NYSE Group, Inc. v. Mike
Griffit c/o Nyse Brokers
Claim Number: FA0612000862744
PARTIES
Complainant is NYSE Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nysebrokers.us>, registered with Enom, Inc.
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 December 6, 2006;
the Forum received a hard copy of the Complaint December
7, 2006.
On December 6, 2006, Enom, Inc. confirmed by e-mail to the Forum that
the <nysebrokers.us>
domain name is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc.
verified that Respondent is bound by the Enom,
Inc. registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with the U. S.
Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 8, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”) setting a deadline of December 28, 2006, by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On January 4, 2007, 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 discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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. The domain name that Respondent registered, <nysebrokers.us>, is confusingly similar to Complainant’s NYSE mark.
2.
Respondent has no rights to or legitimate
interests in the <nysebrokers.us>
domain name.
3.
Respondent registered and used the <nysebrokers.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, NYSE Group, Inc., is the successor-in-interest to the New York Stock
Exchange, founded in 1792. Complainant’s
main business activities include the operation of a securities exchange as well
as ancillary and educational services provided to traders, investors, and the
general public. Many of the world’s
leading corporations list their securities on Complainant’s securities exchange
and widely promote and advertise their association with Complainant’s exchange
under the NYSE mark. Complainant
maintains a website at the <nyse.com> domain name and holds the domain
name registrations for numerous other domain names featuring its NYSE mark.
Complainant, through its predecessors in
interest, has continuously used the NYSE mark since 1863 and has registered 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.us>
domain name October 23, 2005. Respondent
maintains a website at the disputed domain name offering online securities
brokerage services and prominently displaying the NYSE mark. Complainant alleges that this website is part
of a fraudulent phishing scheme aimed at deceiving consumers seeking investment
advice. Respondent’s website contains pictures
and biographies of individuals associated with Respondent’s company, but
Complainant claims that these employees and their biographies are fictitious
and that none are registered brokers within the securities industry.
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(f), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel 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 Complainant to 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; and
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical to and/or Confusingly Similar
Complainant established with extrinsic evidence in this proceeding that it has rights in the NYSE mark that is contained in its entirety within the disputed domain name. Through registration of the NYSE mark with the USPTO, Complainant demonstrated its rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The disputed domain name, <nysebrokers.us>, contains Complainant’s entire registered NYSE mark and simply adds the term “brokers,” a common term in Complainant’s securities exchange business. In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel found that the respondent’s addition of the term “assurance” to the complainant’s AIG mark did not sufficiently differentiate the domain name from the mark because the appended term related directly to the complainant’s business. Similarly, in Reed Elsevier Inc. v. Christodoulou, FA 97321(Nat. Arb. Forum June 26, 2001), the panel found that the <legallexis.com> and <legallexus.com> domain names were confusingly similar to the complainant’s LEXIS mark because the term “legal” describes the type of services the complainant offers under the LEXIS mark. In this case, then, Respondent failed to sufficiently distinguish the <nysebrokers.us> domain name from Complainant’s NYSE mark by adding a descriptive term to the end of the mark. Consequently, the Panel finds the disputed domain name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy
¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant established that it has rights to and legitimate interests
in the mark contained in its entirety within the disputed domain name. Complainant contends that Respondent lacks
such rights and legitimate interests in the <nysebrokers.us>
domain name. Complainant must make a prima
facie case in support of its allegations, and once Complainant does so, the
burden shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). 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 Policy ¶ 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.”).
Respondent’s failure to answer the
Complaint raises a presumption that Respondent has no rights or legitimate
interests in the <nysebrokers.us> domain name. See Eroski, So. Coop. v. Getdomains
Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that
by defaulting Respondent showed nothing else but an absolute lack of interest
on the domain name.”); see also Am. Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”). However, the Panel
examines the record to determine if it shows that Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because Complainant established
rights to the NYSE mark and Respondent has not come forward with any evidence
showing it is the owner or beneficiary of a mark identical to the <nysebrokers.us>
domain name, Complainant has satisfied Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the
respondent was the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc.
v. Becky, FA 117014 (Nat. Arb.
Forum Sept. 3, 2002) (holding that because the respondent did not own any
trademarks or service marks reflecting the <pepsicola.us> domain name, it
had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i).
The
record shows that Respondent registered the domain name under the name “Mike
Griffit c/o Nyse Brokers,” but no evidence indicates that Respondent is
commonly known the by <nysebrokers.us> domain name. Complainant claims that it searched for
information on the people listed on Respondent’s website at the disputed domain
name and did not come up with any information, leading Complainant to believe
that Respondent’s company name and its employees are fictitious. Accordingly, the Panel concludes that Respondent
has not established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Dough,
FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the
WHOIS information for the <yasexhoo.com> domain name states that the
registrant is YASEXHOO . . . this alone is insufficient to show that Respondent
is commonly known by the domain name.”); see also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
Furthermore, the <nysebrokers.us>
domain name, which includes Complainant’s NYSE mark, appears to be part of a
fraudulent phishing scheme whereby Respondent prominently displays
Complainant’s registered NYSE mark and promotes Respondent’s securities
brokerage services, deceiving Internet users as to Respondent’s affiliation
with Complainant in order to obtain their personal and financial
information. The panel
in HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004), defined “phishing” as fooling Internet users
into sharing personal financial data so that “identities can be stolen,
fraudulent bills … run up, and spam e-mail … sent.” The panel in that case 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 UDRP Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant satisfied
Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant also alleged that
Respondent acted in bad faith.
Respondent incorporated Complainant’s NYSE mark in its entirety within
the disputed domain name and Respondent prominently displays Complainant’s
registered mark when purporting to offer Respondent’s financial services at the
website. This is part of a phishing
scheme. Respondent is no doubt
attempting to take advantage of the confusing similarity between the <nysebrokers.us>
domain name and Complainant’s mark in order to attempt to profit from the
goodwill associated with the mark. Such
use provides evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb.
Forum May 19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme); see also
Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”).
Moreover,
the Panel has found that the disputed website is part of a fraudulent phishing
scheme whereby Respondent is attempting to acquire personal and financial
information from consumers by promoting itself as being affiliated with
Complainant and its NYSE mark and purporting to offer investment advice. The Panel finds that Respondent’s fraudulent
conduct provides further evidence of bad faith registration and use under
Policy ¶ 4(a)(iii).
See Hess
Corp. v. GR, FA 770909 (Nat.
Arb. Forum Sept. 19, 2006) (finding that the respondent
demonstrated bad faith registration and use because it was attempting to acquire
the personal and financial information of Internet users through a confusingly
similar domain name); see also Wells Fargo & Co. v.
The Panel finds that Complainant has
satisfied Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <nysebrokers.us>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 18, 2007.
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page