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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Nasdaq Stock Market, Inc. v. Donal Bergin
Case No. DTV2002-0003
1. The Parties
The Complainant is The Nasdaq Stock Market, Inc., of New York, New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, L.L.P., of McLean, Virginia, United States of America.
The Respondent is Mr. Donal Bergin, of Nerja, Malaga, Spain.
2. The Domain Names and Registrar
The disputed domain names are <nasdaq-livesex3d.tv>, <nasdaq-interactive.tv> and <nasdaq-investigated.tv>.
The Registrar of all three domain names is The .tv Corporation International of Los Angeles, California, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the World Intellectual Property Organization Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on May 17, 2002, and in hard copy on May 22, 2002. Receipt of the Complaint was acknowledged by the Center on May 23, 2002. That day registration details were sought from the Registrar, which replied on May 24, 2002, stating that all three domain names are registered in the name of the Respondent; the status of the registrations is active; the language of the Service Agreement is English and the registrant submitted in the registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names.
On May 24, 2002, the Center received email correspondence from the Respondent, to which it replied on May 27, 2002.
On May 27, 2002, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by courier (with enclosures) to the Respondent at the address as recorded with the Registrar, and by email (without attachments).
The Center included with that material a letter dated May 27, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was June 16, 2002. Between May 27, 2002, and June 17, 2002, the Center received and replied to further emails from the Respondent. No Response was filed. On June 17, 2002, the Center notified the parties of the Respondent’s default.
The Complainant having requested a single-member Panel, on June 19, 2002, the Center formally notified the parties of the appointment of Alan L. Limbury as Sole Panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of July 3, 2002.
The Respondent sent a further email to the Center on June 22, 2002, which the Center transmitted to the Panel on June 24, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel considers the Complaint complies with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings is English, being the language of the Registration Agreement.
4. Factual Background (uncontested facts)
Under the trademark NASDAQ, the Complainant operates the largest stock market in the world in terms of daily share volume. It has used that mark continuously since 1968. The mark is registered in the United States and approximately 40 other countries. NASDAQ is a coined word that has no meaning other than as Complainant’s trademark. The mark is famous. Complainant has registered hundreds of domain names incorporating the mark NASDAQ. The website at <nasdaq.com> attracts approximately 50 million hits daily.
On April 23, 2002, without the Complainant’s authority, the Respondent registered the disputed domain name <nasdaq-interactive.tv> and that same day emailed the Complainant:
On April 30, 2002, counsel for Nasdaq, in a "cease and desist" letter, demanded transfer of the registration. Later that day, Respondent responded:
"With no disrespect meant I believe your argument is worthless in a court of law. I created and purchased it with a view to selling it and have offered it for sale PRIOR to your correspondence. I am certain I am entitled to sell it. However, my main priority in life is helping people on my www site and my financial goals are secondary. Therefore, I hereby agree to transfer it to nasdaq on the basis that you organize the transfer and pay the .tv corporation their costs….which I understand are minimal. I am not asking for any money. However, I merely request your client pay me the sum of 1,000 dollors [sic] as a token of their appreciation of my co-operation".
This was refused but the Complainant offered to reimburse Respondent for any out of pocket expenses incurred in the registration or transfer. On May 1, 2002, Respondent replied that he "obtained legal advice and will now sell <www.nasdaq-interactive.tv> to your client for 1.5 million dollors [sic]."
On May 4, 2002, Respondent registered the <nasdaq-livesex3d.tv> and <nasdaq-investigated.tv> domain names and that day sent an email to counsel for Nasdaq stating that he owned those two domains and:
"I will now sell to anyone---<www.nasdaq-interactive.tv> +above 2 WWWs for 2.36 Million dollars".
On May 6, 2002, counsel for the Complainant sent a cease and desist letter demanding transfer of the two new registrations. Later that day, Respondent offered to sell <nasdaq-livesex3d.tv> for "pre-payment of 1,000 dollars" and stated that he would sell the other two domain names to "ANYONE" for 1.84 million dollars.
On May 18, 2002, the Respondent sent to the Complainant’s Counsel a message entitled "INCORRECT MESSAGE" saying:
<www.nasdaq-livesex3d.tv> should have read 100 dollars i.e.costs.
I accept that I should not have created it. However, I was extremely ill at that time as I got a near fatal reaction to medication".
The Respondent suggested in an email to the Center on May 24, 2002, that the Complainant had been mischievous in not telling the Center of this offer. However, the Complaint had been filed and a copy had been sent to the Respondent by electronic mail the day before the Respondent’s "correction" message (Complaint paragraph 16).
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s NASDAQ trademark. The Respondent has no rights or legitimate interests in the disputed domain names, which he registered and is using in bad faith.
The domain names should be transferred to the Complainant.
No Response was filed. Instead, the Respondent has accused WIPO and ICANN of corruption and questioned whether this case can possibly be decided fairly. Further, he has sought to exclude from consideration by the Panel the domain name <nasdaq-interactive.tv> on the ground that Complainant failed to mention in the Complaint the Respondent’s "correction" of $100 to the earlier emailed offer to sell that name for $1,000. As mentioned, that "correction" was made after the Complaint was filed and after the Respondent had been sent an electronic copy by the Complainant.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Failure to file a Response
The Panel draws two inferences where the Respondent has failed to submit a response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System (NAF Case No. FA 0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925).
Rights in a trademark
The Complainant has provided evidence of its rights in the registered trademark NASDAQ. The fame of that mark is not in dispute and is in any event indisputable.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source (NAF Case No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc. WIPO Case No. D2001-1121, and the cases there cited.
The disputed domain names are similar to and incorporate the whole of the Complainant’s trademark NASDAQ. The only differences are the addition of a hyphen, the descriptive words "livesex3d", "interactive" and "investigated" and the .tv ccTLD. These are not distinguishing features and do not detract from the likelihood of confusion. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306, and The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010.
The Panel finds each of the disputed domain names to be confusingly similar to the Complainant’s NASDAQ mark.
The Complainant has established this element of its case.
The Respondent’s name does not incorporate the word NASDAQ. The Complainant has not authorized the Respondent to use its mark nor to register the disputed domain names. The Respondent is making no use of the disputed domain names.
These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain names on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
The Respondent has made no such showing and accordingly, the Panel finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
The Complainant has established this element of its case.
Bad faith registration and use
It cannot be seriously denied that the Respondent had actual knowledge of the famous mark NASDAQ when he registered the domain name <nasdaq-interactive.tv>. That very day he sent an email to the Complainant announcing that he owned that domain name. By the time he registered the other two domain names, he had received and responded to a "cease and desist" letter clearly stating the Complainant’s rights in the mark.
As the Respondent admitted to the Complainant’s Counsel on April 30, 2002, the Respondent created and purchased the domain name <nasdaq-interactive.tv> a week earlier with a view to selling it. On May 1, 2002, he offered to sell it to the Complainant for $1.5 million. Then, having registered the domain names <nasdaq-livesex3d.tv> and <nasdaq-investigated.tv> on May 4, 2002, he stated that very same day to the Complainant’s Counsel that he would sell all three disputed domain names to anyone for $2.36 million.
It is unnecessary to decide whether the Respondent’s "correction" to his offer to sell <nasdaq-interactive.tv> for $1,000 was genuine or was merely a self-serving attempt to mount a defence to the Complaint after having received an electronic copy of it. The earlier offers to sell for millions cannot be erased, nor can they be obscured by allegations against WIPO, ICANN or the independence and impartiality of the Panel.
Under these circumstances, the conclusion is inescapable that the Respondent registered all three domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain names. There can be no clearer case of cybersquatting.
Accordingly, pursuant to paragraph 4(b)(i) of the Policy, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.
The Complainant has established this element of its case.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain names <nasdaq-interactive.tv>, <nasdaq-livesex3d.tv> and <nasdaq-investigated.tv> be transferred to the Complainant.
Alan L. Limbury
Dated: June 26, 2002