WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Nasdaq Stock Market, Inc. v. Global America

Case No. D2002-0002

The Complainant in this administrative proceeding is The Nasdaq Stock Market, Inc. ("Nasdaq"), a Delaware corporation having a place of business in New York, New York United States of America. The Respondent is Global America ("Global"), an entity of unknown corporate status having a post office box c/o Penny Stocks, located in Allentown, Pennsylvania, United States of America.

The domain name involved in this proceeding is as follows:

<nasdaq.nu>

The Registrar with whom the domain name is registered is ".NU" Domain, Ltd. (".NU Domain") of Medfield, Massachusetts United States of America.

On March 21, 2002, Nasdaq’s Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). See Rules, paragraph 3(b). The Center received a hard copy of Nasdaq’s Complaint on March 25, 2002.

It appears that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that payment was properly made, and that Nasdaq has complied with the formal filing requirements. On March 28, 2002, ".NU" Domain verified that it is the Registrar for the contested domain name, that its service agreement with Global is in effect, and that the contested domain name is in active status.

After reviewing the case file, the Panel deems that Global was properly notified in accordance with the Rules, paragraph 2(a). However, it appears that a formal Response has not been filed. However, Global did write to the Center directly, and the Panel has reproduced the contents of Global’s reply below.

On April 26, 2002, a Notice of Respondent Default was sent by the Center to the parties by e-mail. Global’s informal Reply, sent directly to the Center, is reproduced under the section of this decision reserved for the statement of Global’s position.

In its Complaint, Nasdaq elected to have this proceeding decided by a Single Member Panel. On April 30, 2002, the Center contacted the undersigned to solicit interest in being the Sole Panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on May 1, 2002, of the ability and availability to serve as the Sole Panelist for this matter. On May 2, 2002, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the Administrative Panel for this proceeding was properly constituted.

Also on May 2, 2002, the Center forwarded to the undersigned the case file for this proceeding. On that same date, a Notice of Appointment of Administrative Panel and Projected Decision Date was sent by the Center to the Parties. The Center notified the parties that the undersigned would be the Sole Panelist to decide this matter.

Global has not come forward to contest any of the following facts asserted by Nasdaq:

Nasdaq asserts it is the largest electronic, screen-based market in the world, with the capacity to handle share volume in excess of five billion shares a day. It also claims to be the largest stock market in the world per daily share volume and the world’s best-recognized stock market.

Using advanced computer and telecommunication technologies, Nasdaq says it enables securities firms to execute transactions for investors and for its dealers from anywhere they are located in an environment of real-time trade reporting and automated market surveillance. In addition to its sophisticated technology, Nasdaq claims it is distinguished from exchanges by its use of multiple market makers—independent dealers who openly compete with one another for investors’ orders in each Nasdaq security.

Nasdaq asserts that there are approximately 4,100 companies listed on its exchange. Nasdaq contends that it also develops, operates, and maintains systems, services, and products for a number of securities markets that it operates for the ultimate benefit and protection of investors. Nasdaq says that it maintains complex technological infrastructures for the collection, processing, and dissemination of trade and quotation information; sophisticated order execution and negotiation systems; an on-line StockWatch unit responsible for trading halts; and extensive services provided to Nasdaq companies and Nasdaq market participants.

Nasdaq, in its own right and through a predecessor in interest, states that it has used the trademark and name NASDAQ in connection with a variety of financial products and services, including in the operation of The Nasdaq Stock Market, continuously since 1968. Moreover, Nasdaq says it has used NASDAQ as the distinctive part of its trade name in connection with its business continuously in commerce since 1992. Nasdaq commonly refers to itself as "Nasdaq" and asserts 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.

Nasdaq claims to own numerous trademarks and service marks containing or comprising the term "NASDAQ" for various financial products and services. Nasdaq asserts that the NASDAQ mark is registered in the U.S. Patent and Trademark Office and in approximately 40 other countries around the world. As a result of the long and extensive use of the NASDAQ mark for financial products and services, Complainant asserts that the NASDAQ mark has become a famous mark around the world and indicates the source of products and services originating exclusively with Nasdaq. The Panel need not and does not decide for the purposes of this proceeding whether the NASDAQ mark is famous.

Nasdaq attached to its Complaint two U.S. Trademark Registrations issued on the Principal Register for the NASDAQ mark. The NASDAQ mark is registered in connection with a variety of financial reporting and securities trading products and services.

Complainant asserts that the NASDAQ mark is inherently distinctive as applied to Complainant’s products and services. It is further asserted that NASDAQ is a coined term, which has no meaning other than as a trademark of Nasdaq.

By virtue of the continuous and substantially exclusive and extensive use in commerce of the NASDAQ mark by Nasdaq and its predecessor in interest, and the commercial success of the products and services provided under such mark, Nasdaq claims that this mark has come to have significance in the mind of the relevant public as an indicator of services originating with, sponsored by, or otherwise associated with Nasdaq, and no other person or entity. Nasdaq asserts that it has generated substantial goodwill in the NASDAQ mark and name based upon its long and continuous use of the NASDAQ name, trademarks, and domain names in the marketplace.

Nasdaq asserts that it has registered hundreds of domain names comprising the term "NASDAQ." Most of these domain names are used and have been used by Nasdaq in connection with active websites containing content originating from or approved by Nasdaq. A list of representative domain names owned by Nasdaq and containing the term "NASDAQ" was attached to the Complaint. Millions of people throughout the world visit Nasdaq’s web sites every day, says Complainant. Nasdaq indeed claims that its main website, located at the domain name <nasdaq.com> is one of the world’s most popular financial websites, with approximately 50 million "hits" every day.

Nasdaq asserts that its investment in the NASDAQ trademark and domain names is substantial. Nasdaq claims to have spent hundreds of millions of dollars promoting the NASDAQ mark and name and in developing and maintaining its websites. Nasdaq asserts that it has extensively and prominently used the NASDAQ trademark, as well as domain names incorporating the mark, in disseminating, marketing, and advertising its services, and spend hundreds of millions of dollars in advertising and marketing its services under the NASDAQ trademark. Representative printouts from Nasdaq’s websites were attached to the Complaint.

According to information provided by Nasdaq and verified by the ".NU" Domain registrar, Global registered the domain name <nasdaq.nu> on August 1, 2000. According to evidence Nasdaq submitted with its Complaint, independently verified by the Panel by accessing the website under this domain name, if Internet users type in <nasdaq.nu> in the command line of their web browsers, they are directed to the "penny.net" website which provides information on a list of "penny" stocks with instructions on how to purchase the list.

Respondent associates its penny stock list and its "penny.net" website with the <nasdaq.nu> domain name. However, the penny stock list and the "penny.net" website do not contain information about Nasdaq, The Nasdaq Stock Market or Nasdaq-listed securities. Rather, the "penny.net" website states that the list includes penny stocks that are available on the New York Stock Exchange.

On January 31, 2002, counsel for Nasdaq sent a cease and desist letter via U.S. Postal Service Express Mail and electronic mail to Global indicating that its registration of the <nasdaq.nu> domain name violated Nasdaq’s rights in its NASDAQ trademark. The cease and desist letter demanded that the domain name registration be promptly transferred to Nasdaq. Nasdaq did not received a response to its letter, a copy of which was attached to the Complaint. Respondent has refused to surrender the <nasdaq.nu> domain name to Nasdaq or cancel this domain name registration.

Nasdaq asserts that (i) the contested domain name is identical or confusingly similar to trademarks and/or service marks in which it has rights; (ii) Global has no rights or legitimate interests in respect of the domain name; and that (iii) the domain name was registered and is being used by Global in bad faith.

Global has not formally made its position known in this administrative proceeding. However, as stated above, after receiving a notification of its default in this proceeding, Global responded to the Center by e-mail on April 26, 2002, with the following message:

"[Expletive] !!!!

You steal our domain name [Center Administrator] – that’s very BAD and we do not like anyone being BAD to us and our attorneys are prepared to deal with BAD people[.]

Listen, we have people TODAY using our alter domain names for their own businesses, with NOTHING we can do.. Free Speech. The Nasdaq stock market is huge – can not be wholly owned claimed, NOR does anyone have any right to harass people like us for being an ‘early bird’.

Please stop this harassment or threats to steal our domain. The POLITE thing to do would be to make an offer to purchase it if your client wants it that bad … NOT steal it.

Thank you[.]"

Paragraph 15(a) of the ICANN Rules instructs this Panel to "decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

In an Administrative Proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present. ICANN Policy, Paragraph 4(a).

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) the registrant has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location. ICANN Policy, Paragraph 4(b).

On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:

(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. ICANN Policy, Paragraph 4(c).

Global had the opportunity to respond and present evidence that it had rights or legitimate interests in respect of the contested domain names. It chose not to do so. Nasdaq is not entitled to relief simply by reason of the default, however, but the Panel can and does draw evidentiary inferences from the failure to respond. See, Miles D., Ltd. d/b/a Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).

For example, Paragraph 14 of the Rules provides that:

"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

Nasdaq asserts that Global’s <nasdaq.nu> domain name incorporates Nasdaq’s NASDAQ mark in its entirety. Nasdaq asserts, and the Panel agrees, that the domain name is identical and/or confusingly similar to the NASDAQ mark in which Nasdaq clearly has shown it has rights. See Maruti Udyog Ltd. v. Maruti Software Private Ltd., Case No. D2000-1038 (WIPO November 16, 2000). Therefore, paragraph 4(a)(i) of the Policy has been satisfied.

Global has not come forward to produce any evidence that it has rights or legitimate interests in respect of the contested domain names. Further, the evidence submitted shows that Global uses the domain name to redirect traffic to its "penny.net" website. Due to the nature of the information and services provided on the "penny.net" website, visitors who may access it via redirection from entering <nasdaq.nu> in the command lines of their web browsers may incorrectly believe that Nasdaq is affiliated or somehow connected with the "penny.net" website, or that the site is sponsored or approved by Nasdaq. See, The Nasdaq Stock Market, Inc. v. Prasad, Case No. D2001-1493 (WIPO February 27, 2001). This is not a legitimate right or interest in a contested domain name. Therefore, paragraph 4(a)(ii) of the Policy has been satisfied.

Nasdaq claims that Global has registered and used the <nasdaq.nu> domain name in bad faith for the following reasons:(i) Global had constructive notice under 15 U.S.C. §1072 that the NASDAQ mark was and is a registered trademark; (ii) by registering the <nasdaq.nu> domain name, Global has precluded Nasdaq from using its mark in the corresponding domain name; (iii) Nasdaq has not agreed to, consented to, or licensed Global’s use or registration of a domain name containing the NASDAQ mark; (iv) Global is not using the contested domain name in a non-commercial "fair use" manner, but rather to mislead users into visiting a website that has nothing to do with Nasdaq; (v) people who may access <nasdaq.nu> on the Internet may incorrectly believe that Nasdaq is affiliated or somehow connected with the "nasdaq.nu" / "penny.net" website, or that the site(s) are sponsored or approved by Nasdaq. The Panel finds that Nasdaq has satisfied its burden of proof with respect to bad faith examples (i), (iii), (iv) and (v).

The intent of the Policy is to preclude registration and use of a domain name that contains the trademark of another in an attempt to mislead Internet users into believing there is an association with the true trademark owner. The Nasdaq Stock Market, Inc. v. Green Angel, Case No. D2001-1010 (WIPO September 30, 2001), (finding bad faith where Respondent’s use of the domain names at issue in connection with websites that sold financial books and newsletters is likely to confuse users as to the source, sponsorship, affiliation or endorsement of Respondent’s websites); Identigene, Inc. v. Genetest Lab., Case No. D2000-1100 (WIPO November 30, 2000), (finding bad faith where Respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); eBay, Inc. v. Progressive Life Awareness Network, Case No. D2000-0068 (WIPO March 16, 2001), (finding bad faith where Respondent took advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s website).

In its e-mail to the Center, Global concedes its awareness of the "huge" Nasdaq stock market, and brazenly asks Nasdaq to "make an offer to purchase" the contested domain name if it "wants it that bad." The Panel finds Global’s e-mail to be additional evidence of Global’s bad faith.

The Panel also finds that Global’s failure to respond to Nasdaq’s correspondence relating to the contested domain name is further evidence of Global’s bad faith. See, eBay Inc. v. Sunho Hong, Case No. D2000-1633 (WIPO January 18, 2000); Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, Case No. D2000-0330 (WIPO June 7, 2000). Therefore, paragraph 4(a)(iii) of the Policy has been satisfied.

The Panel finds that the contested <nasdaq.nu> domain name is identical and/or confusingly similar to the NASDAQ name and mark in which Nasdaq has rights. Respondent has not shown that it has rights or legitimate interests in the domain name. The domain name was registered and has been used by Global in bad faith.

Pursuant to paragraph 4(i) of the Policy and 15 of the Rules, the Panel directs the TRANSFER of the <nasdaq.nu> domain name to Complainant, The Nasdaq Stock Market, Inc.