NYSE Group, Inc. v. Mike Giffit c/o N.B.
Claim Number: FA0611000831225
Complainant is NYSE Group, Inc. (“Complainant”), represented by Doreen L. Costa, of Baker Botts L.L.P., 30 Rockefeller Plaza, New York, NY 10112-4498. Respondent is Mike Griffit c/o N.B. (“Respondent”), 218 East 18th Street, 75, New York, NY 10003-3694.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nysebrokers.biz>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistr.
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.
Tyrus R. Atkinson, Jr., Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2006.
On November 3, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregistr confirmed by e-mail to the National Arbitration Forum that the <nysebrokers.biz> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistr and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistr has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistr 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 November 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 2006 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@nysebrokers.biz by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 <nysebrokers.biz> domain name is confusingly similar to Complainant’s NYSE mark.
2. Respondent does not have any rights or legitimate interests in the <nysebrokers.biz> domain name.
3. Respondent registered and used the <nysebrokers.biz> 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. Complainant is the successor in interest to the New York Stock Exchange, Inc, founded in 1792. As a leading provider of financial, investment, and securities information, Complainant, under its NYSE mark, has attracted many of the world’s leading corporations to its securities exchange and has established a reputation for the integrity, permanence and quality of its regulation. Complainant maintains the <nyse.com> domain name, among others, to promote its services under the NYSE mark.
Through its predecessors in interest, Complainant has continuously and extensively used the NYSE mark since 1863. Complainant holds numerous trademark registrations for the NYSE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 909,350 issued March 2, 1971; Reg. No. 1,556,093 issued September 12, 1989; Reg. No. 2,665,267 issued December 24, 2002)
Respondent registered the <nysebrokers.biz> domain name on May 27, 2006 and is using the disputed domain name to operate a website billing itself as “NYSE Brokers – Brokerage Services, Inc.” The website appears visually similar to Complainant’s website at the <nyse.com> domain name and contains links to information about Complainant, its corporate history, and online brokerage services. Respondent’s website prompts Internet users to enter their personal and financial information to receive such services in an apparent fraudulent phishing scheme.
Complainant claims to have received several inquiries from the general public regarding Complainant’s association with Respondent and the content at the <nysebrokers.biz> domain name.
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.
Due to Complainant’s numerous trademark registration holdings with the USPTO, the Panel finds that Complainant has established rights in the NYSE mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
With respect to the <nysebrokers.biz> domain
name, Respondent has failed to sufficiently distinguish it from Complainant’s
NYSE mark by merely adding the term “brokers,” which describes Complainant’s
business, and the generic top-level domain “.biz.” As a result, the Panel finds that the <nysebrokers.biz>
domain name is confusingly similar to the mark pursuant to Policy ¶
4(a)(i). See Gillette Co. v. RFK
Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the
additions of the term “batteries,” which described the complainant’s products,
and the generic top-level domain “.com” were insufficient to distinguish the
respondent’s <duracellbatteries.com> from the complainant’s DURACELL
mark); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum
Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are
confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the
AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive,
descriptive and generic terms, some of which describe Complainant’s
business.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <nysebrokers.biz> domain name. Complainant must first make a prima facie
case in support of its allegations, and the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record that Respondent is commonly known by the disputed domain name. Respondent has registered the <nysebrokers.biz> domain name under the name “Mike Giffit c/o N.B.” and Complainant has not authorized or licensed Respondent to register a domain name incorporating any variation of its NYSE mark. Consequently, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Moreover, Respondent’s <nysebrokers.biz> domain name, which is confusingly similar to Complainant’s NYSE mark, resolves to a website offering online brokerage services related to Complainant’s NYSE mark. Respondent’s website prominently displays Complainant’s NYSE mark and asks for the personal and financial information of Internet users interested in investing in securities. It appears to the Panel that Respondent is engaged in a phishing scheme and attempting to pass itself off as affiliated with Complainant in order to fraudulently acquire personal information from Internet users. In HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004), the respondent registered the <hope-worldwide.org> domain name and used it to operate a website virtually identical to the website of the complainant, a charity helping disadvantaged children and the elderly under the HOPE WORLDWIDE mark. The panel defined “phishing” as fooling Internet users into sharing personal financial data so that “identities can be stolen, fraudulent bills are run up, and spam e-mail is sent.” Id. The panel found that the respondent’s use of the <hope-worldwide.org> domain name to divert Internet users to a website that imitated the complainant’s website in order to fraudulently acquire personal information from the complainant’s customers did not fall within the parameters of Policy ¶ 4(c)(i) or (iii). Id. In this case, Respondent’s operation of a website which attempts to acquire personal and financial information from Internet users also constitutes phishing. As a result, the Panel finds that Respondent is not using the disputed 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). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <nysebrokers.biz>
domain name, which includes Complainant’s NYSE mark, to divert Internet users
seeking Complainant’s brokerage services to Respondent’s own website offering
similar brokerage services and purporting to be affiliated with Complainant’s
NYSE mark. Respondent is taking
advantage of the confusing similarity between Respondent’s domain name and
Complainant’s NYSE mark, and attempting to profit from the goodwill associated
with the mark. Use of the disputed
domain name for this purpose is indicative of bad faith registration and use
under Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC,
FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and
entertainment business. The links
associated with <billboard.tv> and <boogie.tv> appear to be in
competition for the same Internet users, which Complainants are trying to
attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv>
and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the
web site or of a product or service on the web site.”); see also Velv, LLC
v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (find that the
respondent’s use of the <arizonashuttle.net> domain name, which contained
the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to
Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)).
Additionally,
Respondent’s operation of a website at the <nysebrokers.biz>
domain name that imitates Complainant’s website suggest that Respondent may be
attempting to fraudulently gather personal and financial information from
Internet users who may believe that Respondent’s website is affiliated with
Complainant. Therefore, Respondent is
engaged in phishing, which constitutes bad faith registration and use under
Policy ¶ 4(a)(iii). See Juno
Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004)
(finding that using a domain name that “is confusingly similar to Complainant’s
mark, redirects Internet users to a website that imitates Complainant’s billing
website, and is used to fraudulently acquire personal information from
Complainant’s clients” is evidence of bad faith registration and use); see
also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11,
2004) (finding bad faith registration and use because the respondent used the
domain name to redirect Internet users to a website that imitated the
complainant’s website and to fraudulently acquire personal information from the
complainant’s clients).
The Panel concludes that 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 <nysebrokers.biz> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 15, 2006
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