Nasdaq, Inc. v. Susan Grant
Claim Number: FA2008001907188
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Susan Grant (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasdaqtrades.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2020; the Forum received payment on August 4, 2020.
On August 4, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <nasdaqtrades.com> [i]domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nasdaqtrades.com. Also on August 11, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Nasdaq, Inc., is a global financial technology, trading, and information services provider. Complainant has rights in the NASDAQ mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 922,973, registered Oct. 26, 1971).
2. Respondent’s <nasdaqtrades.com>[ii] domain name is confusingly similar to Complainant’s mark because it subsumes the whole of the NASDAQ mark, merely adding the descriptive term “trades” and the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have rights or legitimate interests in the <nasdaqtrades.com> domain name because Respondent is not authorized to use Complainant’s mark and is not commonly known by the domain name.
4. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent usurps Internet traffic for the purposes of phishing and fraud.
5. Respondent registered and uses the <nasdaqtrades.com> domain name in bad faith. Respondent redirects Internet traffic for commercial gain through the offering of unregulated financial assets. Additionally, Respondent’s attempt to pass off as Complainant in furtherance of fraud demonstrates bad faith.
6. Finally, Respondent was aware of Complainant’s rights in the NASDAQ mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NASDAQ mark. Respondent’s domain name is confusingly similar to Complainant’s NASDAQ mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nasdaqtrades.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the NASDAQ mark based upon registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the NASDAQ mark with the USPTO (e.g., Reg. No. 922,973, registered Oct. 26, 1971). Thus, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nasdaqtrades.com> domain name is confusingly similar to Complainant’s NASDAQ mark because it subsumes the whole of the NASDAQ mark, merely adding the descriptive term “trades” and the “.com” gTLD. Addition of generic or descriptive terms and a gTLD is generally insufficient to overcome the confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Complainant correctly points out that the term “trades” is descriptive in that it directly reflects the business of Complainant. The Panel holds that the <nasdaqtrades.com> domain name is confusingly similar to Complainant’s NASDAQ mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <nasdaqtrades.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <nasdaqtrades.com> domain name because Respondent is not authorized to use Complainant’s mark and is not commonly known by the domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the <nasdaqtrades.com> domain name as “Susan Grant” and no information in the record indicates that Complainant authorized Respondent to use the mark. Therefore, the panel may find that Respondent has no rights or legitimate interests in the <nasdaqtrades.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent doesn’t use the <nasdaqtrades.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead disrupts Internet traffic for the purposes of phishing and fraud. Use of a confusingly similar domain name to redirect Internet traffic is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Similarly, use of a domain name incorporating the mark of another for fraudulent purposes is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant has shown that Respondent uses the <nasdaqtrades.com> domain name to mislead and divert consumers of trading services to Respondent’s website where Respondent solicits personal information and potentially fraudulent monetary deposits. Complainant provides screenshots of Respondent’s website which show Respondent’s potentially fraudulent behavior and misleading branding. The Panel agrees that Respondent does not use the <nasdaqtrades.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <nasdaqtrades.com> domain name in bad faith because Respondent redirects Internet traffic for commercial gain through the offering of unregulated financial assets. Competition with a complainant by using the complainant’s mark may evidence bad faith disruption of business under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant provides a screenshot of Respondent’s website and has provided evidence of Respondent’s use of the website to solicit monetary deposits for the purposes of cryptocurrency trading. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Additionally, Complainant argues that Respondent’s attempt to pass off as Complainant in furtherance of fraud demonstrates bad faith. Using a complainant’s mark to suggest an affiliation with a complainant in connection with phishing and/or fraud evidences bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to frequently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant also provides a screenshot of Respondent’s webpage and notes that it prompts users to provide personal information to Respondent. Thus, the Panel holds that Respondent uses the <nasdaqtrades.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent was aware of Complainant’s rights in the NASDAQ mark. Evidence that a respondent had actual knowledge of a complainant’s mark at the time of registration supports a finding of bad faith under Policy ¶ 4(a)(iii) and may be shown by the totality of circumstances surrounding registration and use. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent must have been aware of Complainant’s mark and business since Complainant operates the second largest stock exchange in the world and Respondent uses Complainant’s signature color scheme and logo on its webpage. The Panel agrees and finds that Respondent had actual knowledge of the NASDAQ mark, the Panel may find bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nasdaqtrades.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 7, 2020
[i] The Panel may note that the disputed domain name was registered on May 21, 2020.
[ii] The <nasdaqtrades.com> domain name was registered on May 21, 2020.
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