The Nasdaq omx group, Inc V. Eli Shoval Case No. D2009-0185 The Parties




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION




The Nasdaq OMX Group, Inc. v. Eli Shoval




Case No. D2009-0185



1. The Parties

The Complainant is The Nasdaq OMX Group, Inc., of Washington, DC, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States.


The Respondent is Eli Shoval, of Mevaseret Zion, the State of Israel.


2. The Domain Name and Registrar

The disputed domain name (the “Infringing Domain Name”) is registered with Domainsouffle.com LLC.




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2009. On February 12, 2009, the Center transmitted by email to Domainsouffle.com LLC. a request for registrar verification in connection with the disputed domain name. On February 12, 2009, Domainsouffle.com LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on February 26, 2009 and February 27, 2009. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).


In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2009.
The Center appointed Maninder Singh as the sole panelist in this matter on April 16, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.


4. Factual Background

The Complainant in the present administrative proceeding is The Nasdaq OMX Group, Inc. (formerly known as The Nasdaq Stock Market, Inc.). It is a corporation organized and existing under the laws of the State of Delaware, United States of America.


The Respondent in the present Complainant, according to WhoIs records, is the record owner of the domain name at issue, Eli Shoval.
The Complainant has stated that it is the owner of various trademarks and service marks containing or comprising “Nasdaq” for its various financial products and services. The Complainant contends that Nasdaq OMX and its predecesors-in-interest have used the trademark NASDAQ for a variety of products and services including for its operations of The Nasdaq Stock Market continuously since 1968. It is the claim of the Complainant that when consumers across the world hear the word NASDAQ or any other name or mark comprising the word NASDAQ they associate it with Nasdaq OMX and no other source. It is stated to be the prior user of the marks.
In this regard, Complainant has relied upon various UDRP decisions which have been held in their favour against infringement of the mark NASDAQ. The Complainant has also drawn the attention of this Panel specifically to The Nasdaq Stock Market, Inc. v. Antartica, S.r.l., 69 U.S.P.Q.2d 1718 (TTAB 2003). In that case, Antartica, S.r.l., a corporation in Italy, had applied for registration of the NASDAQ mark for its various goods. The Complainant herein challenged the said action of Antartica, S.r.l. by filing an opposition application against the registration of the said mark. The judge in that Opposition has held that the opposition to registration of mark in favour of Antartica, S.r.l. is sustainable both as to its likelihood of confusion claim based on opposer’s registration and as to opposer’s dilution claim; and therefore the registration to applicant therein was declined.
It is the contention of the Complainant that on October 8, 2008, long after Nasdaq’s first adoption and use of its NASDAQ mark, the Respondent registered the Infringing Domain Name. The Infringing Domain Name directly resolves to “http://www-stockmarket.com”, a website offering miscellaneous links to investment-related services and other goods and services, none of which originate from or are otherwise authorized by the Complainant. In fact, one of the links (titled “Nasdaq”) links viewers to another web page offering additional links to sites purporting to offer investment-related goods and services, none of which are affiliated with the Complainant. The Complainant has provided a printout of the website “www-stockmarket.com” as an annexure to the Complaint.
It is also the contention of the Complainant that on October 27, 2008, in an effort to resolve this matter on amicable terms, Complainant (through its attorneys) sent a cease-and-desist letter, requesting transfer of the Infringing Domain Name to the Complainant. In response to the said letter, the then-current domain name registrant confirmed, via email, that “I would like to send this domain to you. Could you tell me what I should do now?” In response, Nasdaq OMX followed up with several emails seeking the necessary information to complete the transfer. However, further communication was cut off and the Infringing Domain Name was transferred to Respondent. The Complainant has also provided certain email communications between the parties, along with the earlier WhoIs record for the Infringing Domain Name.
The Complainant contends that with approximately 3,900 companies representing $5.5 trillion in total market value, Nasdaq OMX is the world’s largest exchange company with trading, technology and public company service capabilities that extend across the world. Nasdaq OMX globally covers the widest geography with its large number of company listings and executes more transactions than any other exchange in the world. Owning exchanges in North America and Europe, Nasdaq OMX serves as a trading venue for multiple asset classes including equities, derivatives, debt, commodities, structured products and ETFs, in addition to supporting the development and operations of more than 60 exchanges in over 50 countries around the world. Through offices in over 20 countries, Nasdaq OMX delivers services and forward-thinking technology with the power to drive capital formation, transform business and fuel economic growth around the world. Complainant has attached certain documents containing information with regard to Nasdaq OMX’s business activities, as annexures to the Complaint.
Nasdaq OMX has used “NASDAQ” as a distinctive part of its trade name in connection with its business continuously in commerce since 1992, and moreover continues to use the trademark as part of its NASDAQ OMX marks and names.
The Complainant asserts that NASDAQ is inherently distinctive as applied to the NASDAQ products and services, and, as Nasdaq OMX has coined the word, NASDAQ has no meaning other than as a trademark of the Complainant.
The Complaint also incorporates the contention that Nasdaq OMX owns numerous trademarks and service marks containing or comprising NASDAQ (and applications and registrations therefor) for various financial products and services. The NASDAQ mark has been in continuous use in United States (“U.S.”) commerce since 1968. The NASDAQ mark is registered in the U.S. Patent and Trademark Office and in approximately 40 other countries and jurisdictions around the world, and a large number of such registrations have attained incontestable status. In this regard, Complainant has provided copies the certificates of registrations for U.S. Registration Nos. 922,973 and 1,259,277, both of which are incontestable. The Complainant contends that as a result of the long, substantially exclusive, and extensive use of the NASDAQ mark for financial products and services, NASDAQ has become a famous mark in the U.S. and around the world, and indicates the source of products and services originating exclusively with the Complainant.
The Complainant has submitted in the Complaint that by virtue of the its continuous and substantially exclusive and extensive use in commerce of the NASDAQ mark, and the commercial success of the products and services provided under such mark, that the 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 the Complainant, and no other person or entity.

The Complainant’s investment in promoting the NASDAQ trademark and its registered domain names is substantial. The Complainant has spent hundreds of millions of dollars promoting the NASDAQ mark and name and in developing and maintaining the web sites in the U.S. and around the world. The Complainant extensively and prominently uses the NASDAQ trademark, and uses such mark in connection with advertisements and its domain names and web sites in the dissemination, marketing, and advertising of its services, and spends hundreds of millions of dollars in advertising and marketing its services under the NASDAQ trademark. Millions of people throughout the world visit the Complainant’s web sites. Indeed, the Complainant’s “www.nasdaqomx.com” and “www.nasdaqomxtrader.com” websites are some of the world’s most popular financial websites, receiving tens of millions of hits every day. Such web sites contain information of interest to investors, securities traders and the general public. Home page printouts from the foregoing web sites have been attached with the Complaint.


The Complainant has successfully protected its NASDAQ mark against cybersquatters. The following are some examples of those cases:
The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc., WIPO Case No. D2002 1125;

The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001 1010;

The Nasdaq Stock Market, Inc. v. Star Internet Financial Information Services, Ltd., WIPO Case No. D2001 1210;

The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001 1492;

The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001 1493;

The Nasdaq Stock Market, Inc. v. SunPeople, Inc., WIPO Case No. D2001 1495;

The Nasdaq Stock Market, Inc. v. Momm Amed la, WIPO Case No. D2001 1496;

The Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002 0571;

The Nasdaq Stock Market, Inc. v. Global America, WIPO Case No. DNU2002 0002;

The Nasdaq Stock Market, Inc. v. Steve Grewal, WIPO Case No. DTV2001 0001;

The Nasdaq Stock Market, Inc. v. Donal Bergin, WIPO Case No. DTV2002 0003;

The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002 0770;

The Nasdaq Stock Market, Inc. v. Youngmi Park, WIPO Case No. D2002 0572; and

The Nasdaq Stock Market, Inc. v. Sungjo Park, WIPO Case No. D2002 0595.
The Complainant contends that as a result of the extensive and prominent use of the mark and name, NASDAQ has become a famous mark. When consumers across the world hear the word NASDAQ (or any of the other domain names or marks comprising NASDAQ), they think of Nasdaq OMX and no other source. Accordingly, the goods and services offered under the NASDAQ mark have achieved such a reputation for excellence that the mark has become synonymous with the provision of high-quality and reliable financial information and securities trading services. In fact, the judge in the Nasdaq Stock Market Inc. v. Antartica, S.r.l. case, supra, determined that the mark NASDAQ is famous within the high standard set forth under the U.S. Anti-Dilution Act.


5. Parties’ Contentions

A. Complainant


It is contended by Complainant in the Complaint that the Respondent’s Infringing Domain Name incorporates Nasdaq OMX’s NASDAQ mark in its entirety. The confusingly similarity of the mark and the Infringing Domain Name is not subject to reasonable dispute. It has placed reliance on the decision in The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770 (“[t]he domain names and are confusingly similar to the trademarks “NASDAQ” in which Complainant has rights.”). It is the assertion of the Complainant that given the identity of the Infringing Domain Name and the Complainant’s marks and domains, confusion in this case is inevitable. According to the Complainant the addition of the prefix “www” is clearly intended to misdirect unsuspecting Internet traffic (i.e., Internet users who have accidentally failed to include the period after “www”) to Respondent’s unauthorized web site.

Complainant has alleged that Respondent has no legitimate interest in the Infringing Domain Name. Respondent has no relationship to the Complainant or the marks comprising the Infringing Domain Name.

It is also the contention of the Complainant that given the international fame of the Complainant’s NASDAQ OMX marks and name, which existed in the U.S. and elsewhere long prior to the registration date of the Infringing Domain Name, there is no doubt that Respondent was well aware of the Complainant’s rights in the NASDAQ mark and name when the Infringing Domain Name was registered. The Complaint has referred to and relied upon the decision in The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc., supra. (“[i]t is highly unlikely that Respondent was unaware of this well-known trademark when it first registered the domain name […] the Respondent did not have his own legitimate interest in the name ― rather, his interest in the name was due to its proximity to Complainant’s high-traffic “nasdaq.com” site.”).

The Complainant contends in the Complaint that the Respondent’s bad faith is not subject to reasonable dispute in this case. Respondent has no rights in the mark or name NASDAQ and has never been authorized to use said marks or name. Despite having absolutely no rights in NASDAQ, Respondent has opportunistically registered the Infringing Domain Name which incorporates the NASDAQ mark in its entirety, in order to take advantage of misdirected Internet traffic.

The Complainant has claimed that as on the date of filing of the Complaint, the Infringing Domain Name resolved to a website containing miscellaneous advertisements, many for investment-related services and goods. The Complainant has no control over the Infringing Domain Name and Respondent’s use of the Infringing Domain Name can change at any time. The Complainant has provided certain printouts from the website to claim resolving from the Infringing Domain Name as on November 25, 2008.

It is further contended by the Complainant that Respondent’s activities have harmed and are continuing to harm the Complainant by depriving it of use of an obvious domain name to use in association with its company. In this regard the Complainant has placed reliance on in the following:

(i) Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006 0968 ― “Respondent registered a domain name incorporating the Complainant’s Mark, despite having no connection to the Complainant [t]his alone is powerful evidence of the Respondent’s bad faith.”;

(ii) Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000 1493 – finding bad faith based on confusing similarity of the parties’ marks: “Part of the reason for confusing similarity was the potential confusion created regarding the source, sponsorship, affiliation, or endorsement by Microsoft of the Domain Name and the website to which it resolves. Under these circumstances, the Sole Panelist finds that this confusing similarity is equivalent to the likelihood of confusion required under the Policy paragraph 4(b)(iv)”.

The Complainant contends that the bad faith of the Respondent is further evidenced from the fact that the Infringing Domain Name was transferred to a proxy owner. It was only after receiving the Complainant’s cease-and-desist letter that the initial registrant transferred the Infringing Domain Name to Respondent, presumably to protect its identity and make further contact impossible. According to the Complainant any such use of proxy ownership has a bearing on the case, thereby clearly evidencing “bad faith”. With reference to its argument that any such transfer by a private domain service, especially where the Respondent used the site for pay-per-click advertisements that directly competed with Complainant’s business after the transfer, is a clear evidence of bad faith and lack of legitimate interests in a domain name, the Complainant has relied upon BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008 0882.



B. Respondent

The Respondent did not reply to the Complainant’s contentions.




6. Discussion and Findings




A. Identical or Confusingly Similar

The Panel is of the view that the Infringing Domain Name is identical and confusingly similar to the Complainant’s NASDAQ trademarks and service marks. Respondent has not come forward to show that it is a bona fide user of the mark or that the said marks have been legally registered in its favour.


The Panel in light of the facts and circumstances of the present case has no difficulty in arriving to the conclusion that the Respondent’s Infringing Domain Name incorporates the Complainant’s NASDAQ mark in its entirety. The Panel finds no difficulty in agreeing with the contention of the Complainant that there does exist confusing similarity between the mark of the Complainant and the Infringing Domain Name. In this regard, the Panel takes note of such cases as The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002 0770 (“The domain names and are confusingly similar to the trademarks “NASDAQ” in which Complainant has rights.”). Additionally, the Panel, without any difficulty, accepts the contention of the Complainant that given the identity of the Infringing Domain Name and the Complainant’s marks, confusion in this case is inevitable.
Similarly, the Panel finds itself in complete agreement with the contention of the Complainant that the addition of the prefix “www” is clearly intended to misdirect unsuspecting Internet traffic (i.e., Internet users who have accidentally failed to include the period after “www”) to Respondent’s unauthorized web site and does not bar a finding of confusing similarity.

B. Rights or Legitimate Interests

The Panel finds that it is correct that Respondent has no relationship to Nasdaq OMX or the marks comprising the Infringing Domain Name. Surely, the Complainant has established that NASDAQ OMX is known internationally. It has existed in the U.S. and has remained familiar and known all across the globe much prior to the registration of the Infringing Domain Name. Even if the Respondent had chosen to file a response and when, in fact, no Response has been filed, it would not have been possible for the Respondent to contend to the contrary (i.e. - that it was not familiar with NASDAQ OMX). The reasoning underlying the decision in The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc., outlined above, are applicable to this case as well. The Panel has no hesitation in concluding that this is a clear case of a lack of any right or legitimate interest of the Respondent in regards to the Infringing Domain Name in question.



C. Registered and Used in Bad Faith

The Panel finds that the Respondent’s bad faith is quite evident in this case. Respondent has no rights in the NASDAQ marks and has never been authorized to use said marks. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006 0968.



It is apparent that the Respondent, in order to take advantage of misdirected Internet traffic, has registered a domain name incorporating the NASDAQ mark in its entirety and when it has no rights whatsoever in NASDAQ.
The Panel further finds that transfer of the website to a privacy protection service after negotiations for the Infringing Domain Name had taken place was a new registration for UDRP purposes, supports a finding of R’s knowledge of the Complainant’s prior rights. The Panel also finds that as on the date of this Decision the Infringing Domain Name resolves to a website containing miscellaneous advertisements, many of them pertaining to investment-related services and goods.
There is substance in the contention of the Complainant that bad faith of the Respondent is further evidenced from the fact that the Infringing Domain Name was transferred to a proxy service provider. It was only after receiving the Complainant’s cease-and-desist letter that the initial domain name registrant transferred the domain to Respondent, presumably to protect its identity and make further contact impossible. Any such use of proxy ownership has a bearing on this case, evidencing bad faith. The Complainant’s argument that any such transfer by a privacy protection service especially where the Respondent used the site for pay-per-click advertisements that directly competed with Complainant’s business after the transfer is clear evidence of bad faith and lack of rights or legitimate interests in a domain name, is well-founded and merits acceptance by the Panel. The Panel finds the analysis in BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, WIPO Case No. D2008 0882, to be fully applicable in the facts and circumstance of the present case.
The Panel holds that Respondent’s activities have harmed and are continuing to harm the Complainant by depriving Complainant of use of an obvious domain name to use in association with its company. The Complainant has correctly relied upon Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003 0050, “the contested domain names are so obviously connected with the well-known name FERRARI and its products that the very use of the name by someone with no connection with the products suggests opportunistic bad faith.”; and Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000 0847, “use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” The Panel also notes that the reference to and reliance by the Complainant on the decision in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000 1493 is well-placed and fully applicable also in the facts and circumstances of the present case.

Accordingly, the Complainant Nasdaq OMX has discharged its burden under the Policy in establishing bad faith use and registration of the Infringing Domain Name and is accordingly entitled to the relief requested. Under these circumstances, the Panel finds that this confusing similarity is equivalent to the likelihood of confusion required under the Policy paragraph 4(b)(iv).


7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.



                                            

Maninder Singh



Sole Panelist
Dated: 25 April, 2009

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