DECISION

 

National Association of Securities Dealers, Inc. v. COMn.COM

Claim Number: FA0206000114602

 

PARTIES

Complainant is National Association of Securities Dealers, Inc., Washington, DC, USA (“Complainant”) represented by Carla B. Oakley, of Brobeck, Phleger & Harison LLP.  Respondent is COMn.COM, Suseonggu, Taegu, KOREA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nasd.org>, registered with NETPIA.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2002; the Forum received a hard copy of the Complaint on June 12, 2002.

 

On June 19, 2002, NETPIA.com confirmed by e-mail to the Forum that the domain name <nasd.org> is registered with NETPIA.com and that Respondent is the current registrant of the name.  NETPIA.com has verified that Respondent is bound by the NETPIA.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 15, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@nasd.org by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 29, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.”  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

 

1.      Respondent’s <nasd.org> domain name is identical to Complainant’s NASD registered mark.

2.      Respondent has no rights or legitimate interests in the <nasd.org> domain name.

3.      Respondent registered and used the <nasd.org> domain name in bad faith.

 

B.     Respondent wrote an email note but did not submit a Response that complied with the rules in this proceeding.  Further, Respondent’s email note did not raise substantive issues and contained an admission that the domain name should be transferred.  Therefore, the case is being treated as a default pursuant to the Rules.

 

FINDINGS

Complainant holds numerous registrations with the U.S. Patent and Trademark Office (“USPTO”) for its NASD mark, including: Reg. No. 1,555,272 registered on September 5, 1989; Reg. No. 1,984,279 registered on July 2, 1996; and, Reg. No. 2,230,734 registered on March 9, 1999 for a stylized version of the NASD mark.

 

Complainant regulates the securities industry and oversees virtually all U.S. stockbrokers and brokerage firms. Complainant was established under the authority granted by the 1938 Maloney Act Amendments to the Securities Exchange Act of 1934. Complainant is the self-regualtory organization of the securities industry responsible for the regulation of The Nasdaq Stock Market, Inc.

 

Complainant is recognized internationally as the largest and foremost securities industry self-regulatory organization in the world.

 

For more than sixty years, Complainant has continuously used the NASD family of marks in relation to its regulation of the securities industry. Complainant has spent millions of dollars to promote its various products and services offered under its NASD mark.

 

Because of the foregoing evidence, Complainant’s NASD mark has become famous and distinct.

 

Respondent registered the disputed domain name on November 13, 2002. Inititally, Respondent did not operate any business or offer any goods or servcies under the NASD mark. However, after Complainant’s counsel sent a letter to Respondent informing it of Complainant’s rights in the NASD mark, Respondent directed Internet users to an investment-oriented website located at <investorsuniverse.com>. Following Complainant’s May 13, 2002, letter, Respondent promptly redirected Internet traffic to the <nasd.org> domain name and justified its use of Complainant’s NASD mark based on its “Network Association of Sale Dealers” website.

 

On July 15, 2002, Respondent sent an electronic message to the Forum, which states:

 

Anyway,,, [sic] I know about NASD and the Trademark and History well now. I would like to present this domain nasd.org to Complainant now. Please transfer this domain to Complainant.

 

Respondent has been found to be in default because Respondent raised no substantive arguments in this Submission in accordance with UDRP Rule 5(b)(i)[1] and because Respondent concedes in it that the domain name should be transferred to Complainant. The Panel finds that this submission negates the need to seek additional documentation or translations under Rule 11[2].

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

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.

 

Identical to and/or Confusingly Similar

Complainant has established rights in the NASD mark through registration with the USPTO and continuous use of the mark in regards to securities regulation since the 1938 Maloney Act Amendments.

 

The domain name registered by Respondent, <nasd.org>, is identical to Complainant’s registered NASD mark. Respondent’s domain name incorporates Complainant’s entire mark, mirroring it in spelling and form. The addition of the generic top-level domain name “.org” is inconsequential when conducting an “identical” inquiry under Policy ¶ 4(a)(i); thus, Respondent’s domain name is identical to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights to or Legitimate Interests

Respondent did not submit a Response that was in compliance with the Rules in this proceeding. Respondent’s email note raised no substantive issues.  And, Respondent’s email note contained an admission that the domain name in issue should be transferred to the Complainant.  Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <nasd.org> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

 

Furthermore, because Respondent failed to submit a Response, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

 

The facts permit the inference that Respondent registered the infringing domain name in order to divert Complainant’s Internet users and potential customers to Respondent’s websites, which contain numerous advertisements from which Respondent undoubtedly benefits monetarily.  Respondent profits from the perceived affiliation its websites have with Complainant’s famous NASD mark. Respondent’s opportunistic registration of the subject domain name is not in connection with a bona fide offering of goods or services under Policy ¶ 4(a)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(a)(ii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

 

Complainant’s investigation reveals that Respondent and its authorized representative, Hanjin Ko, have registered or are affiliated with at least 189 domain names. Among these 189 domain names are numerous second level domains that hold some significant meaning and may be monetarily profitable, such as: <tvchatting.com>, <4drug.com>, <searchxpress.com>, <dishonor.com>, <desire.com>, <stress.net>, <oppressor.com> and <objection.net>, among others. Complainant’s record further establishes that 160 of Respondent’s domain names are being used in a fashion that is similar to use made of the contested <nasd.org> domain name, namely, the domain names link to a commercial retailer at <forwards.com>. Respondent’s prolific registration of numerous unrelated domain names constitutes circumstantial evidence that Respondent intends to sell or capitalize on an association with NASD; thus, Respondent’s use of Complainant’s domain name does not demonstrate rights or legitimate interests in the domain name. See Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).

 

The subject domain name does not consist of Respondent’s legal or common name pursuant to Policy ¶ 4(c)(ii). Complainant states that it has not licensed or otherwise permitted Respondent to use the NASD mark, or any domain name incorporating the NASD mark. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The circumstances surrounding Respondent’s registration of the infringing domain name suggest that Respondent was aware of Complainant’s exclusive rights in its NASD mark. According to the WHOIS records, Registrant’s authorized representative, Hanjin Ko, serves as the administrative, technical and billing contact for three domain names, <hdu-edu-nasd-nyse.com>, <hdu-nasd.com> and <hdu-nasd.org>. These three domain names resolve to the same website, a location that apparently offers training for NASD/NYSE licensing exams. This evidence is beyond mere coincidence, and signifies Respondent’s knowledge of Complainant’s rights in the NASD mark. Respondent’s registration of the NASD mark in a domain name, despite knowledge of Complainant’s preexisting rights in the mark, represents bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

 

Complainant has provided uncontested evidence that Respondent has exhibited a pattern of registering numerous potentially profitable domain names. Aforementioned circumstances permit the inference that Respondent registered the subject domain name for the purpose of selling, renting or otherwise transferring the registration; thus, Respondent’s actions evidence bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

Furthermore, Respondent has expressed a willingness to transfer the domain name to Complainant. Respondent’s actions, when considered in conjunction with its infringing use of <nasd.org>, represent conflicting representations and bad faith under Policy ¶ 4(a)(iii). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its bad faith registration and use).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.  Accordingly, it is Ordered that the <nasd.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: August 12, 2002.

 

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