NYSE Group, Inc. v. Louis Alverio
Claim Number: FA0908001280755
Complainant is NYSE Group, Inc. (“Complainant”), represented by Louis
M. Goldberg, of NYSE Euronext - Office of the General
The domain name at issue is <nyseconnect.com>, registered with Network Solutions, 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 National Arbitration Forum electronically on August 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2009.
On August 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2009 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <nyseconnect.com> domain name is confusingly similar to Complainant’s NYSE mark.
2. Respondent does not have any rights or legitimate interests in the <nyseconnect.com> domain name.
3. Respondent registered and used the <nyseconnect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NYSE Group,
Inc., operates a national and international market for the trading of
securities, the New York Stock Exchange.
Complainant promotes its market services and products under the NYSE
mark, which Complainant has used continuously in commerce since 1863. Complainant registered the NYSE mark with the
United States Patent and Trademark Office (“USPTO”) on
Respondent, Louis Alverio,
registered the <nyseconnect.com>
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
The Panel finds that Complainant has
established sufficient rights in the NYSE mark through registration of the mark
with the USPTO (Reg. No. 909,350 issued March 2, 1971) pursuant to Policy ¶ 4(a)(i).
Complainant contends that
Respondent’s <nyseconnect.com> domain name is confusingly similar to its NYSE mark. The <nyseconnect.com> domain name differs from Complainant’s mark in two ways:
(1) the generic term “connect” has been added to the end of the mark; and (2)
the generic top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that adding a generic term is insufficient to distinguish
a domain name from a mark it incorporates.
Bros. Entm’t Inc. v. Sadler, FA
250236 (Nat. Arb. Forum May 19, 2004) (finding the
addition of generic terms to Complainant’s HARRY POTTER mark in the
respondent’s <shop4harrypotter.com> and <shopforharrypotter.com>
domain names failed to alleviate the confusing similarity between the mark and
the domain names); see also Google Inc.
v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the
respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark
where the respondent merely added common terms such as “buy” or “gear” to the
The Panel also finds that the addition of the
gTLD “.com” does not sufficiently distinguish a domain name from the
incorporated mark for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <nyseconnect.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to submit a Response. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known
by the <nyseconnect.com> domain
name nor has he ever been the owner or licensee of the NYSE mark. The WHOIS listing for the disputed domain
name lists Respondent as “Louis Alverio,”
and without a Response by Respondent, there is no evidence in front of the
Panel that is contrary to Complainant’s contentions. Because there is no evidence that Respondent
has ever been known by any variant on the NYSE mark, the Panel therefore finds
that Respondent is not commonly known by the <nyseconnect.com>
domain name pursuant to
Policy ¶ 4(c)(ii).
See American W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Complainant contends that Respondent is not making active use of the <nyseconnect.com> domain name, as the website that resolves from that domain name says that it is under construction. Previous panels have found that failure to make active use of a domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the list of factors in Policy ¶ 4(b) are not exhaustive of the bad faith behavior by Respondent that can satisfy Policy ¶ 4(a). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant contends that
Respondent has failed to make active use of the disputed domain name, and that
this failure is evidence of Respondent’s registration and use of the
disputed domain name (initial registration:
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyseconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 2, 2009
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