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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. Jon Steinsson
Case No. D2002-0571
1. The Parties
Complainant is The Nasdaq Stock Market, Inc., One Liberty Plaza, 165 Broadway, New York, New York 10006, United States of America ("Nasdaq" or "Complainant").
Respondent is Jon Steinsson, Vizjon, 5007 Hesperia, Encino, California 91316, United States of America ("Steinsson" or "Respondent").
2. Domain Name and Registrar
The domain name in issue is <nasdaqtrader.biz> (the "Domain Name").
The registrar is Go Daddy Software, Inc., 14455 North Hayden Road, Suite 226, Scottsdale, Arizona 85260, United States of America ("Go Daddy").
3. Procedural History
The World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center ("the Center") received Nasdaq’s complaint via e-mail on June 19, 2002, and in hard copy on June 21, 2002. The Center acknowledged receipt of the complaint via e-mail on June 20, 2002. The Center forwarded a copy of the complaint to Respondent, notifying it that there was a complaint filed against it but that it had no duty to act at that time. The transmittal further stated that after the Center verified that the complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), and the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Center would send Respondent an official copy of the complaint after which Respondent would have 20 days to respond. The letter further directed Respondent to the Web sites containing the Rules, Supplemental Rules, and Policy.
The Center sent e-mail to Go Daddy on June 20, 2002, requesting verification of the registration of the Domain Name. On June 20, 2002, the Center received confirmation from Go Daddy via e-mail that:
1) Complainant had sent it a copy of the complaint;
2) the Domain Name was registered with Go Daddy;
3) Respondent was the current registrant;
4) the Policy applies to the Domain Name; and
5) the Domain Name was locked to prevent changes from occurring to registration information during the administrative proceeding. Go Daddy also confirmed the contact names, postal addresses, e-mail addresses, and phone and facsimile numbers for the organization, administrative, and technical contacts for the Domain Name.
After verifying that the complaint complied with the formal requirements of the Rules, Supplemental Rules, and Policy on June 26, 2002, the Center notified the registrant and technical contact of the Domain Name by mail and e-mail on June 26, 2002, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted a complaint as described above. The notification also stated that the complaint satisfied the formal requirements of the Policy, Rules, and Supplemental Rules and that Complainant had made the appropriate payment. Accordingly, the administrative proceeding commenced on June 26, 2002. The notification invited Respondent to reply by July 16, 2002, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default: a Panel would still decide the case and, in accordance with Paragraph 14 of the Rules, the Panel could draw any appropriate inferences from the default. The notification also informed Respondent that Complainant elected a single panelist who would be appointed within five days after the Response was due. If Respondent preferred a three member panel, Respondent could so designate, with the required Payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, the Center notified Respondent of the identity and contact information of the Case Manager. The Center sent a copy of the notification via e-mail to Complainant.
Having received no response to the notification by the July 16, 2002, deadline, the Center notified Complainant and Respondent via e-mail on July 17, 2002, of Respondent’s default. The notice stated that the Center would appoint a single panelist to comprise the Panel, the Panel would be informed of Respondent’s default, and it would be up to the Panel’s discretion whether to consider any late-filed Response. Finally, the notice stated that the Center would continue to send case-related materials to Respondent as it deemed appropriate.
On July 24, 2002, the Center advised Complainant and Respondent by e-mail of the identity of the undersigned sole panelist, Michael A. Albert. In addition, the Center notified Complainant and Respondent that the panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.
On July 25, 2002, Respondent sent an e-mail to the Center and to the Panel clarifying Respondent’s position on the facts and current posture of the dispute. Because Respondent is in default, the Panel is not obligated to consider this material. See Paragraph 5(e) of the Rules. However, the Panel will accept and consider the material in Respondent’s e-mail to comport with the goals of Paragraph 10(b) of the Rules (stating that "the Panel shall ensure… that each Party is given a fair opportunity to present its case"). The Center sent a copy via e-mail of the Acknowledgement of Receipt of Supplemental Filing to the parties and to the Panel on July 30, 2002.
Pursuant to Paragraph 11(a) of the Rules, the language of this proceeding is English, which is the language of the Domain Name’s Registration Agreement.
4. Factual Background; Parties’ Contentions
a. The Trademark
Nasdaq’s complaint alleges that its NASDAQ mark is a distinctive trademark federally registered in the United States and in 40 other countries. Nasdaq began using the NASDAQ mark in 1968 as a trade mark in connection with financial products and services. Since 1968, Nasdaq has used the trademark NASDAQ and variants thereof to identify its products, and its services. Nasdaq has used the NASDAQ mark as the distinctive part of its trade name since 1992. Nasdaq owns United States Registrations 922,973 and 1,259,277 for its NASDAQ marks (copies of which were appended to the Complaint). Nasdaq applied to register the mark "NASDAQ TRADER" in the U.S. on May 18, 2001, for use in computer services providing information for securities trading and securities markets (Serial No. 76/258,878). Nasdaq has invested substantial resources to promote its marks worldwide.
Nasdaq conducts business on the Internet at various domains which contain NASDAQ or NASDAQ TRADER as part of the domain name, including <nasdaq.com>, <nasdaqtrader.com>, <nasdaqnews.biz>, and <nasdaq-amex-trader.net>.
b. Jurisdictional Basis
Go Daddy verified that the Policy applies to the Domain Name. Therefore, the Policy governs this proceeding and in accordance with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
c. The Complaint
Nasdaq asserts as follows:
? The registered NASDAQ mark has worldwide recognition.
? Nasdaq has created substantial marketplace goodwill by spending hundreds of millions of dollars to promote its products, services, and trademark and by using the "NASDAQ" trade name, trademarks, and domain names for a long and continuous period in commerce.
▪ Two of Nasdaq’s "NASDAQ" marks have attained incontestable status in the United States under 15 U.S.C. §1065.
▪ Nasdaq has registered the "NASDAQ" mark in approximately 40 countries. Many of these registrations have achieved incontestable status.
▪ Nasdaq has applied to register the trademark "NASDAQ TRADER" in the United States. The application date for this registration precedes the date when Respondent registered the <nasdaqtrader.biz> domain name. Nasdaq has used the "NASDAQ TRADER" mark continuously in commerce since October 1997.
? Nasdaq conducts business on the Internet at various domains which contain NASDAQ or NASDAQ TRADER as part of the domain name.
▪ Nasdaq has registered hundreds of domain names containing its marks. Most of these domain names are used by Nasdaq for Web sites that contain content originating with or approved by Nasdaq. (A list of representative domain names owned by Nasdaq was appended to the Complaint.)
▪ Nasdaq’s <nasdaqtrader.com> web site is the premier site for trading information about the Nasdaq exchange.
▪ Nasdaq’s continuous and substantially exclusive and extensive use in commerce of the NASDAQ mark, and the commercial success of the products and services provided under the mark, have led the relevant public to view the mark as an indicator of services associated with Nasdaq.
▪ On or about April 3, 2002, Respondent registered the domain name <nasdaqtrader.biz> with Go Daddy. This registration took place without Nasdaq’s knowledge or approval.
▪ Respondent’s registration of the Domain Name conflicts with representations made when applying for the Domain Name. The registration contradicts Respondent’s assurance through the registration process that the name was not being registered for any unlawful purpose and did not interfere with any known rights of a third party.
▪ On April 16, 2002, Nasdaq’s counsel sent a "cease and desist" letter via e-mail and Federal Express to Respondent. The letter stated that Respondent’s registration of the <nasdaqtrader.biz> domain name violated Nasdaq’s rights in its "NASDAQ" mark under United States trademark law. The letter demanded that Respondent promptly transfer the Domain Name to Nasdaq. (A copy of the e-mail correspondence between Nasdaq’s counsel and Respondent was appended to the Complaint.)
▪ Respondent replied to the e-mail from Nasdaq’s counsel on April 16, 2002, stating that he "had no intention of using the domain name" and that his "original plan was to sell the domain."
▪ On April 17, 2002, Nasdaq’s counsel responded to Steinsson’s e-mail, stating that Nasdaq would reimburse Respondent for the registration fees for the <nasdaqtrader.biz> domain name.
▪ Respondent replied to Nasdaq’s e-mail of April 17, 2002, on the same day. Steinsson stated he would think about the offer but found it "comical" because he had an offer to purchase the Domain Name for U.S. $1,600.
▪ Nasdaq’s counsel replied to Respondent’s e-mail of April 17, 2002, on the same day, stating that Respondent’s intention to sell the Domain Name contravened U.S. law. Counsel recommended that Respondent transfer the Domain Name to Nasdaq.
▪ Nasdaq did not receive a reply to its last e-mail of April 17, 2002. Counsel for Nasdaq sent Respondent an e-mail on May 23, 2002, asking whether Steinsson intended to transfer the Domain Name to Nasdaq or to sell it to a third party. Nasdaq did not receive a response to this query.
▪ If users seek to access the <nasdaqtrader.biz> web site, they learn that the site is not available. (A copy of the page to which the Domain Name resolves was appended to the Complaint.)
▪ Respondent has refused to surrender the Domain Name to Nasdaq or to cancel the Domain Name’s registration.
▪ The Domain Name is confusingly similar to Nasdaq’s "NASDAQ" and "NASDAQ TRADER" marks.
▪ Respondent has no legitimate interest in or business purpose for the Domain Name. Respondent has no trademark rights in the Domain Name, and admits that its sole interest in the Domain Name is to sell it for a profit.
▪ Users who access the Domain Name may incorrectly believe that Nasdaq’s site is not functioning or unavailable.
▪ Respondent has registered and uses the Domain Name in bad faith. Respondent had constructive notice under 15 U.S.C. §1072 that the "NASDAQ" mark was a registered trademark. Nasdaq has not agreed to, consented to, or licensed Respondent’s registration or use of a domain name containing its mark.
▪ Respondent is not using the Domain Name for any bona fide business purpose, nor in a manner that involves non-commercial fair use.
▪ Respondent has offered to sell the Domain Name to third parties for a price that exceeds the costs of registering the Domain Name. These offers meet the use requirement of the Policy. (See Paragraph 4(b) of the Policy, requiring both "registration and use of a domain name in bad faith.")
▪ Respondent’s failure to use the Domain Name other than to attempt to sell it, and its failure to transfer the Domain Name to Complainant or to cancel it, support a finding of bad faith.
▪ Respondent’s inactivity is sufficient to constitute bad faith use of the Domain Name.
Respondent provided no Response, and the deadline for so doing expired on July 16, 2002. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
e. Supplemental Filing by Respondent
Respondent sent an e-mail to the Center and to the Panel on July 25, 2002, clarifying Respondent’s position on the facts and current posture of the dispute. The Panel decides in its discretion to accept this e-mail as a Supplemental Filing by Respondent. See Section 3 supra.
In the supplemental filing, Respondent asserts as follows:
▪ There is no dispute over the Domain Name.
▪ Respondent was contacted by a lawyer on behalf of Complainant. The lawyer stated that Respondent violated trademark laws by registering the Domain Name because no one other than Complainant could use the name "NASDAQ." Respondent was not previously aware of such laws, but took the information provided seriously.
▪ Respondent informed Nasdaq’s counsel that he did not intend to violate any laws, and that the registration was "a mistake."
▪ Respondent mentioned that he had an offer for the Domain Name from a buyer in Russia seeking a high-profile domain name for a new pornographic Web site. Respondent stated that the buyer was considering the Domain Name as one option. However, this was "a casual remark," and Respondent did not state it intended to sell the Domain Name to this buyer.
▪ Respondent indicated that the current price for a high-profile domain name was roughly $1,500. However, he did not state that this was specifically the price for the Domain Name.
▪ Complainant’s lawyer offered to reimburse Respondent for the $14.95 registration fee if Respondent transferred the Domain Name to Nasdaq. Respondent found the comparison between Complainant’s offer and the Russian buyer’s offer comical, but stated that Nasdaq’s counsel was not amused. Respondent did not refuse the $14.95 offer, nor did he ask Complainant to match the Russian buyer’s offer. Respondent did not seek any offer from Complainant. Respondent’s statement about the offers or domain name prices was only a comment, and the subject was never raised again.
▪ Respondent had no wish to enter into a dispute with Nasdaq, and did not want to sell the Domain Name since it was one of Complainant’s trademarks.
▪ Soon after the discussion with Complainant’s counsel, Respondent cancelled the Domain Name’s registration with Go Daddy. Respondent assumed that the Domain Name would be available for Complainant to register as soon as the cancellation process concluded.
▪ Complainant’s counsel continued to send Respondent e-mail and Federal Express letters despite Respondent’s cancellation of the Domain Name. Respondent did not reply since he no longer owned the Domain Name. Respondent assumed that Complainant’s counsel would learn that the Domain Name was available for registration.
▪ After receiving several letters, Respondent informed Complainant’s counsel that he had cancelled the Domain Name. The lawyer for Nasdaq stated he would pursue the matter because Respondent had not transferred the Domain Name to Complainant.
▪ Respondent perceived the demand by Complainant’s counsel to transfer the Domain Name as unreasonable, since he no longer owned or controlled the Domain Name, and could not re-register it.
▪ The Domain Name remained in the .biz registry. Respondent assumed this was normal and did not know how long the cancellation would take to be effective. Respondent did not know that Complainant’s counsel had frozen the Domain Name, terminating the cancellation procedure.
▪ Respondent does not want the Domain Name and is unable to transfer it to Complainant, since it cancelled the registration. Respondent accordingly considers the matter closed.
5. Discussion and Findings
The Panel now considers this matter on the merits in light of the Complaint, the Supplemental Filing, the Policy, the Rules, the Supplemental Rules, and other applicable authority.
One other potentially applicable authority is the Restrictions Dispute Resolution Policy (RDRP) (available at "http://www.neulevel.biz/ardp/docs/rdrp.html", and referenced in Paragraph 18 of the Go Daddy Registration Agreement). The RDRP supplements the Policy and governs registrations under the top level domain ("TLD") <.biz>. Complainant, however, did not file this proceeding under the RDRP, but rather solely under the Policy (the UDRP). Accordingly, this Panel does not consider application of the procedures set forth in the RDRP to be within the scope of its mandate, inasmuch as no request to implement those procedures has been made. Nonetheless, as discussed below in Section 5(b)(iii), the Panel believes that an examination of the RDRP and an assessment of whether its requirements have been met is appropriate to a resolution of the "bad faith" factor that the Panel must analyze when applying the Policy.
Paragraph 4(a) of the Policy requires that Complainant prove, with respect to the Domain Name, each of the following:
(i) The domain name in issue is identical or confusingly similar to Nasdaq’s trademark in issue; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) The domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances of acts that for purposes of Paragraph 4(a)(iii) above would demonstrate registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii) above.
a. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any factual assertions made and supported by evidence submitted by Complainant, unless the assertion is specifically contradicted by evidence in Respondent’s supplemental filing. Where Respondent’s supplemental filing contradicts one of Complainant’s factual assertions, the Panel will resolve the dispute based on the evidence. See Paragraph 10(d) of the Rules; see also Paragraph 15(a) of the Rules. Where Respondent’s supplemental filing does not contradict one of Complainant’s factual assertions, the Panel does not draw any inferences other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
One other procedural point is raised by Respondent’s statements in his Supplemental Filing that there is "no dispute" and that his registration of the Domain Name was "obviously a mistake" because he did "not want to start a dispute with Nasdaq" and "did not want to sell the domain name since it was trademarked by Nasdaq." Respondent claims to have cancelled the registration for the Domain Name, leaving it "free for Nasdaq to register." Complainant contests Respondent’s allegation that the Domain Name has been cancelled, and wishes to have this proceeding continue to a final resolution. First, regardless of whether Respondent may have attempted to cancel his registration, it does not appear from the evidence that any such cancellation took place. Rather, the Domain Name appears to be on hold ("client transfer prohibited") pending resolution of this proceeding. Second, Respondent’s apparent acquiescence does not relieve the Panel of its responsibility to weigh the evidence and render a decision, since the parties have not entered into a settlement agreement as provided in the Rules. See Rules, Paragraph 17(a) (requiring the parties to "agree on a settlement" before the Panel can terminate the administrative proceeding without issuing a decision). Accordingly, the proceeding must continue and the Panel must resolve it.
b. Complainant’s Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
The Panel finds that Respondent’s Domain Name is confusingly similar to Nasdaq’s "NASDAQ" and "NASDAQ TRADER" trademarks. Nasdaq has registered the trademark "NASDAQ" in the United States. Nasdaq has also applied to register the "NASDAQ TRADER" mark in the United States, and has used the mark in commerce since 1997. The Domain Name includes both marks in their entirety. The Domain Name differs from Nasdaq’s "NASDAQ TRADER" mark only by the deletion of the space between "NASDAQ" and "TRADER" and the addition of the TLD <.biz>. When a domain name differs from a trademark only by removing a space between words and appending a TLD designation, the domain name is confusingly similar to the mark. See, e.g., Wine.com, Inc. v. Zvieli Fisher, WIPO Case No. D2000-0614 (September 11, 2000) (finding that the "differences between the domain name and the registered trademark, being the deletion of a space between the words… [and] appending of a top-level domain (.com) are all so de minimis as to be utterly inadequate to preclude any such confusion from occurring"); Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000) (holding that the "addition of the generic top-level-domain (gTLD) .com is without legal significance in determining similarity"); Club Méditerranée v. Beaufort Holding Ltd., WIPO Case No. D2000-1564 (February 1, 2001) (finding that the "difference in the top-level domain name is of no relevance in [avoiding confusion]").
In addition, Respondent’s Domain Name is identical to one of the principal domain names through which Complainant does business on the Internet, namely <nasdaqtrader.com>, save only for the change in TLD from .com to .biz (a change which, as noted above, does not obviate confusion).
In sum, Respondent’s Domain Name is confusingly similar to Complainant’s marks.
(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name.
The Panel finds that Respondent has no rights to or legitimate interest in the Domain Name. Respondent has made no legitimate use of the Domain Name and does not appear to have used it at all other than to make it available for sale. (Respondent’s supplemental filing discusses his interest in selling this "high profile domain" "among other domains [Respondent] owned".) The Panel has no evidence suggesting Respondent is preparing to use the Domain Name to promote or sell goods or services. Respondent does not use the Domain Name, or any variant of it, as a business name, and there is no evidence that he is commonly known by the Domain Name. Finally, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name.
Respondent’s supplemental filing does not assert or even mention any of the circumstances that demonstrate rights to and legitimate interests in a Domain Name set forth in Paragraph 4(c) of the Policy. The Panel accordingly finds that Respondent has not established any of these defenses.
(iii) Registration and Use in Bad Faith
As guidance in determining whether the bad faith requirement is met, paragraph 4(b) of the Policy sets forth four non-exclusive illustrations of fact patterns that can show registration and use of a domain name in bad faith.
The first illustrative scenario of bad faith is if Respondent has "registered or … 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name." (Paragraph 4(b)(i) of the Policy) The record suggests, although it does not conclusively establish, that Respondent registered the Domain Name with the intent to sell it to either Complainant or a competitor of Complainant for consideration greater than his out-of-pocket costs. Respondent admitted in an e-mail that his "original plan was to sell the domain." When Complainant’s counsel then offered to reimburse Respondent’s registration fees in exchange for transferring the Domain Name to Nasdaq, Respondent replied, "That would be $ 14.95? But I have an offer for $ 1,600. I’ll have to think about this one. Sounds a bit comical to me." This exchange could plausibly be interpreted as an attempt by Respondent to gain additional consideration from Complainant for transferring the name. Respondent contends in his Supplemental Filing, however, that he "did not refuse the $ 14.95 offer nor … ask Nasdaq to match the [$1,600] offer … or come up with an offer at all." On this fact pattern, Complaint has a reasonable case for the conclusion that Respondent’s conduct meets the first illustration of registration and use in bad faith. Because the matter is not free from doubt, however, the Panel proceeds to other grounds for a bad faith finding.
The second illustrative scenario of bad faith is if Respondent 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 [Respondent has] engaged in a pattern of such conduct." (Paragraph 4(b)(ii) of the Policy). The record does not contain adequate evidence for the Panel to conclude Respondent registered the Domain Name to prevent Nasdaq from reflecting its marks in a Domain Name. Rather, Respondent intended to sell the Domain Name. Respondent’s intent appears to have been to profit, not to prevent. Furthermore, while Respondent seems to have registered a number of "high profile domain names," it is not clear that there is a pattern of such blocking conduct. This illustration thus does not apply.
The third illustrative scenario of bad faith is if Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor." (Paragraph 4(b)(iii) of the Policy). The record contains no evidence that Respondent competes with Complainant, nor that it registered the Domain Name to disrupt Complainant’s business. This illustration thus does not apply.
The fourth illustrative scenario of bad faith is if Respondent 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 [Respondent’s] web site or location or of a product or service on [his] web site or location." (Policy, Paragraph 4(b)(iii)). This illustration does not directly apply here either, since Respondent does not have, and has apparently never had, a web site accessible at the Domain Name, nor is there evidence that he ever sought to attract users to that domain. Granted, his intent to sell the domain name suggests an intent to allow a prospective buyer to use the fame of Complainant’s mark to attract users to a web site, but that is not exactly what illustration four covers.
Respondent intended to sell the Domain Name to a buyer who would capitalize on its confusing similarity with Complainant’s mark for purposes not sanctioned by Complainant. Respondent was engaged in negotiations with a buyer who sought to use this "high profile domain for a new porn site," as admitted in Respondent’s supplemental filing. Such a buyer would be engaging in bad-faith use. See, e.g., Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295 (December 26, 2000) (finding that the "posting of pornographic contents on a web site under a domain name that corresponds to a third party's mark is a bad faith use of the domain name"); Club Mediterranee v. Beaufort Holding Ltd., WIPO Case No.D2000-1564 (February 1, 2001) (same).; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com," WIPO Case No. D2000-0847 (October 12, 2000) (holding that the <madonna.com> "name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s [pornographic] web site by trading on the fame of Complainant’s mark" and finding bad faith registration and use under Paragraph 4(b)(iv) of the Policy). The evidence, however, is not clear that Respondent himself intended to make any such use of the domain name at the time he registered it, nor that he has since done so.
In short, the first illustration described in Paragraph 4(b) of the Policy may arguably be applicable; but the other three are not. While conduct fitting any one of these scenarios demonstrates registration and use in bad faith, they are not exclusive. The Panel may also find bad-faith registration and use based on facts that do not fit any of these four illustrations. See Policy, Paragraph 4(b); see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
Here, the Panel finds that Respondent’s conduct in registering the Domain Name solely for the purpose of selling it to another entity rather than to use it for a commercial purpose constitutes registration and use in bad faith. Such findings have been made for domain names registered under the <.com> TLD in the past, see, e.g, Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023 (March 9, 2000); Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000); National Hockey League and Lemieux Group LP v. Domain For Sale, WIPO Case No. D2001-1185 (December 6, 2001). The principle is even clearer, however, with respect to a domain name registered under the <.biz> TLD.
The <.biz> TLD imposes greater restrictions on the legitimate use of its domain names than does the <.com> TLD. Accordingly, the range of conduct that can constitute "bad faith registration and use" is broader as well. Use of a domain name that is legitimate in other TLDs may not qualify as legitimate in <.biz>. See Restrictions Dispute Resolution Policy (RDRP), Paragraph 4(b). For example, using a <.biz> domain name "exclusively to criticize or otherwise express an opinion on the products or services" of a company does not qualify as a "bona fide" use of a <.biz> domain name, even though such use would be acceptable in other TLDs. See id. Registrants are explicitly advised of the additional restrictions on the use of <.biz> domain names in their registration agreements. See, e.g., Go Daddy Registration Agreement, Paragraph 18 ("Additional Requirements for .biz Registrants").
In this Panel’s view, violating the RDRP’s restrictions on the registration and use of <.biz> domain names can contribute to a finding of bad faith registration and use under the Policy.
Respondent has both registered and used the Domain Name in violation of the Registration Agreement and the <.biz> TLD restrictions contained within it. See Paragraph 18, "Additional Requirements for .biz Registrants," Go Daddy Registration Agreement. When registering the Domain Name, Respondent certified that it would "be used primarily for bona fide business or commercial purposes," and not "solely for the purposes … of selling, trading or leasing the domain name for compensation, or… the unsolicited offering to sell, trade or lease the domain name for compensation." See id. Respondent admits, however, that his "original plan was to sell the domain." Hence, Respondent registered the Domain Name in bad faith, by falsely certifying as to the purpose for which he was registering it. Not only did Respondent intend to sell the domain name, but he also admits that he had "no intention of using the domain name myself." Confirming this admitted intent, Respondent subsequently "put [the Domain Name] up for sale," as his Supplemental Filing further admits.
Accordingly, Respondent violated the restrictions on registration and use of a <.biz> domain name reflected in the Registration Agreement and in the RDRP. This Panel finds that such a violation constitutes bad faith registration and use of a <.biz> domain name under the terms of the Policy.
In light of the above findings and analysis, the Panel decides that Nasdaq met its burden of proving: (1) the Domain Name is confusingly similar to marks belonging to Complainant; (2) Respondent has no rights or legitimate interest in the Domain Name; and (3) the Domain Name has been registered and used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <nasdaqtrader.biz> domain name be transferred to Nasdaq.
Michael A. Albert
Dated: August 6, 2002