed domain name.
Complainant has, therefore, established a prima facie case.2 Refraining from submitting a Response, Respondent has brought to the Panel’s attention no circumstances supporting the proposition that Respondent has rights or legitimate interests in the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
The Panel also concludes that the Complaint fulfills the third element of paragraph 4(a) of the Policy, bad faith registration and use, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
It is clear to the Panel that Respondent knew of Complainant’s famous mark; the NYSE mark is fully included in the disputed domain name, which adds only the descriptive term “media.” Respondent’s website provides no explanation of the significance of the “NYSE” portion of the name, nor does it present “NYSE” as an abbreviation.
Registration of a domain name based on a well-known or famous mark is commonly acknowledged to support a finding of bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (“Bad faith may be found where a domain name is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Nintendo of America v. Marco Beijin, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070 (“the word ‘POKÉMON’ is obviously a well-known mark,” such that use “by someone with no connection or legal relationship with the Complainant suggests opportunistic bad faith”); Rediff.com India Ltd. v. Daniyal Waseem, WIPO Case No. D2010-0346 (“By incorporating wholly Complainant's REDIFF trademark long after the mark had attained fame, it is suggestive of bad faith on the part of the Respondent”).
The website to which Internet users are routed shows that the disputed domain name is used, among other things, to promote commercial offerings. The Panel infers that the disputed domain name was registered and is being used to draw traffic on the basis of Complainant’s famous mark. The Panel therefore finds that Respondent deliberately mimicked the mark in the disputed domain name <nysemedia.com> to create confusion and attract Internet users for commercial gain. This fulfills the requirements of Policy paragraphs 4(b)(iv) and 4(a)(iii).
The Panel further finds that Respondent’s decision to refrain from submitting any response to the Complaint following the contact made with the Center described above is cumulative evidence of bad faith.
In the Panel’s view, ample evidence exists to support granting the requested transfer under the Policy, without the necessity of considering whether the former and current registrants are related, or are, in fact, the same entity.
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 <nysemedia.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: January 9, 2014
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5. The appearance of the website online is consistent with its appearance in annexes to the Complaint.
2 As noted, the Complaint also describes a variety of fraudulent misrepresentations and practices connected with Respondent’s website. Since the Panel rules on other grounds that the Complaint fulfills the requirements of the second element of Policy paragraph 4(a), the Panel declines to make any findings on the basis of these factual averments.