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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Nasdaq OMX Group, Inc. v. Chen Fang Fang and N/A, Haclav Vavel

Case No. D2009-0694

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 of the United States of America.

The Respondents are Chen Fang Fang, Shanghai, People`s Republic of China; and N/A, Haclav Vavel, Fot`ata Island, Tonga.

2. The Domain Name And Registrar

The disputed domain name <nazdaq.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2009. On May 28, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 8, 2009 (after three additional reminders), Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that:

(a) the disputed domain name is registered with it;

(b) as at the date of the Registrar`s communication, the disputed domain name was registered with the Respondent, N/A, Haclav Vavel, and providing the contact details;

(c) the language of the domain name registration agreement was English.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant, having noted that the identity of the registrant had changed between the date the Complaint was filed and the date the Registrar responded to the request for Registrar verification, filed the amendments to the Complaint on June 15, 2009, June 18, 2009 and June 22, 2009 respectively.

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 June 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on July 15, 2009.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 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.

4. Factual Background

The Complainant was formerly known as The Nasdaq Stock Market Inc. It has been operating the "Nasdaq" Stock Market continuously since 1968. It currently owns and operates exchanges in North America and Europe. Its exchanges list some 3,900 companies with USD5.5 trillion in total market value. The Complainant states that it has spent hundreds of millions of dollars promoting its NASDAQ mark in the United States of America and around the world. Its websites at "www.nasdaq.com", "www.nasdaqomx.com" and "www.nasdaqomxtrade.com" receive tens of millions of "hits" each day.

The Complainant has registered trademarks for NASDAQ in the United States of America and, it states, 40 other jurisdictions. Details of the United States registrations are provided in the Complaint.

Very little is known about either Respondent.

According to the whois details, the disputed domain name was registered in 2001. It would appear to have been transferred to N/A Haclav Vavel around the time the dispute commenced.

Annex G to the Complaint includes print outs from the website which the disputed domain name resolved to when the Complaint was prepared. There does not appear to be any change in the website as operated at the time this decision is being prepared.

5. Discussion and Findings

Strictly speaking, the transfer of the domain name from the first Respondent to the second Respondent having been effected, the second Respondent alone is probably the proper Respondent. The Panel notes, however, that the second Respondent`s name bears more than a passing resemblance to the name of the famous Czech author and former President, albeit the WhoIs record prefaces the name with "N/A". Although no Response has been received, the Center has ensured out of an abundance of caution that copies of the Complaint have been served on both Respondents at the addresses provided in the WhoIs record contained, respectively, in Annex A of the Complaint as filed and as provided by the Registrar in the Registrar`s confirmation. By clause 2(1) of the registration agreement (a copy of which is included in Annex B of the Complaint), the Respondent is required to provide, maintain and update, current, complete and accurate information in the Whois record (emphasis supplied). The Panel finds therefore that the Complaint has been duly served on both Respondents and they have both been afforded a fair opportunity within the Policy and the Rules to present their case.

In these circumstances, paragraph 5(e) of the Rules requires the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the complaint. This is not a simple rubber-stamping, however, as paragraph 15(a) of the Rules requires the panel to decide a complaint "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.".

Accordingly, under paragraph 4(a) of the Policy, the complainant has the burden of proof in respect of the following three elements:

(i) The 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 domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

There are two parts to this inquiry: The Complainant must demonstrate that it has trademark rights in a sign and, if so, the disputed domain name must be shown to be identical or confusingly similar to those trademark rights.

The Complainant has clearly demonstrated ownership of US Trademarks, Nos. 922973 and 1259277, both in the Principal Register and both for NASDAQ. While the Complaint states that there are registrations in about 40 other countries, the Panel cannot really act on the bare statement.

The Complainant also relies on the extensive fame of and its reputation in the trademark, NASDAQ which derives from the extremely large expenditure in advertising and promotion made by the Complainant, the longevity of the use – dating from 1968, the geographical scope of the use and, for example the tens of millions of hits each day on its website. Annex F to the Complaint contains a decision of the Trademark Trial and Appeal Board in which that tribunal found the Complainant`s trademark to be "famous", at least in the United States of America.

Accordingly, the Panel finds that the Complainant has trademark rights in NASDAQ both as a registered trademark and very strong common law rights.

The disputed domain name is obviously confusingly similar to these proved rights. It differs from the Complainant`s trademark only by the substitution of the letter "z" for "s" and the addition of the functional gTLD, ".com". Apart from the addition of the gTLD, which can be disregarded, the disputed domain name sounds exactly the same as the Complainant`s trademark and looks virtually identical. In addition, the disputed domain name is even closer to one of the Complainant`s domain names, <nasdaq.com>, which receives millions of hits each day.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant`s proved trademark rights.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

(i) "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue."

These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.

In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.

The Complainant states that the Respondents do not have any relationship or authorisation with it. The Complainant further points out that the disputed domain name bears no relationship to either of the Respondents` names.

As noted above, the disputed domain name does resolve to a website. The website includes an image of something closely resembling an electronic stock exchange listing board. It also includes a range of links under headings such as Nasdaq, Stock Exchange, Investment Stock Market, Technical Analysis, Market, Online Stock Market Trading and other, similar matters. Some of these contain links to the Complainant`s services, but many are to investment related services and goods which appear to be competitive with the Complainant`s business.

While it appears that the Respondents are using the disputed domain name in connection with an offering of goods and services, this offering is not bona fide within the terms of the Policy.

The website to which the disputed domain name resolves clearly conveys an association with stock exchanges and related goods and services. This arises particularly from the very prominent image of something closely resembling a stock exchange board and is reinforced by the links already described. Further, the Complainant`s trademark is an invented or coined term which has significance only as a trademark indicating an association with the Complainant`s goods and services. It is not, and nor is the disputed domain name, descriptive of such goods and services. As noted above, the Complainant`s trademark is also very famous. Accordingly, the inference is inescapable that the disputed domain name has been adopted to trade on the fame and reputation of the Complainant`s trademark. Such conduct does not qualify as "bona fide" under the Policy. See e.g. Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847; Advance Magazine Publishers Inc v. Lisa Whaley, WIPO Case No. D2001-0248 and David Lindsay, International Domain Name Law, (Hart Publishing, Oxford, 2007) 300 – 305.

Neither Respondent has sought to rebut the Complainant`s allegations or these inferences.

Accordingly, the Panel finds that neither Respondent has rights or legitimate interests in the disputed domain name for the purposes of the Policy.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

"(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

As the terms of the paragraph make clear, these are examples only and not an exhaustive enumeration of the circumstances in which registration and use in bad faith are found.

Having regard to the distinctive nature of the Complainant`s trademark as an invented or coined word and its fame arising from use over a very long timeframe and geographic scope, the Panel considers it highly unlikely that the first Respondent registered the domain name in 2001 without knowledge of the Complainant and its activities under the trademark; similarly in the case of the Second Respondent when the disputed domain name was transferred to him or her in or around June this year. Neither Respondent has sought to contend otherwise.

The first Respondent, when faced with a letter of demand earlier this year, sought payment of USD 750 which the Respondent noted to be "much cheaper than a UDRP", suggesting a degree of familiarity with the Policy and the system for dispute resolution it implements.

Having regard to these matters and the reasons set out in Section 5. B. above in relation to why the website which the domain name resolves to does not qualify as bona fide use under the Policy, the Panel finds that the disputed domain name has been both registered and used in bad faith.

6. 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 <nazdaq.com> be transferred to the Complainant.

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Warwick A. Rothnie
Sole Panelist

Dated: August 6, 2009