WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Philadelphia Stock Exchange, Inc. v. Digi Real Estate Foundation
Case No. D2007-0776
1. The Parties
The Complainant is Philadelphia Stock Exchange, Inc. of Philadelphia, Pennsylvania, United States of America, represented by the law firm Ballard Spahr Andrews & Ingersoll, LLP.
The Respondent is Digi Real Estate Foundation of Panama City, Panama.
2. The Disputed Domain Name and Registrar
The disputed domain name is <philadelphiastockexchange.com>. It is registered with the domain name registrar Rebel.com Services Corp, of Ottawa, Ontario, Canada (the “Registrar”).
3. Procedural History
According to the information provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:
The Complaint was filed with the Center on May 25, 2007.
On May 30, 2007, the Center transmitted by email to the Registrar a request for Registrar Verification in connection with the disputed domain name. On June 4, 2007, the Registrar transmitted by email to the Center its verification response advising that the Respondent is listed as the registrant of the disputed domain name and providing registrant contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding commenced on June 5, 2007. The Center advised the Respondent that the due date for its Response was June 25, 2007.
The Respondent failed to file a Response within the prescribed time limit or at all, and the Center delivered a Notification of Respondent Default to the Respondent on July 5, 2007.
The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on July 20, 2007. The Panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.
The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Based upon the information provided by the Center, the Panel finds that all technical requirements for this proceeding have been met.
4. Factual Background
The following information is derived from the Complaint and supporting documentary and declaratory evidence submitted by the Complainant:
The Complainant is a securities exchange based in Philadelphia, Pennsylvania, United States of America. In 1790, the Complainant, then known as the Philadelphia Board of Brokers, established the first organized stock exchange in the United States of America.
In 1929, the Complainant began using PHILADELPHIA STOCK EXCHANGE as a name and mark. Since then, the Complainant has exclusively and continuously used the PHILADELPHIA STOCK EXCHANGE name and mark in connection with its securities exchange services. The Complainant has spent millions of dollars to advertise, market and promote its security exchange services under the PHILADELPHIA STOCK EXCHANGE name and mark.
The Complainant registered the PHILADELPHIA STOCK EXCHANGE trademark for use in association with security exchange services in the United States of America on April 17, 2001.
The disputed domain name was registered by the Respondent on November 9, 2006. The disputed domain name had been previously registered on September 20, 2006 by an unknown registrant (whose identity was concealed through a privacy registration) who allowed the registration to lapse after receipt of a cease and desist letter issued by the Complainant. The Complainant tried unsuccessfully to register the disputed domain name after its registration lapsed and before it was registered by the Respondent.
The Respondent has failed to respond to the Complainant’s letters demanding that the Respondent transfer ownership of the disputed domain name to the Complainant.
The disputed domain name resolves to a website that provides links and advertisements for third party websites, including websites of the Complainant’s competitors, websites of investment firms licensed to trade on the Complainant’s trading floor, and websites that offer trading tips and investment opportunities.
There is no relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark PHILADELPHIA STOCK EXCHANGE or to register or use a domain name incorporating the PHILADELPHIA STOCK EXCHANGE mark or any similar term.
The Respondent is the registrant or administrative contact for over 6,000 domain names. The Respondent has been named as a respondent in dozens of other domain name disputes pursuant to the Policy, and was found to be in violation of the Policy in the majority of those disputes. By way of example only, see F.Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2006-1397 (December 27, 2006); Lenox Financial Mortgage, LLC v. Digi Real Estate Foundation,WIPO Case No. D2006-1047 (November 28, 2006) and The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112 (November 20, 2006).
The Respondent has not filed a Response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.
On its own initiative, the Panel accessed the website using the disputed domain name. (This practice has been adopted by numerous panels: see Corinthians Licenciamentos LTDA v. Sallen, WIPO Case No. D2000-0461 (July 17, 2000); Link Clicks Inc. v. John Zuccarini, WIPO Case No. D2000-1547 (January 12, 2001); and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (January 20, 2003).) The links and advertisements on the website appear to be provided by commercial Internet advertising services called siteboxparking.com and the Marchex Network.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
(i) The Complainant is the owner of the PHILADELPHIA STOCK EXCHANGE trademark registered in the United States of America, and the disputed domain name is identical or confusingly similar to the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) The Respondent registered and is using the disputed domain name in bad faith because: (a) the Respondent registered the domain name to prevent the Complainant from reflecting its PHILADELPHIA STOCK EXCHANGE mark in a corresponding domain name and has engaged in a pattern of similar conduct; and (b) the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to its website for commercial gain.
B. Respondent
The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner.
6. Discussion and Findings
The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. The narrow scope of the Policy reflects its origin as a novel form of Internet dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.
The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant 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 burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy. It is not sufficient for a complainant to make assertions without providing proof.
(i) The Respondent’s Default
Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:
Default
(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.
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and the Panel will proceed to a decision.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision.
(ii) Identical or Confusingly Similar
The Complainant is the owner of the trademark PHILADELPHIA STOCK EXCHANGE registered in the United States of America for use in association with securities exchange services. The Complainant’s PHILADELPHIA STOCK EXCHANGE trademark is widely known, by virtue of its extensive and long-term adoption and use. The Complainant’s assertions in this regard are supported by documentary evidence. The Complainant’s PHILADELPHIA STOCK EXCHANGE trademark was used and registered in the United States of America before the Respondent registered the disputed domain name. The Respondent has not filed a reply to the Complaint or contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark PHILADELPHIA STOCK EXCHANGE.
The disputed domain name was registered by the Respondent approximately 77 years after the Complainant commenced using its PHILADELPHIA STOCK EXCHANGE trademark, and approximately five years after the Complainant registered its PHILADELPHIA STOCK EXCHANGE trademark in the United States of America.
The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark. The disputed domain name and the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark are visually and phonetically identical. The sole difference between the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark and the disputed domain name is the “.com” suffix.
The “.com” suffix is irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for such a determination, since the “.com” suffix is merely descriptive of the registry services. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787 (October 8, 2002); The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 (January 15, 2001); Ticketmaster Corp. v. Harold Brown II, and Ted Waitt, WIPO Case No. D2001-0716 (July 18, 2001); and The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746 (August 14, 2001).
For those reasons, the Panel finds that the disputed domain name is identical to the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.
(iii) Rights and Legitimate Interests
The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interest in the domain name – requires the Complainant to prove a negative proposition, which can be particularly difficult.
The consensus reflected in the decisions is that the burden on a complainant regarding this element is necessarily light, because the nature of the registrant’s rights or interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name. See Saint-Gobain Performance Plastics Corporation v. Forum LLC, WIPO Case No. D2006-0204 (April 10, 2006); Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233 (July 28, 2000); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000); Grove Broadcasing Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0158 (May 9, 2000); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); Commonwealth Hotels Inc. v. CCD Internet, Case No. AF-00771 (May 17, 2001); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001); Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252 (July 5, 2000); Electronic Commerce Media Inc. v. Taos Mountain, Case No. FA0008000095344 (October 11, 2000); Universal City Studios Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000); Springsteen v. Burgar, WIPO Case No. D2000-1532 (January 25, 2001); and Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA, WIPO Case No. D2000-1376 (March 20, 2001).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons: (a) there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent’s use of the PHILADELPHIA STOCK EXCHANGE trademark or any domain name incorporating the PHILADELPHIA STOCK EXCHANGE trademark; (b) there is no indication that the Respondent has ever been known for its use of the PHILADELPHIA STOCK EXCHANGE name; (c) the Respondent is using the disputed domain name as “bait” to the Respondent’s website, rather than as a descriptor of the Respondent’s products or services; and (d) the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark is distinctive of the Complainant and widely known, and therefore was likely known to the Respondent.
The circumstances identified by the Complainant, together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for its registration and use of the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary burden.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.
To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing links and advertisements for other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is identical to the Complainant’s distinctive, registered and widely known PHILADELPHIA STOCK EXCHANGE mark; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; and (c) the Respondent does not use the domain name to advertise or sell its own wares and services, but merely to provide links and advertisements for third party websites provided by commercial Internet advertising services. See Wachovia Corporation v. Carrington, WIPO Case No. D2002-0775 (October 2, 2002); and Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 (March 22, 2000). In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.
Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondent’s trademarks or trade names.
Policy paragraph 4(c)(iii) is not applicable. The Respondent is using the disputed domain name for a website that provides links and advertisements for commercial websites provided by commercial Internet advertising services.
For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
(iv) Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.
“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are deemed evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has 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 its website 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 its website or location or of a product or service on its website or location.
The Policy expressly states that those circumstances are non-exclusive.
The Complainant relies upon paragraphs 4(b)(ii) and 4(b)(iv).
4(b)(ii)
Policy paragraph 4(b)(ii) applies if the Complainant establishes that the Respondent has registered the disputed domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct.
The disputed domain name is identical to the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark, and prevents the Complainant from registering that mark as a domain name in the “.com” domain.
There is no direct evidence that the Respondent knew of the Complainant or its PHILADELPHIA STOCK EXCHANGE trademark, or intended to prevent the Complainant from reflecting its trademark in a corresponding domain name. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence and the existence of similar past conduct.
The Panel finds that the Respondent knew of the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark, and registered and is using the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding “.com” domain name, based upon the following circumstances: (a) the Complainant’s registered PHILADELPHIA STOCK EXCHANGE trademark is distinctive and specific to the Complainant in connection with its services, and is well known as a result of extensive and long term advertising and use; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or the website for which the Respondent uses the disputed domain name; (c) the Respondent does not use the domain name to sell its own wares and services, but merely to provide links and advertisements for third party websites provided by commercial Internet advertising services; (d) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website; and (e) the Respondent has not denied any knowledge of the Complainant or its PHILADELPHIA STOCK EXCHANGE trademark.
In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.
The Respondent has registered thousands of domain names, and has been found by other panels pursuant to the Policy to have registered dozens of domain names in bad faith. Most of those domain names were misspellings of widely known trademarks, which did not prevent the complainant trademark owners from registering their trademarks as domain names. However, at least some of those domain names – <bankofthepacific.com>, <lenoxfinancialmortgage.com>, <bluemax.com>, <nady.com>, and <alcan.org> - were identical to the complainant trademark owners’ trademarks and therefore did prevent the complainant trademark owners from registering their trademarks as a domain name. This is sufficient to establish the required pattern of similar conduct.
In the circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(ii).
4(b)(iv)
Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to its website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its PHILADELPHIA STOCK EXCHANGE trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.
The Panel finds that the Respondent knew of the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark, and registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website, based upon the following circumstances: (a) the Complainant’s registered PHILADELPHIA STOCK EXCHANGE trademark is distinctive and specific to the Complainant in connection with its services, and is well known as a result of extensive and long term advertising and use; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or the website for which the Respondent uses the disputed domain name; (c) the Respondent does not use the domain name to sell its own wares and services, but merely to provide links and advertisements for third party websites provided by commercial Internet advertising services; (d) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website; and (e) the Respondent has not denied any knowledge of the Complainant or its PHILADELPHIA STOCK EXCHANGE trademark.
The Panel also finds that the Respondent’s websites result in commercial gain to the Respondent. It is commonly known that many websites generate substantial revenue by directing traffic to other websites and search results. Based upon the information apparent from the current “www.philadelphiastockexchange.com” website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent in that manner.
In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.
Finally, the Panel finds that the Respondent’s registration of thousands of other domain names, many of which are identical to or misspellings of well known trademarks, is a pattern of similar conduct that supports a finding of deliberate, bad faith registration and use of misleading domain names for commercial gain.
In the circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iv).
For the reasons stated above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
7. Decision
The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) for the disputed domain name – the disputed domain name is identical to the Complainant’s PHILADELPHIA STOCK EXCHANGE trademark, the Respondent does not have any rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Panel therefore orders that the disputed domain name <philadelphiastockexchange.com> be transferred to the Complainant.
Bradley J. Freedman Dated: August 2, 2007
Sole Panelist