ADMINISTRATIVE PANEL DECISION
The Nasdaq OMX Group, Inc. v. Domains by Proxy, Inc./Anglo Scandinavian Management
Case No. D2008 1874
The Complainant is The Nasdaq OMX Group, Inc., of New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States.
The Respondent is Domains by Proxy, Inc./Anglo Scandinavian Management, of Scottsdale, Arizona, United States and of Warwick, United Kingdom of Great Britain and Northern Ireland, respectively.
The disputed domain name is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2008. On December 5, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 6, 2008, GoDaddy.com, Inc. 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 December 12, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 12, 2008. The Center verified that the Complaint together with the amendment 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 December 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2009.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on January 23, 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.
On May 25, 2007, the same day the disputed domain name was registered, The Nasdaq Stock Market, Inc. publicly announced its intentions to acquire the Nordic stock exchange group OMX AB (“OMX”). Nasdaq subsequently completed that transaction and changed its name to Nasdaq OMX. Nasdaq OMX is the largest stock exchange company in the world, operating globally. Nasdaq OMX and its predecessor in interest Nasdaq (collectively “Nasdaq OMX”) own various trademark registrations for NASDAQ around the world, including United States Patent and Trademark Registrations showing commercial use dating back to 1968. Complainant operates under the domain name.
5. Parties’ Contentions
A. Complainant makes the following assertions:
1. Respondent’s domain name is confusingly similar to Complainant’s NASDAQ mark.
2. Respondent does not have any rights or legitimate interests in the domain name.
3. The domain name was registered and used in bad faith.
Neither Respondent Domains By Proxy, Inc. (“DBP”) nor its presumed customer Anglo Scandinavian Management replied to the Complainant’s contentions.
6. Discussion and Findings
Procedural Issue Regarding Proper Respondent
It appears that DBP followed its usual practice and transferred the disputed domain name to the underlying registrant once it received notice of the UDRP Complaint, thereby lifting the privacy shield, revealing the identity and contact information for Anglo Scandinavian Management.
When the Center received the registrar verification from the Registrar confirming the new WhoIs information, and providing the name and contact details of Anglo Scandinavian Management as the registrant of the disputed domain name, it invited Complainant to amend its Complaint to include that information. The result is that both DBP and its customer Anglo Scandinavian Management are named as Respondents. Neither replied. The Panel would have considered responsive submissions from both DBP and/or Anglo Scandinavian Management.
However, this Panel finds that the transfer of the domain name during a pending administrative proceeding is in direct contravention of Policy paragraph 8(a), which clearly states that “you may not transfer your domain name to another holder (i) during a pending administrative proceeding”. This Panel finds that a UDRP proceeding is pending once a complaint is received by the Center.
In paragraph 1 of the Rules, the Respondent is defined as the “holder of a domain name registration against which a complaint is initiated”. This Panel finds that a UDRP proceeding is initiated once a complaint is received by the Center.
In focusing on the wording of the 2 paragraphs cited above, the Panel is acknowledging the primary original intention of the wording, namely to deter cyberflight. Privacy or proxy registration services were not anticipated when the Policy and Rules were drafted.
The Panel is aware that some UDRP Panels have elected not to focus on the wording of the definitions above but, rather, have elected to focus on the beneficial holder of the domain name. This Panel, while making a literal reading of the wording, allows and would have allowed for input from the underlying customer as part of a response to the Complaint. Indeed, Complainant is usually complaining about the customer’s actions, and the UDRP cases are decided on that basis, and that is true in this case.
To that end, Paragraph 4(a) of the Policy requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the registration of the NASDAQ mark with the United States Patent Trademark Office and other authorities establishes rights in the mark under Policy paragraph 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy paragraph 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum April 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The domain name contains the NASDAQ mark in its entirety and merely adds the letters “omx”, and the generic top level domain (“gTLD”) “.com”, insufficient to distinguish it from Complainant’s mark. Since Complainant operates under NASDAQ OMX, the addition of the “omx” adds to the confusing similarity of the disputed domain name to Complainant’s mark. The Panel concludes that the domain name is confusingly similar to Complainant’s NASDAQ mark pursuant to Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance”, which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum, Feb. 18, 2004) (finding that hyphens and top level domains are irrelevant for purposes of the Policy).
The Panel finds that the Policy ¶ 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant states that the domain name currently resolves to Complainant’s former “nasdaq.com” website. Respondent has no relationship to Nasdaq OMX and has never been authorized to use the mark. Once Complainant makes a prima facie case in support of its allegations the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy paragraph 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”)
Neither Respondent nor its customer responded to the allegation in the Complaint that Respondent lacks rights or legitimate interests in the disputed domain name. Therefore, the Panel assumes that Respondent has no rights or legitimate interests in the disputed domain name. The Panel may accept the allegations in the Complaint as true unless clearly contradicted. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000 0624 (August 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also American Express Company v. Fang Suhendro, aka American Express Indonesia FA 129120 (Nat. Arb. Forum December 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”) .
The WhoIs information currently identifies the registrant, Respondent’s customer, as “Anglo Scandinavian Management”. The Panel finds that neither Respondent nor its customer is commonly known by the disputed domain name pursuant to Policy paragraph 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) (stating “nothing in Respondent’s WhoIs information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy paragraph 4(c)(ii) does not apply); see also M. Shanken Communications v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum August 3, 2006) (finding that the respondent was not commonly known by the domain name under Policy paragraph 4(c)(ii) based on the WhoIs information and other evidence in the record).
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent knowingly registered a domain name confusingly similar to Complainant’s mark. Complainant states that others have also tried to capitalize on Complainant’s famous mark and on its announcement of the purchase of the Nordic stock exchange group OMX by registering confusingly similar domain names. It is no coincidence that these confusing domain names, including , were filed on the same day as the announcement. The Panel finds that the was registered and is being used to disrupt Complainant’s business, to redirect traffic and otherwise control a domain name reflecting Complainant’s mark and business, and undoubtedly for commercial gain, either through redirected traffic or the eventual sale of the domain name. See American University v. Richard Cook, FA 208629 (Nat. Arb. Forum December 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Disney Enterprises., Inc. v. Nicolas Noel, FA 198805 (Nat. Arb. Forum November 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy paragraphs 4(b)(iii) [and] (iv).”)
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(iii).
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.
Sandra J. Franklin
Dated: February 6, 2009