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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The NASDAQ Stock Market, Inc. v. Momm Amed Ia
Case No. D2001-1496
1. The Parties
The Complainant is The Nasdaq Stock Market, Inc., a Delaware Corporation with a place of business at One Liberty Plaza, 165 Broadway, New York, New York 10006, USA.
The Complainant is represented by Messrs Akin, Gump, Strauss, Hauer and Feld LLP of 1676 International Drive, Penthouse Suite, McLean, Virginia 22102, USA.
The Respondent is Momm Amed Ia with an address at Kwangsan-gu, Myongdo-dong, 13-1 Kurangju, 506-011, Republic of Korea.
2. The Domain Name and Registrar
The domain name in dispute is <wwwnasdaq.com>.
The Registrar of the domain name is BulkRegister.com, Inc. of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, USA.
3. Procedural History
An initial complaint was received by the WIPO Arbitration and Mediation Center on December 27, 2001. Acknowledgement of receipt of the Complaint was given to the Complainant on December 28, 2001.
On December 31, 2001, a request for verification of the domain name was made to BulkRegister.com, Inc. Confirmation was received on January 14, 2002, that the domain name <wwwnasdaq.com> was registered with BulkRegister.com, Inc. in the name of the Respondent whose administrative and technical contact was shown as Andrey Vasiliev of Free Domains Parking Glavpochtamt, d/v Vasiliev Andrey Vladimirovich, Moscow, RU101000, Russian Federation.
On January 14, 2002, notification of the complaint and the commencement of the administrative proceeding was e-mailed to the Respondent and a copy sent also by courier.
No response having been received from the Respondent, notification of the Respondent's
default was given by the Center on February 6, 2002. No further communication
having been received from the Respondent, notification of the appointment of
the administrative panel consisting of a sole panelist Mr. Clive Duncan Thorne
was given on February 19, 2002, with a projected decision date of March 5, 2002.
The Panel has since requested an extension of time for submission of the decision
to March 15, 2002. This was on the basis that the Complainant had filed three
other complaints (Nos. D2001-1494, 1495
and 1497) and that the Panel wished to consider
all four cases at the same time.
The Panelist has submitted a statement of acceptance and declaration of impartiality and independence. The Panel understands that payment of the due fees has been properly made by the Complainant.
4. Factual Background
According to the Complainant the Nasdaq Stock Market is the largest electronic screen based market in the world with the capacity to handle a share volume in excess of 5 billion shares a day. It is also the largest stock market in the world per daily share volume and the world's best recognised stock market.
Using advanced computer and telecommunication technologies Nasdaq enables securities firms to execute transactions for investors and for themselves from anywhere they are located. In addition to its sophisticated technology Nasdaq is distinguished from other exchanges by its use of multiple market makers i.e. independent dealers who openly compete with one another for investors’ orders in each Nasdaq security. Nasdaq has two tiers; the Nasdaq National Market with Nasdaq's larger companies whose securities are the most actively traded, and the Nasdaq Small Cap Market with emerging growth companies.
There are approximately 4,300 companies listed on the Nasdaq Stock Market making Nasdaq the market of choice for more companies than any other US securities market. In addition Nasdaq lists more non-US based issues than all other US securities markets combined.
Nasdaq 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 also formulates regulatory policies and listing criteria applicable to the market it operates. Nasdaq encompasses the maintenance of complex technological infrastructures for the collection, processing, and dissemination of trade and quotation information; a compliment of sophisticated order execution and negotiation systems; an online stock watch unit responsible for trading halts and extensive services provided to Nasdaq companies and Nasdaq market participants.
Nasdaq owns numerous trade marks and service marks containing or comprising NASDAQ "for various financial products and services". The mark "NASDAQ" has been in continuous use in the United States, since 1968. It is registered in the US Patent and Trade Mark Office and in approximately 40 other countries around the world. As a result of a long extensive use of the mark "NASDAQ" for financial products and services the Complainant asserts that Nasdaq has become a famous mark around the world indicating a source of products and services originating exclusively with Nasdaq.
At page 7 of the Complaint the Complainant refers to the fact that Nasdaq has registered hundreds of domain names most of which have been used by Nasdaq in connection with active websites containing content originating from or approved by Nasdaq. Annex D to the Complaint is a NSI Directory Printout showing representative domain names owned by Nasdaq.
It should be noted that as a result of the wide use of the mark NASDAQ, the mark NASDAQ has become a distinctive part of the Complainant's trade name in connection with its business. Nasdaq is commonly referred to as "Nasdaq" by members of the general public as well as by members of the financial industry and media.
Exhibited at Annexes E and F to the Complaint are of US Trade Mark Registrations for the mark NASDAQ Nos. 0922973 and 1259277.
The Complainant also submits that Nasdaq has generated substantial goodwill in the mark NASDAQ as a result of its long and continuous use of the mark. The Complainant refers for example to the Nasdaq market site in New York City including the visual display site overlooking Times Square New York an advertisement for which is exhibited at Annexes H to the Complaint. The Complainant submits that goods and services offered under the Nasdaq mark have achieved a reputation for excellence and that the mark has become synonymous with the provision of high quality and reliable stock market information and trading services.
The background to the current dispute is that on or about May 11, 2000, the Respondent registered the domain name <wwwnasdaq.com> with Bulk Register.com, Inc. At Annex I to the Complaint is a copy of a printout of an Internet Search of <wwwnasdaq.com> from which it can be seen that the user would access the <LowerMyBills.com> website apparently offering services such as debt relief, credit cards and insurance.
On September 20, 2001, the Complainant's representatives sent a cease and desist letter via first class mail to the Respondent as well as a copy via e-mail to Andrey Vasiliev indicating that the registration of the domain name <wwwnasdaq.com> violated Nasdaq's rights in the trademark "NASDAQ" under United States Law. The letter which is exhibited at Annex J requested the transfer of the domain name to Nasdaq. It appears that no response was received to that letter and a follow-up letter also exhibited at Annex J was sent by mail to the Respondent and copied by E-mail to Andrey Vasiliev. No response was received and indeed the September 20 letter was returned as undeliverable.
5. The Complainant's Contentions
In order to succeed in its request for an order to transfer the domain name to the Complainant the Complainant has the burden of proof in showing that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") are present. These are as follows:
(i) The Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and,
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) The Respondent's domain name was registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
6. Discussions and Findings
(i) The Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
On the basis of the account of the Complainant's trade mark rights set out in the Complaint and summarised above the Panel accepts that the Complainant has long standing trade mark rights in the mark "NASDAQ". The domain name in dispute <wwwnasdaq.com> differs by the addition of the descriptive acronym "www". The Complainant submits that this is descriptive of "World Wide Web" and also argues that it has a technical function so that in order to access the "World Wide Web" a user must type in the letters "www" before entering the domain name. The Panel accepts this submission. It is well known that www is used to describe World Wide Web and is required in order to access the World Wide Web. The Panel accepts that the domain name is confusingly similar to the Complainant's trade mark "NASDAQ".
(ii) The Respondent has no rights or legitimate interests in respect of the domain name
In support of this contention the Complainant submits that the Respondent has no trade mark rights in <wwwnasdaq.com> and that its only use of the domain name is to direct visitors to the <LowerMyBills.com> website. The Complainant also points out that people may mis-type the domain name address in an attempt to reach the Nasdaq website and may therefore incorrectly believe that Nasdaq is affiliated or somehow connected with the <LowerMyBills.com> website or that the website is sponsored by Nasdaq.
In the absence of a Response or any submissions by the Respondent, there is no evidence of any legitimate interest by the Respondent in <wwwnasdaq.com>. In these circumstances the Panel is prepared to accept the Complainant's submissions and find that the Respondent has no legitimate interest in the domain name <wwwnasdaq.com>.
(iii) The Respondent's domain names have been registered and are being used in bad faith
In support of its submission the Complainant submits inter alia that the Respondent is not using the domain name in a non commercial "fair use" manner and that the Respondent's use and registration of <wwwnasdaq.com> is "an obvious attempt to trade on the value of Nasdaq's mark by taking advantage of a typographical error by the internet user when entering the URL.
The Complainant also submits that those who access <wwwnasdaq.com> in an attempt to reach the Nasdaq website may incorrectly believe that there is an affiliation or connection with the <LowerMyBills.com> website and this is evidence that the only conceivable purpose of the Respondent's use of the <www.nasdaq.com> domain name is to divert traffic intended for the Complainant.
The Panel, in the absence of submissions by the Respondent, finds force in both these submissions. There is no obvious reason why the Respondent should have registered <wwwnasdaq.com> other than in an attempt to trade on the value of Nasdaq's mark. There is also, in the Panel's view, a substantial risk of users incorrectly assuming a connection or association between the Complainant's website and the <LowerMyBills.com> website. The Panel agrees that this is evidence of bad faith and finds that the domain name <wwwnasdaq.com> has been registered and is being used in bad faith.
It follows that the Complainant has succeeded in its complaint.
The Complainant requests that the domain name <wwwnasdaq.com> be transferred from the Respondent to the Complainant. The Panel finds for the Complainant and orders that the domain name <wwwnasdaq.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: March 15, 2002