Nasdaq, Inc. v. Lisa Katz / Domain Protection LLC
Claim Number: FA2103001937131
Complainant is Nasdaq, Inc. ("Complainant"), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox P.L.L.C., District of Columbia, USA. Respondent is Lisa Katz / Domain Protection LLC ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasdqaq.com>, registered with Sea Wasp, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2021; the Forum received payment on March 18, 2021.
On March 19, 2021, Sea Wasp, LLC confirmed by email to the Forum that the <nasdqaq.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 March 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nasdqaq.com. Also on March 25, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 April 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global provider of financial technology, trading, and information services to capital markets. Complainant operates the second largest stock exchange in the world, and its technology powers more than 100 marketplaces in 50 countries, processing approximately 10% of the world's security transactions. Complainant has used the NASDAQ mark in connection with its services since 1968 and claims that the mark has become famous around the world. Complainant owns longstanding registrations for NASDAQ and related marks, including NASDAQ in both standard character and stylized form, in the United States and other jurisdictions worldwide. Complainant offers a portal product for board members and executives called Boardvantage, for which it uses the domain name <boardvantage.nasdaq.com>.
The disputed domain name <nasdqaq.com> was registered in February 2005. The registration was held in the name of a privacy registration service prior to the filing of the Complaint in this proceeding, at which time the registrar identified Respondent as the current registrant. Complainant characterizes the domain name as an instance of "typosquatting." The domain name is being used for a parked web page composed of what appear to be pay-per-click links to stock picks and similar items related to Complainant's business. Complainant states that the MX (mail exchanger) records for the domain name are configured to permit the domain name to be used to send email and receive messages, and argues that Respondent intends to use the domain name as part of a phishing scheme. Complainant states further that Respondent has configured the subdomain <boardvantage.nasdqaq.com> to display a similar pay-per-click link page, and very recently installed SSL certificates on both the main domain name and this subdomain, further suggesting an intent to use the domain name in connection with a phishing scheme. Complainant states that Respondent is not commonly known by the disputed domain name, is not an authorized provider of Complainant's services, and has not been authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <nasdqaq.com> is confusingly similar to its NASDAQ mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The
disputed domain name <nasdqaq.com> incorporates Complainant's
registered NASDAQ trademark, inserting a letter "Q" and appending the
".com" top-level domain. These additions do not substantially
diminish the similarity between the domain name and Complainant's mark. See,
e.g., Transamerica Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico,
FA 1923351 (Forum Dec. 30, 2020)
(finding <transaqmerica.com> confusingly similar to TRANSAMERICA); The
Nasdaq Stock Market, Inc. v. Act One Internet Solutions, D2003-0103 (WIPO
Apr. 1, 2003) (finding <nasdasq.com> confusingly similar to NASDAQ); The
Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc., D2002-1125 (WIPO
Jan. 27, 2003) (finding <nasadaq.com> confusingly similar to NASDAQ). The
Panel considers the disputed domain name to be confusingly similar to a mark in
which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being used to display pay-per-click links related to Complainant's business, and allegedly is being prepared for use in connection with a phishing scheme. Neither of these activities gives rise to rights or legitimate interests under the Policy. See, e.g., Phillips 66 Co. v. Vanshita Sharma / Ms, FA 1896941 (Forum June 14, 2020) (finding lack of rights or interests in similar circumstances); The Swatch Group AG & Swatch AG v. Van Cole, FA 1827758 (Forum Feb. 25, 2019) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register or acquire a typosquatted version of Complainant's mark and is using it to display pay-per-click links related to Complainant's business. Respondent has also configured a subdomain corresponding to one used by Complainant and allegedly is preparing to use the domain name and subdomain in connection with a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Phillips 66 Co. v. Vanshita Sharma / Ms, supra (finding bad faith in similar circumstances); The Swatch Group AG & Swatch AG v. Van Cole, supra (same); Cognizant Technology Solutions U.S. Corp. v. Domain Admin / Whois Privacy Corp., FA 1745174 (Forum Sept. 25, 2017) (same); ADP, LLC v. Zhichao Yang, FA 1744546 (Forum Sept. 12, 2017) (same). The Panel is also mindful of Respondent's history of similar incidents of typosquatting and adverse decisions under the Policy. See, e.g., Univision Communications Inc. v. Lisa Katz / Domain Protection LLC, FA 1935193 (Forum Apr. 12, 2021) (ordering transfer of <univision21.com>); No Limit, LLC & Newman’s Own, Inc. v. Lisa Katz, Domain Protection LLC, D2020-0685 (WIPO May 13, 2020) (ordering transfer of <neumansown.com>); AutoZone IP LLC v. Lisa Katz / Domain Protection LLC, FA 1744980 (Forum Sept. 22, 2017) (ordering transfer of <autonzone.com>); Berlitz Investment Corp. v. Whois Privacy Services Pty Ltd, Domain Hostmaster / Lisa Katz, Domain Protection LLC, D2016-2112 (WIPO Dec. 15, 2016) (ordering transfer of <bertlitz.com>); The Toronto-Dominion Bank v. Lisa Katz / Domain Protection LLC, FA 1698278 (Forum Nov. 23, 2016) (ordering transfer of <tdcanadathrust.com>).
The Panel is reluctant to infer an intent to engage in phishing from the mere fact that MX records have been created. Respondent's transparent typosquatting and configuration of a subdomain corresponding to one actively used by Complainant (done affirmatively, not merely via wildcard DNS) provide more than sufficient grounds for an inference of bad faith. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nasdqaq.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 21, 2021
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