Nasdaq, Inc. v. The Carr / The Carr Group
Claim Number: FA2104001940809
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is The Carr / The Carr Group (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasdaq-us.co>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2021; the Forum received payment on April 8, 2021.
On April 8, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <nasdaq-us.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 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@nasdaq-us.co. Also on April 12, 2021, 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 May 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Nasdaq, Inc., operates a global financial technology, trading, and information services across global stock markets.
Complainant has rights in the NASDAQ mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <nasdaq-us.co> domain name is confusingly similar to Complainant’s NASDAQ mark, only differing by the addition of a hyphen, the geographical term “US” and the “.co” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <nasdaq-us.co> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the NASDAQ mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses an email associated with the domain name to pass off as Complainant in furtherance of a phishing scheme. Additionally, Respondent uses the at-issue domain name to host pay-per-click hyperlinks and advertisements.
Respondent registered and uses the <nasdaq-us.co> domain name in bad faith. Respondent’s use of an email associated with the at-issue domain name to pass off as Complainant disrupts Complainant’s business and likely leads to commercial gain for Respondent. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the NASDAQ mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NASDAQ trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in NASDAQ trademark.
Respondent uses the <nasdaq-us.co> domain name to facilitate an email phishing scheme and to address a webpage displaying pay-per-click links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its NASDAQ mark with a national trademark agency, such as the USPTO, demonstrates Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The at-issue domain name consists of Complainant’s NASDAQ trademark followed by a hyphen and the geographical abbreviation “us,” with all followed by the top level country code domain name “.co” to complete the domain name. The differences between the <nasdaq-us.co> domain name and Complainant’s NASDAQ trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) that Respondent’s <nasdaq-us.co> domain name is confusingly similar to Complainant’s NASDAQ trademark. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the confusingly similar <nasdaq-us.co> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “The Carr / The Carr Group” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <nasdaq-us.co> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses its <nasdaq-us.co> domain name to address a “pay-per-click” webpage where third-parties display various hyperlinks. Using the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Moreover, Respondent also uses its <nasdaq-us.co> domain name to host email in support of fraud. In Respondent’s scheme, Respondent poses as Complainant via email that Respondent sends from a <nasdaq-us.co> based address. Respondent uses at least one email address to impersonate a current employee in Complainant’s Accounts Receivable Department and trick Complainant’s clients into submitting wire transfer payments for all outstanding and future invoices for Complainant’s services to a bank account that is controlled by Respondent. The email’s subject line states: “IMPORTANT – Change of Bank Notice – Nasdaq Inc[.],” and advises one of Complainant’s clients that “we have changed our bank details from Wells Fargo Bank USA to NatWest Bank UK, effective March 01, 2021 going forward.” Respondent attaches a PDF document in the email containing the new NatWest Bank account details and further requested that Complainant’s client forward the same to individuals within the its finance department so to “remit your payments for the attached outstanding invoices and all future invoices.” The foul PDF prominently displays Complainant’s NASDAQ mark and N logo in Complainant’s signature color blue at the top of the page. Clearly, Respondent’s duplicitous use of the at-issue domain name as discussed above supports neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name);
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <nasdaq-us.co> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed in detail above regarding rights and legitimate interest, Respondent’s confusingly similar domain name is used to facilitate an email phishing scheme whereby Respondent impersonates Complainant via deceptive email in furtherance of fraud. Respondent’s use of the confusingly similar <nasdaq-us.co> domain name to pass itself off as Complainant and defraud third parties disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the <nasdaq-us.co> domain name pursuant to Policy ¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”).
Finally, Respondent had actual knowledge of Complainant’s rights in the NASDAQ mark when it registered and used the at-issue domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s NASDAQ trademark and from Respondent’s use of the <nasdaq-us.co> domain name to attempt to impersonate Complainant through fraudulent email. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name further shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nasdaq-us.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 6, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page