Nasdaq, Inc. v. Viktor Lipnizkiy
Claim Number: FA2006001901913
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, United States. Respondent is Viktor Lipnizkiy (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com>, registered with Registrar of Domain Names REG.RU LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 30, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nasdaq24.com, postmaster@pay2-nasdaq24.com, postmaster@pay-nasdaq24.com. Also on June 30, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. The Panel has reviewed the applicable rules on language of the proceedings under the UDRP:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant, Nasdaq, Inc., is a global financial technology, trading, and information services provider. Complainant has rights in the NASDAQ mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 922,973, registered Oct. 26, 1971). See Compl. Ex. 7. Respondent’s <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names are confusingly similar to Complainant’s NASDAQ mark because they merely add numbers and/or the descriptive term “pay” to the mark, as well as the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names because Respondent is not authorized to use Complainant’s mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent simply trades off Complainant’s goodwill to redirect Internet traffic to its own website.
Respondent registered and uses the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names in bad faith. Respondent trades off the goodwill associated with Complainant’s mark and unfairly competes with Complainant for Internet traffic. Additionally, Respondent’s fraudulent use of the domain names is evidence of bad faith. Finally, Respondent had knowledge of Complainant’s rights in the NASDAQ mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global financial technology, trading, and information services provider.
2. Complainant has established its trademark rights in the NASDAQ mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 922,973, registered Oct. 26, 1971).
3. Respondent registered the <nasdaq24.com> domain name on March 11, 2020, the <pay-nasdaq24.com> domain name on May 14, 2020, and the <pay2-nasdaq24.com> domain name on May 20, 2020.
4. Respondent uses the disputed domain names to trade off Complainant’s goodwill to redirect Internet traffic to its own website.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that is has rights in the NASDAQ mark based upon registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the NASDAQ mark with the USPTO (e.g., Reg. No. 922,973, registered Oct. 26, 1971). See Compl. Ex. 7. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s NASDAQ mark. Complainant argues that Respondent’s <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names are confusingly similar to Complainant’s NASDAQ mark because they merely add numbers and/or the descriptive term “pay” to the mark, as well as the “.com” gTLD. Addition of numbers, descriptive terms, and a gTLD to a mark may not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s NASDAQ mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s NASDAQ trademark and to use it in its domain names, merely adding numbers and/or the descriptive term “pay” to the mark, which does not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <nasdaq24.com> domain name on March 11, 2020, the <pay-nasdaq24.com> domain name on May 14, 2020, and the <pay2-nasdaq24.com> domain name on May 20, 2020;
(c) Respondent uses the disputed domain names to trade off Complainant’s goodwill to redirect Internet traffic to its own website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names because Respondent is not authorized to use Complainant’s mark and is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain names as “Viktor Lipnizkiy” and no information indicates that Complainant authorized Respondent to use the mark. See Compl. Ex. 2. Therefore, the panel finds that Respondent has no rights or legitimate interests in the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead simply trades off Complainant’s goodwill to redirect Internet traffic to its own website. Use of a disputed domain name to divert Internet users for personal gain is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Complainant submits that Respondent redirects Internet traffic intended for Complainant to a website where Respondent offers brokerage services for unregulated financial products separate from those offered by Complainant. Complainant includes a screenshot of Respondent’s webpage. See Compl. Ex. 10. Therefore, the Panels finds that Respondent has not used the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names in bad faith because Respondent unfairly competes with Complainant for Internet traffic. Use of a disputed domain name in competition with a complainant evidences bad faith under Policy ¶ 4(b)(iii), See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant notes that while Respondent’s website offers brokerage services for financial products separate from those offered by Complainant, Respondent still competes with Complainant for Internet traffic. Complainant provides screenshots of Respondent’s webpages. See Compl. Exs. 12 – 14. As the Panel agrees with Complainant, the Panel finds bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent registered and uses the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names in bad faith because Respondent trades off the goodwill associated with Complainant’s mark for Respondent’s own commercial benefit. Use of a disputed domain name to divert Internet traffic to one’s own website and offer commercial products and/or services is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As previously noted, Complainant provides screenshots of Respondent’s webpages and claims that Respondent commercially benefits by offering brokerage services. See Compl. Exs. 12 – 14. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent may be fraudulently using the disputed domain names. Illegal activity associated with a disputed domain name may support a finding of bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). Complainant suggests that Respondent’s use of the domain names in connection with brokerage services for unregulated products allows Respondent to take advantage of customers fraudulently. Additionally, Complainant provides a screenshot of the “Licenses” section of Respondent’s website and claims that Respondent fraudulently misrepresents registration with regulatory agencies by simply including a business certificate where one would expect evidence of proper licensing. See Compl. Ex. 12. The Panel therefore finds bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had knowledge of Complainant’s rights in the NASDAQ mark at the time of the registration of the domain names. Constructive knowledge is insufficient for a finding of bad faith under Policy ¶ 4(a)(iii), but evidence that a respondent had actual knowledge of a complainant’s mark at the time of registration supports a finding of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge may be shown by the fame and notoriety of a mark and the use a respondent makes of the mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant claims that it is inconceivable that Respondent had no knowledge of Complainant’s NASDAQ mark based upon Complainant’s NASDAQ-branded stock exchange being the second largest in the world. As the Panel agrees that actual knowledge was present, the Panel finds bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nasdaq24.com>, <pay2-nasdaq24.com>, and <pay-nasdaq24.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 24, 2020
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