The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.

Case No. D2002-1125

1. The Parties

The Complainant is The Nasdaq Stock Market, Inc., New York, New York 10036,

United States of America, represented by Akin, Gump, Strauss, Hauer & Feld,

United States of America.

The Respondent is Shawn Cain d/b/a Star Inc., South Pittsburg, Tennessee 37380,

United States of America..

2. The Domain Name and Registrar

The disputed domain name <nasadaq.com> (the "Domain Name")

is registered with Go Daddy Software, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on December 9, 2002. On December 11, 2002, the Center transmitted by email to

the Registrar a request for registrar verification in connection with the Domain

Name. On December 11, 2002, the Registrar transmitted by email to the Center

its verification response confirming that the Respondent is listed as the registrant

and providing the contact details for the administrative, billing, and technical

contact. The Center verified that the Complaint satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

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 13, 2002.

In accordance with the Rules, paragraph 5(a), the due date for Response was

January 2, 2003. On January 6, 2003, a Notification of Respondent

Default was sent to Respondent. The Response was filed with the Center on January

6, 2003[1].

The Center appointed Michelle Brownlee as the sole Panelist in this matter

on January 15, 2003. 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

Complainant operates the Nasdaq Stock Market, a well recognized stock exchange.

Respondent registered the Domain Name on or about November 13, 2002. Respondent

operates a web site using the Domain Name that contains links to pornographic

materials.

5. Parties’ Contentions

A. Complainant

Complainant owns the NASDAQ trademark in the United States for a variety of

financial products and services. Complainant and its predecessors in interest

have been using the NASDAQ trademark in commerce since 1968. Complainant operates

a web site at the domain name <nasdaq.com> that gets 50 million hits a

day. Complainant submits that the domain name <nasadaq.com> is confusingly

similar to its registered trademark NASADAQ.

Complainant submits that Respondent has no rights or legitimate interests in

the domain name, <nasadaq.com>, as Respondent is simply using a mark confusingly

similar to Complainant’s well-known mark in order to drive traffic to his site.

Complainant argues that trading on the fame of another’s trademark cannot be

considered a bona fide offering of services using the domain name.

Complainant also contends that Respondent’s practice of "typosquatting"

by registering and using a common typographical error made by Internet users

who are trying to access Complainant’s web site constitutes bad faith registration

and use under Paragraph 4(b) of the Policy.

B. Respondent

Respondent argues that he is using NASADAQ as an acronym that stands for "Nasty Ass

Sluts and Darlings and Queens." Respondent also contends that another party

had registered the <nasadaq.com> domain name prior to Respondent’s registration

of the name and let it lapse. Respondent states that he registered the domain

when he saw it available on a web site that listed recently lapsed domain names.

He argues that the previous registrant operated an astronomy-themed web site

for more than 2 years that got 20,000 hits a day before it expired in September

2002. Respondent argues that Complainant should have known about the previous

site and should have taken action against that site, or should have registered

the domain name when it expired.

Respondent, citing Corbis Corp. v. Zest Claim, (NAF Case No. FA0107000098441,

September 12, 2001), argues that "where a party registers a lapsed

domain name, and it is not attempting to use the name to compete with the mark

holder or disrupt its business, . . . the trademark holder should be denied

relief."

Respondent asks the Panel to make a finding of reverse domain hijacking because

Complainant sent an email stating that Respondent could be liable for statutory

damages up to $100,000 under the Anti-Cybersquatting Protection Act ("ACPA")

and requesting that Respondent agree to transfer the domain name to Complainant,

but did not mention that an inexpensive arbitration proceeding was available

under the Policy.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer

of a domain name, a complainant must prove the following three elements:

(1) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

(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 second level of the domain name <nasadaq.com> has only one letter

different from Complainant’s NASDAQ trademark. Because the NASDAQ trademark

has two A’s in it, the addition of another A is easily overlooked. At first

glance, "nasadaq" looks nearly identical to NASDAQ. Accordingly, the

Panel finds that the Domain Name is confusingly similar to Complainant’s NASDAQ

trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate

interest in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made

preparations to use the domain name in connection with a bona fide offering

of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the

domain name without intent for commercial gain, to misleadingly divert consumers

or to tarnish the trademark at issue.

Respondent argues that it is legitimately using the domain name as an acronym

for "Nasty Ass Sluts and Darlings and Queens." However, the evidence

presented by Complainant, which was not rebutted by Respondent, shows that this

slogan did not appear on Respondent’s site until after Complainant sent

its Complaint email to Respondent. Prior to Respondent’s receipt of a Complaint

from Complainant, users who entered the Domain Name <nasadaq.com> were

transferred to a site called "babecumshots.com." Thus, it would appear

that Respondent invented this acronym in an attempt to have some sort of legitimate

claim to the domain name.

The credibility of Respondent’s claim to legitimate use of this acronym is

further diminished by the degree of fame the NASDAQ trademark has. It is highly

unlikely that Respondent was unaware of this well-known trademark when he registered

the <nasadaq.com> domain name. Respondent does not argue otherwise. Accordingly,

the evidence tends to show that 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. See Pig Improvement Co. v. Platinum

Net, Inc. (WIPO Case No. D2000-1594)

(finding no legitimate interest where Respondent registered a domain name that

was a common typographical error of Complainant’s web site address).

Respondent argues that his use is legitimate, presenting web page referral

reports that show that "nasadaq.com" is getting a high volume of hits

and that users who visit "nasadaq.com" click through to some of Respondent’s

other web sites, "creampiegirls.com" and "cocksuckerteen.com."

Although Respondent does not include declarations or affidavits explaining how

these statistics were compiled, even if we accept them as true, they tend to

show that Respondent has not made a legitimate use of the domain name.

That is, even though Respondent’s data suggests that the "nasadaq.com"

site is getting over 900,000 hits a week, in the month of December 2002,

only 32 users clicked through to his site "creampiegirls.com" and

only 19 users clicked through to his site "cocksuckerteen.com."

This suggests that the vast majority of the users who reach the site did not

intend to go there to view Respondent’s content.

Accordingly, the Panel finds that Respondent does not have any right or legitimate

interest in respect of the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence

of registration and use of a domain name in bad faith:

(i) circumstances indicating that the 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; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct;

or

(iii) the respondent has registered the domain name primarily for the purpose

of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to

attract, for commercial gain, Internet users to its web site or other online

location, by creating a likelihood of confusion with the complainant’s mark

as to the source, sponsorship, affiliation, or endorsement of its web site or

location or of a product or service on its web site or location.

This list of bad faith factors is not exclusive. Other circumstances can demonstrate

bad faith. See Playboy Int’l v. SAND WebNames – For Sale (WIPO

Case No. D2001-0094, April 3, 2001); General Electric Co. v.

Fisher Zvieli a/k/a Zvieli Fisher, (WIPO

Case No. D2000-0377).

Although "typosquatting" cases such as this one do not fall squarely

within the four enumerated factors, numerous panels have found that registering

a name that is a common typographical error from a well-known trademark or web

site address is bad faith. See, e.g., Playboy Int’l v. SAND WebNames – For

Sale (WIPO Case No. D2001-0094);

General Electric Co. v. Fisher Zvieli a/k/a Zvieli Fisher, (WIPO

Case No. D2000-0377). Respondent is riding the coattails of the fame of

Complainant’s trademark and is generating traffic to his site by misdirecting

people who are searching for Complainant’s web site. As discussed above, Complainant’s

mark is so well known that Respondent was certainly aware when he registered

the Domain Name that he was likely to be misdirecting persons searching for

Complainant’s web site. Accordingly, this Panel finds that Respondent’s use

and registration of the domain name was in bad faith under Paragraph 4(b) of

the Policy.

D. Respondent’s Other Defenses and Request for Finding of Reverse Domain Name

Hijacking.

Respondent raises an argument that Complainant is foreclosed from complaining

about Respondent’s registration and use of the Domain Name because Complainant

failed to complain about another party’s use of the same domain name prior to

Respondent’s registration of the Domain Name. The fact that Complainant did

not proceed against another party who had registered the same domain name has

no bearing on the case at issue. The issue is whether Respondent has

a legitimate interest in and good faith use and registration of the Domain Name.

The previous party’s registration has no bearing on that issue. See Corbis

Corp. v. Zest Claim, supra ("In ordinary cases, the existence of a

prior registration that has lapsed is entirely irrelevant to the questions of

legitimate interests and bad faith.")

Respondent’s citation of language from the Corbis Corp. v. Zest Claim

case, supra, is unpersuasive. That panel suggested that when a party

registers a domain name that has been abandoned by another, it may be an indication

that the previous owner has abandoned any accompanying trademark rights, so

it should make the new registrant more confident that it has registered the

domain name in good faith than if the party was registering a new domain name

that had not previously been registered by another party. The panel even goes

so far to suggest that when a domain name registration has lapsed, it relieves

a prospective registrant of the obligation to do a trademark search before registration.

This Panel does not agree with the Corbis panel’s reasoning and is not

bound to follow it.

Even if this Panel were inclined to accept the reasoning of the Corbis

panel as a general proposition, that case bears several important distinctions

from this one that makes the reasoning inapplicable. First, in Corbis,

it was the trademark owner who had let the domain name go abandoned, rather

than a third party as in this case. Thus, the presumption that the trademark

owner somehow abandons rights in the trademark by allowing the domain name to

expire does not apply in this case when it is not the trademark owner who abandoned

the domain name. Second, and more importantly, the domain name that was at issue

in Corbis was a relatively weak term ("digitalstock.com") and

the respondent was Korean and submitted an affidavit stating that it was unaware

of the complainant’s U.S. trademark rights. Thus, there was a plausible argument

made that the respondent registered the name without any knowledge of the complainant’s

trademark rights. In this case, Respondent has not made an argument that he

did not have knowledge of Complainant’s trademark rights, and considering the

fame of Complainant’s NASDAQ mark, any such argument would be highly implausible.

Finally, in Corbis, the panel found important the fact that the respondent

was not using the domain name to "to compete with the Complainant, misdirect

its customers, or disrupt its business." The same is not true here – Respondent

is clearly using "nasadaq.com" to misdirect Internet users who are

trying to reach Complainant’s web site.

Finally, Respondent asks the Panel to find that Complainant has engaged in

reverse domain name hijacking because Complainant sent an email message to Respondent

stating that Respondent’s failure to transfer the domain name to Complainant

could result in statutory damages of up to $100,000 under the ACPA. The Panel

declines to make such a finding. Complainant’s email letter, although apparently

designed with the intent of convincing Respondent to transfer the Domain Name

to Complainant, was within Complainant’s legal right to send. The letter accurately

stated a possible cause of action that Complainant could have brought in federal

court under the facts alleged in this Complaint. The fact that Complainant ultimately

decided to bring an action under the Policy where damages are not awarded instead

of a federal court action under the ACPA does not demonstrate bad faith reverse

domain name hijacking.

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, <nasadaq.com>,

be transferred to the Complainant.

Michelle Brownlee

Sole Panelist

Dated: January 27, 2003

1. Respondent claimed in his email of January

6, 2003, that he had filed his Response on December 29, 2002. However, Respondent

sent his email to the wrong email address, and, therefore, it was not received

by the Center until Respondent resent it on January 6, 2003.

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• The Nasdaq Stock Market, Inc. v. Act One Internet Solutions — D2003-0103 · nasdasq.com · Transfer · 01 Apr 2003
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