Financial Industry
Regulatory Authority, Inc. v. Sussman & Frankel, LLP
Claim Number: FA0809001224754
PARTIES
Complainant is Financial Industry Regulatory Authority,
Inc. (“Complainant”), represented by Diane Mason, of Morgan Lewis &
Bockius LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <finra-nasd.com>, <finra-nasd.net>,
<finra-nasd.org>, <finra-nasd.info>, <nasd-finra.com>, <nasd-finra.net> and <nasd-finra.org>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 15, 2008; the
National Arbitration Forum received a hard copy of the Complaint on September 16, 2008.
On September 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <finra-nasd.com>, <finra-nasd.net>,
<finra-nasd.org>, <finra-nasd.info>, <nasd-finra.com>, <nasd-finra.net> and <nasd-finra.org> domain
names are registered with Godaddy.com, Inc.
and that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 September 19, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of October 9, 2008 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@finra-nasd.com, postmaster@finra-nasd.net, postmaster@finra-nasd.org, postmaster@finra-nasd.info, postmaster@nasd-finra.com, postmaster@nasd-finra.net and postmaster@nasd-finra.org by e-mail.
A timely Response was received and determined to be complete on September 24, 2008.
On October 6, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant’s Contentions
A. Identical
and/or Confusingly Similar:
Respondent’s domain names, <finra-nasd.com>, <finra-nasd.net>, <finra-nasd.org>,
<finra-nasd.info>, <nasd-finra.com>, <nasd-finra.net> and <nasd-finra.org>, are confusingly similar to
Complainant’s marks NASD and FINRA because (1) the domain names incorporate Complainant’s
marks in their entirety; and (2) the domain names are merely combinations of
Complainant’s marks NASD and FINRA.
Complainant FINRA owns the worldwide exclusive rights to the well-known NASD house mark, and the well-known FINRA house mark and corporate name, as well as to numerous trademark registrations and pending applications for registration of marks that are comprised of or include the term NASD or FINRA for use in connection with various goods and services. Complainant used to be known as the National Association of Securities Dealers, Inc., or NASD, before changing its name, effective July 30, 2007, to Financial Industry Regulatory Authority, Inc., or FINRA. Complainant has used the mark NASD since 1939, and continues to use the mark today. Complainant has used the mark FINRA since July 2007.
FINRA is a not-for-profit Delaware
corporation and a self-regulatory organization (“SRO”) registered with the
Securities Exchange Commission as a national securities association pursuant to
the Maloney Act of 1938. As an SRO,
FINRA is a part of the Securities Exchange Act’s highly interrelated and
comprehensive mechanism for regulating the securities markets. Today, FINRA is
the largest non-governmental regulator for all securities firms doing business in the
FINRA is recognized worldwide as
the largest and foremost securities industry self-regulatory organization in
the world. FINRA has approximately 3000
employees, has management offices in
Complainant’s FINRA mark and name also are well-known
due to Complainant’s prominence and unique position in the securities industry,
and due to its substantial efforts to promote the FINRA mark and name. NASD’s adoption of FINRA in July 2007 was
widely covered in the news media, including internationally distributed
publications such as The New York Times,
The Wall Street Journal and The Washington Post.
The NASD and FINRA marks are well-known, and Complainant owns numerous trademark applications and registrations for these marks worldwide. Complainant has used the NASD mark since 1939 and the FINRA mark since July 2007, and its adoption and use of FINRA was widely publicized by Complainant’s extensive advertising as well as coverage by internationally distributed media.
Respondent’s domain names are confusingly similar to trademarks and service marks in which Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
For nearly 70 years, Complainant was widely known as NASD, the acronym for its full name, National Association of Securities Dealers, Inc. Complainant owns and uses the domain names <nasd.com>, <nasd.net> and <nasd.org>. These domain names revert to Complainant’s current web site at <finra.org>. In July of 2007, Complainant changed its name and is now known as FINRA, the acronym for its full name Financial Industry Regulatory Authority, Inc. Notwithstanding the name change to FINRA, Complainant FINRA continues to use the NASD mark and NASD remains exclusively associated with Complainant.
FINRA is Complainant’s housemark. Complainant also owns and uses the domain names <finra.net> and <finra.org>, which it uses on its website, all of its regulatory, informational and educational materials, and on a wide variety of other items, such as tote bags, pens, caps, umbrellas and so on.
The NASD and FINRA marks are well-known, and Complainant owns numerous trademark applications and registrations for these marks worldwide. Complainant has used the NASD mark since 1939 and the FINRA mark since July 2007, and its adoption and use of FINRA was widely publicized by Complainant’s extensive advertising as well as coverage by internationally distributed media.
B. Rights
and Legitimate Interests:
Respondent should be considered as having no rights or
legitimate interests in respect of the domain names that are the subject of the
Complaint. ICANN Rule
3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
Respondent’s use of the domain names or a name corresponding to the
domain names is not in connection with a bona fide offering of goods or
services.
Respondent is using the domain names for parked pages. The parked pages
all have a series of hyperlinks that redirect Internet users to various third-parties
that offer products that may or may not relate to the services and products
offered under Complainant’s marks. Another
panel has previously found that such use is neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers,
who are looking for products relating to the famous SEIKO mark, to a website
unrelated to the mark is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy 4(c)(iii).”).
Respondent has not been commonly known by the domain names. The WHOIS domain name registration
information lists the registrant of record as “Sussman & Frankel LLP,”
which does not relate to the disputed domain names. There is and can be no evidence that this law
firm is commonly known by either FINRA or NASD, or any combination of these
marks, as they are owned exclusively by Complainant. Thus, Respondent lacks
rights and legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii).
Respondent is not making a legitimate noncommercial or fair use of the
domain names. Respondent’s use of the
domain names exhibit intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
Respondent’s domain names all resolve to parked pages containing a series
of hyperlinks that redirect Internet users to various third-parties that offer products and services presumably
related to the products and services offered under Complainant’s marks. This is neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
Furthermore, Internet users that come across Respondent’s parked pages may
believe that Complainant sponsors or is in some way affiliated with the
third-party companies. This could
tarnish Complainant’s marks and reputation if the products and services offered
are not of the same quality as services and products offered by Complainant.
C. Registration
and Use in Bad Faith:
The domain names should be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
As discussed above, Respondent’s domain names all resolve to parked
pages containing a series of hyperlinks that redirect Internet users to various
third-parties that offer products and services presumably related to the
products and services offered under Complainant’s marks. Respondent is engaging in this
behavior to attract Internet users to the competing resolving websites for its
commercial gain from the click-through fees.
See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent’s prior use of the domain name is evidence of bad faith
pursuant to Policy ¶4(b)(iv) because Respondent presumably commercially
benefited from the misleading domain name by receiving ‘click-through-fees.’”)
Furthermore, Internet users who come across Respondent’s
parked pages may believe that Complainant sponsors or is in someway affiliated
with the third-party companies listed on the parked pages. Thus, through use of the disputed domain
names, Respondent has intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s web sites or other online locations, by creating
a likelihood of confusion with the Complainant’s marks as to the source,
sponsorship, affiliation, or endorsement of Respondent’s websites or locations
or of a product or service on Respondent’s websites or locations. Such use of a mark is evidence of bad faith.
Complainant FINRA has given Respondent ample
opportunity to transfer the domain names.
On April 1, 2008 and May 21, 2008, Complainant FINRA sent cease-and-desist
letters to Respondent regarding his unauthorized and unlawful use of the domain
names. Respondent never responded to Complainant’s letters. FINRA’s counsel Diane Mason called Neil
Sussman of Sussman & Frankel to request that Respondent transfer the domain
names. At Mr. Sussman’s request, this
was followed by a letter from counsel for FINRA on September 5, 2008, which set
forth FINRA’s position that Respondent’s use of the identified domain names
infringed FINRA’s trademark rights. In
response to the letter, Neil Sussman called FINRA’s counsel, Diane Mason, on
September 8, 2008 and stated that he was a securities attorney and had a
question before responding to the September 5 letter. He asked if FINRA was interested in
purchasing the domain names. When Diane
Mason informed him that FINRA was not interested in purchasing the domain
names, Mr. Sussman ended the conversation.
As Neil Sussman of Respondent Sussman & Frankel is
reportedly a securities lawyer, Respondent was well aware of Complainant’s
rights in its NASD and FINRA marks before acquiring these domain names. According to WHOIS records, the names were
acquired in March and May of 2008, well after Complainant announced and started
using the FINRA mark and name, and decades after Complainant started using its
well-known NASD mark.
I. Respondent’s Contentions
A. Identical
and/or Confusingly Similar:
Complainant bears the burden of proving that the
domain names in issue are identical and/or confusingly similar. Complainant
makes a number of admissions in its Complaint conceding that the registered
names are not identical and/or confusingly similar --- or, at a minimum, create
factual issues requiring substantive discovery. First, Complainant concedes that
it no longer is known by-”NASD” (“Complainant changes its name and is now known
as FINRA”).
Second, Complainant concedes that its use of the name “NASD”
is merely to “revert to Complainant’s current web site at www.finra.org.”
Indeed, Complainant no longer maintains a web site using “NASD” in any form. It
merely is a portal to <finra.org>.
Third, while Complainant asserts that it “continues to
use the NASD mark,” no evidence is introduced to support this assertion that it
continues to be in use other than its winding up of use in favor of FINRA
Finally, it is evident that Complainant does not seek
the transfer of the registered domain names because they are identical and/or
confusingly similar; rather, Complainant seeks the transfer because it desires
to control and protect an expansive portal to its one domain site.
Since, however, the registered domain names in dispute
are much more expansive and detailed than the portal which Complainant seeks to
maintain factually they do not constitute an identical and/or confusingly
similar use. Nor does Respondent seek to mislead the public into believing that
it is FINRA and/or affiliated with FINRA.
B. Rights
and Legitimate Interests:
Complainant bears the burden of proving that Respondent
has no rights or legitimate interests in respect to the disputed domain names.
A presumption exists that Respondent has the legal right and legitimate
interest in the disputed domain names reflected by the fact that these domain
names were unregistered and within the public domain for years after FINRA was
formed and FINRA never made any effort to register them.
Respondent’s legal practice centers around its
representation of clients in arbitrations conducted under the auspices of
FINRA. During the past 20 years, respondent has appeared in over 500
arbitrations before FINRA and/or its predecessors. The registered domain names
are to be used in assisting potential clients of Sussman & Frankel, LLP to
learn that the firm arbitrates cases before FINRA.
Respondent’s use of the registered domain names is not
intended to compete with Complainant or to confuse the public from believing
that Sussman & Frankel, LLP is somehow affiliated with FINRA. Rather, the
use is to appropriately inform the public of the availability of counsel in
matters which are required -- through securities industry arbitration
agreements -- to be filed and heard solely before FINRA. Respondent thus has
rights and/or legitimate interests in the disputed domain names.
C. Registration
and Use in Bad Faith:
Complainant alleges that Respondent registered the
domain names in an effort to cybersquat and/or profit from their registration
to the detriment of FINRA. In so arguing, Complainant states that Respondent
requested payment for the names. Complainant’s argument is a distortion of the
truth and reflects the lack of trustworthiness in its arguments.
The Complaint alleges that “On April 1, 2008, and May
21, 2008, Complainant FINRA sent cease and desist letters to Respondent
regarding his (sic) unauthorized use of the domain names.” Complainant further alleges that “on August
28, 2008, FINRA’s counsel Diane Mason called Neil Sussman of Sussman &
Frankel to request that Respondent transfer the domain names. Complainant then
adds that “Neil Sussman called FINRA’s counsel, Diane Mason, on September 8,
2008 and stated that he was securities attorney and . . . asked if FINRA was
interested in purchasing the domain names.” From the foregoing, Complainant suggests that
the purpose of Respondent registering the domain names was to profit from them
through their sale to FINRA.
The events that occurred reveal that Complainant’s
deceptive argument is patently false. As Complainant concedes, discussions
concerning Respondent’s use of the subject domain names occurred over a five
month period. Respondent’s registration of the domain names was to use them in
informing the public of their legal services available for arbitrations before
FINRA. The concessions within Complainant’s
papers support this. Had Respondent’s motives been in registering the domain names
in order to sell them to Complainant, logically Respondent would not have
interacted with Complainant over a five month period without making any effort
to sell the domain names. Only after repeated threats of a lawsuit did the Respondent
seek to recover its costs in legitimately registering the disputed domain
names. These actions do not support Complainant’s argument of bad faith.
Complainant’s making of this argument further reflects
it’s manipulative, and therefore, untrustworthy disposition. The Complaint
clearly reflects that Respondent disputed Complainant’s right to the domain
names. The August 28, 2008 call in which Respondent disputed Complainant’s
claim and requested legal support for it position confirms this, which Complainant
attempted to do in its September 5, 2008 letter. Only after repeated threats of a lawsuit did
the topic of Complainant purchasing the domain names to compensate Respondent
for its costs in registering the names arise. This conversation was in the form
of a settlement negotiation in an effort to avoid a lawsuit and compromise
disputed claims. Under the Federal Rules of Evidence, Rule 4 .8, offers to
compromise are inadmissible to prove liability for or invalidity of the claim.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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.
FINDINGS
I find the issues on this element in favor of
Complainant.
Complainant provides evidence of the
registration of its NASD mark with the United States Patent and Trademark
Office (“USPTO”) on September 5, 1989 (Reg. No. 1,555,272). The Panel finds Complainant’s registration of
its NASD mark with the USPTO sufficiently establishes its rights in the mark
pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant has applied for, but not yet
obtained, a federal registration for its FINRA mark. The Panel, however, finds registration of a
mark is not necessary for the purposes of Policy ¶ 4(a)(i), so long as
Complainant can establish common law rights in its mark. See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant’s trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May
18, 2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”).
Complainant states it changed its company
name from NASD to FINRA in July 2007, although it continues to use its NASD
name for some purposes. Complainant
alleges it has used its FINRA mark to offer its services continuously since
July 2007 when its adoption of its FINRA mark was widely published and
advertised in the news media. The Panel
finds Respondent has produced sufficient evidence it has acquired common law
rights in its FINRA mark pursuant to Policy ¶ 4(a)(i). See
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established); see
also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
Mar. 13, 2003) (holding that the complainant established rights in the
descriptive RESTORATION GLASS mark through proof of secondary meaning
associated with the mark).
Complainant contends Respondent’s disputed
domain names are confusingly similar to Complainant’s NASD and FINRA marks
because each combines the two marks with the additions of a hyphen and a
generic top-level domain. The Panel finds
these alterations do not sufficiently distinguish between Respondent’s disputed
domain names and Complainant’s marks. Doubling
the marks, as Respondent did, does not change the consumer recognition of the
marks. This is especially true when the
marks belong to the same people or companies.
In that situation the association and recognition of the marks is even
more apparent. So it is here. Respondent’s avowed purpose is to use well
known recognition of Complainant’s marks in association with each other in
order to solicit business in the securities area by letting potential clients
know that Respondent arbitrates cases before those well recognized
organizations. Thus, Respondent, by its
conduct, acknowledges that the doubling of Complainant’s marks does not change
the consumer recognition of Complainant’s marks.
There is a significant likelihood of
confusion as to the origin and sponsorship of the site and consumers are likely
to be confused into believing FINRA and/or NASD are the sponsor. Respondent is not FINRA and not NASD and
can’t use those marks to develop its securities business. Thus the Panel finds they are confusingly
similar pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); 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).
Respondent argues that Complainant has
abandoned the use of the NASD acronym because of merging NASD with FINRA. Respondent further states that NASD is not
being used as a website because it reverts to Complainant’s website,
FINRA.org. The Panel finds that this
conduct does not constitute abandonment of the acronym NASD for the reason that
just because Complainant acquires new trademarks does not mean it abandoned old
marks and the fact that Complainant did not use NASD as a website is
irrelevant. What is relevant is that
NASD is still being used by Complainant.
In addition to Complainant using NASD as a mark, NASD has filed an
application for additional registrations in new classes and has filed two new
specimens showing use.
I find the issues on this element in favor of
Complainant.
The Panel finds that Complainant must first
make a prima facie case that Respondent lacks rights and legitimate interests in
the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts
to Respondent to show it does have rights or legitimate interests. See
Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb.
Forum Aug. 18, 2006) (holding that the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the
respondent to show that it does have rights or legitimate interests in a domain
name); see also AOL LLC v. Gerberg,
FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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
interests in the subject domain names.”).
Complainant states Respondent is not commonly
known by the disputed domain names. The
WHOIS information lists Respondent as “Sussman & Frankel, LLP,” and
Complainant has not authorized Respondent to use its NASD or FINRA marks. Thus, the Panel finds Respondent is not
commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See
Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the 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 the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Complainant contends Respondent is using the
disputed domain names to resolve to websites displaying links to third-party
websites, some of which compete with Complainant’s business. The Panel finds Respondent’s uses of the
disputed domain names are not uses in connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or legitimate noncommercial or fair uses pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to
market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb.
Forum Dec. 5, 2003) (finding that the respondent was not using the domain names
for a bona fide offering of goods or services nor a legitimate noncommercial or
fair use because the respondent used the names to divert Internet users to a
website that offered services that competed with those offered by the
complainant under its marks).
Furthermore, all of the domain names that
Respondent has improperly registered are “parked” sites. Decisions interpreting the Uniform Domain Name
Dispute Resolution Policy have found that use of a disputed domain name for a
parked website is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial use
pursuant to Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Extraordinary
Things LLC, FA 11 17826 (Nat. Arb. Forum Jan. 23, 2008); see also Persohn v. Lim, FA 874447 (Nat.
Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by redirecting Internet users to a commercial search engine website with
links to multiple websites that may be of interest to the complainant's
customers and presumably earning "click-through fees" in the
process).
I find the issues on this element in favor of
Complainant.
Respondent’s disputed domain names resolve to
websites displaying links to competing third-party websites. The Panel finds Respondent’s use of the
disputed domain names in this manner is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum Nov. 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 ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Moreover, Complainant contends that
Respondent’s registration of multiple domain names incorporating FINRA's marks
is evidence that the domain names were registered and are used in bad faith. See Yahoo! Inc. v. Deiana, FA 339579
(Nat. Arb. Forum Nov. 22, 2004). Internet users who come across Respondent’s
parked pages may believe that FINRA sponsors or is in someway affiliated with
the third-party companies whose products and services are offered via
hyperlink.
The Panel finds Respondent is attempting to
profit from the goodwill Complainant has established in its FINRA and NASD
marks, as well as to cause Internet users’ confusion as to Complainant’s
affiliation with the disputed domain names.
The Panel finds these actions are evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent’s use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site); see also Luck’s Music Library v.
Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding
that the respondent engaged in bad faith use and registration by using domain
names that were identical or confusingly similar to the complainant’s mark to
redirect users to a website that offered services similar to those offered by
the complainant).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <finra-nasd.com>, <finra-nasd.net>,
<finra-nasd.org>, <finra-nasd.info>, <nasd-finra.com>, <nasd-finra.net> and <nasd-finra.org> domain
names be TRANSFERRED from Respondent to Complainant.
Honorable Timothy D. O’Leary, Panelist
Retired Judge
Dated: October 27, 2008
National
Arbitration Forum
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