Nasdaq, Inc. v. Wei \u502b Wang
Claim Number: FA2205001996222
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Wei \u502b Wang (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <asia-nasdaq.com>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2022; the Forum received payment on May 13, 2022.
On May 16, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <asia-nasdaq.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2022 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@asia-nasdaq.com. Also on May 17, 2022, 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 June 13, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the NASDAQ mark based on its ownership and use of its portfolio of registered trademarks described below in providing services relating to the NASDAQ stock exchange.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s NASDAQ mark because it subsumes the whole of Complainant’s inherently distinctive NASDAQ mark.
Complainant further argues that the disputed domain name contains no other source-distinguishing non-URL elements and that the term “ASIA,” is merely descriptive, as it functions as a geographically descriptive designation. Taiwan is located in Asia, where Complainant and a number of its subsidiaries do business.
The element “ASIA” does nothing to distinguish the disputed domain name from Complainant’s NASDAQ mark. See Eastman Chemical Company v. Bradford Cornileus / Mack COX / Robert Lutz, FA2003001887977 (Forum Apr. 15, 2020) (finding that geographic designations do not remove a domain name from the realm of confusing similarity, and also holding the addition of hyphens to be irrelevant in determining confusing similarity under Policy ¶ 4(a)(i)).
Complainant next argues that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent can demonstrate no legitimate purpose for registering the <asia-nasdaq.com>.
Complainant adds that Respondent is not and has not been commonly known by the disputed domain name.
Complainant asserts that it has not authorized Respondent to use its mark or to register its mark as a domain name and Respondent is not an authorized provider of Complainant’s services.
Complainant further submits that Respondent is not making legitimate noncommercial or fair use of the disputed domain name, without intending to mislead and divert consumers, or to tarnish Complainant’s NASDAQ mark, for Respondent’s commercial and financial gain adding that Respondent does not refer to Complainant’s exchange or exchange-related information on any archived iteration of the website associated with the disputed domain name.
Complainant contends that Respondent’s use of Complainant’s NASDAQ mark in the disputed domain name goes beyond fair use, and appears to be for the purpose of “phishing,” by misleading and diverting consumers of trading services and related information to Respondent’s inactive website (formerly a Chinese-language login page, as shown in a screen capture exhibited in an annex to the Complaint.
Complainant adds that Respondent intentionally relies on the international notoriety of Complainant’s NASDAQ mark to divert new consumers to its website.
A screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint shows that in addition, Respondent is using the whole of Complainant’s word mark in the disputed domain name and on the associated website.
The disputed domain name diverts internet users who seek the NASDAQ website to Respondent’s website which is presently inactive.
Complainant concludes, submitting that because Respondent registered and used the disputed domain name to infringe Complainant’s rights in the NASDAQ mark, to trade off Complainant’s goodwill, and to usurp Internet traffic rightly intended for Complainant, Respondent’s registration and use of the disputed domain name cannot constitute a bona fide offering of goods or services pursuant to UDRP Section 4(c)(i). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Panels have held that use of a domain name for illegal activity – in this case, phishing – can never confer legitimate interests in the domain name on a respondent. See NASDAQ, Inc. v. Zoar Nasda / Capital Vision Ltd, FA2101001927915 (Forum Feb. 8, 2021) (finding that Respondent’s use of the confusingly similar <nasdaqfxm.com> domain name to pass itself off as Complainant and address a website to phish for private information constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii)).
Panels have confirmed that passively holding a domain name that resolves to an inactive or unpopulated site also fails to constitute bona fide use under UDRP Sections 4(c)(i) and (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Sections 4(c)(i) or (iii).”).
Complainant adds that Respondent’s use of the NASDAQ mark in the disputed domain name also cannot be deemed a nominative fair use under the test in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case D2001-0903 because (a) Respondent is not actually offering Complainant’s goods and services, (b) Respondent is not selling the trademarked goods or services, or goods and/or services intended for use, with Complainant’s goods and services, and (c) the website associated with the Domain Name at issue does not accurately and prominently disclose Respondent’s relationship with Complainant (as there is no such relationship).
As to the first factor, neither Complainant’s software, nor its services, are offered for sale on the website associated with the disputed domain name. Respondent’s website does not offer any financial, trading, or investment-related goods or services, and instead resolves to an inactive website (formerly a Chinese-language login page).
Given that Respondent does not offer goods or services on its website that are legitimately sourced by or associated with Complainant, or that are legitimately for use with Complainant’s services, Respondent’s use of the disputed domain name does not meet the second factor of the Oki Data test, which allows use of a mark in a domain name where Respondent is selling only trademarked goods or services of Complainant, or goods and/or services intended for use, or allegedly compatible, with only Complainant’s goods.
Additionally, of equal import, there is nothing on any archived iteration of Respondent’s website to indicate that it is not associated with Complainant, as required by the third factor of the Oki Data test.
Complainant adds that Respondent misappropriated Complainant’s mark and goodwill when it registered the disputed domain name on October 27, 2021, over fifty years after Complainant first commenced use of the NASDAQ mark and over twenty-five years after Complainant launched its website at <www.nasdaq.com>.
Given Complainant’s long-established rights, and the fact that the NASDAQ-branded stock exchange is the second largest in the world, it is inconceivable that Respondent was not aware of Complainant’s mark when it registered the disputed domain name in 2021, in obvious bad faith under Section 4(a)(iii).
Respondent appears to use the disputed domain name only to deceive consumers of Complainant’s goods and services, and currently divert them to an inactive website
Complainant argues that as recently as January 21, 2022, Respondent used the domain <asia-nasdaq.com> for the purpose of “phishing,” inviting users to provide personal information to set up an account to access Respondent’s offerings. Such an association with potentially fraud-based services may be detrimental to Complainant’s business. In this regard, Complainant refers to screen captures of the websites on that date but the Panel notes that the content is in Chinese and Respondent has not provided any translations.
Complainant submits that Respondent’s prior use of the domain to host this website meets the bad faith element set forth in Section 4(b)(iii) of the Policy by disrupting Complainant’s business and unfairly competing with Complainant by luring potential customers into creating an account with their personal information in furtherance of a phishing scheme. See Blackstone TM L.L.C. v. Anna Boldoreva / Phisical Face, FA2003001889989 (Forum Apr. 30, 2020) (holding, under Policy ¶ 4(b)(iii), use of a confusingly similar domain name to acquire personal and financial information to constitute bad faith); see also Hess Corp. v. GR, FA770909 (Forum Sept. 19, 2006) (determining 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).
Complainant submits that the passive holding the disputed domain name that resolves to an inactive or unpopulated site is evidence of bad faith registration and use. See Google LLC v. alexandra kepelek, FA2111001972818 (Forum Dec. 8, 2021) (citing State Farm Mut. Auto. Ins. Co. v. Cofield, FA1799574 (Forum Sept. 10, 2018) (finding bad faith under UDRP Section 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”)).
Complainant adds that maintaining the disputed domain name that subsumes Complainant’s entire NASDAQ mark, even where the domain name currently resolves to an inactive website, implies that Respondent seeks to unfairly benefit commercially from the mark. See Nutramax Laboratories, Inc. v. huang xu hui, FA2202001984010 (Forum Mar. 21, 2022) (“By incorporating the COSEQUIN mark in the Domain Name, the Panel considers that it is reasonable to infer that the Respondent seeks unfairly to benefit commercially from the Complainant’s mark, even though there is no content associated with the resolving webpage.”)
Complainant further contends that Respondent’s registration and prior use of the disputed domain name also meet the bad faith element set forth in Section 4(b)(iv) of the Policy because Respondent’s registration and use of the disputed domain name intentionally attempts to pass off as Complainant by using a domain name that is confusingly similar to Complainant’s mark and mimicking Complainant’s branding on Respondent’s website to create the impression that Respondent is associated with Complainant in furtherance of a phishing scheme. See Nasdaq, Inc. v. kai mi, FA2106001949499 (Forum July 1, 2021) (finding bad faith registration and use of the disputed domain name that was confusingly similar to Complainant’s mark in furtherance of a fraudulent phishing scheme per Policy ¶ 4(b)(iv)).
Complainant concludes its submissions in respect of alleged bad faith registration and use by Respondent by arguing that Respondent’s use of a privacy service when registering the disputed domain name evidences a bad faith intent to evade Complainant’s enforcement of its trademark rights. Panels have held that use of a privacy or proxy service by respondents supports an inference of bad faith. See H & M Hennes & Mauritz AB v. Domain Admin, Private Registrations Aktien Gesellschaft / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case D2017-0491 (holding “the persistent use of proxy services and seemingly false names in the chain of title of the disputed domain name” to evidence bad faith registration).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates the NASDAQ stock exchange and is the owner of a portfolio of trademark and service mark registrations including
· United States registered service mark NASDAQ, registration number 922973, registered on the Principal Register on October 26, 1971 for services in international class 35;
· United States registered trademark NASDAQ, registration number 1259277, registered on the Principal Register on November 29, 1983 for goods in international class 9;
· United States registered service mark N NASDAQ, registration number 5232981, registered on the Principal Register on June 27, 2017 for services in international class 35;
· United States registered trademark and service mark NASDAQ, registration number 1259277, registered on the Principal Register on November 29, 1983 for goods and service marks in international classes 16, 35, 36, 38.
· Republic of China registered trademark NASDAQ, registration number 1109725, registered on September 21, 1997 for services in class 46;
· Republic of China registered service mark NASDAQ, registration number 20548149, registered on August 28, 2017 for services in class 36;
· Republic of China registered service mark NASDAQ, registration number 00091233, registered on June 1, 1997 for services in class 36;
Complainant has an established Internet presence and maintains a website to which its domain name <nasdaq.com> which was registered on December 16, 1993, resolves.
The disputed domain name was registered on October 27, 2021 and currently resolves to an inactive web page.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the registration of the disputed domain name in the course of this proceeding.
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”).
Complainant has provided convincing evidence that rights in the NASDAQ mark, established by its ownership of its portfolio of trademark and service mark registrations described above.
The disputed domain name <asia-nasdaq.com> consists of Complainant’s mark in its entirety, in combination with a hyphen, the word “Asia” and the generic Top Level Domain “(gTLD”) extension <.com>.
Complainant’s NASDAQ mark is the dominant and only distinctive element in the disputed domain name. The hyphen adds no distinguishing character and the word “Asia” is merely a reference to the continent.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and so does not preclude a finding that the disputed domain name is confusingly similar to the NASDAQ mark.
This Panel finds therefore that the disputed domain name <asia-nasdaq.com> is confusingly similar to the NASDAQ mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent can demonstrate no legitimate purpose for registering the <asia-nasdaq.com>.
· Respondent is not and has not been commonly known by the disputed domain name;
· the disputed domain name was just registered in the past few months.
· Complainant has not authorized Respondent to use its mark or to register its mark as a domain name;
· Respondent is not an authorized provider of Complainant’s services;
· Referring to screen captures of the websites to which the disputed domain name has resolved since registration, which have been exhibited in an annex to the Complaint, Complainant submits that Respondent does not refer to Complainant’s exchange or exchange-related information on any archived iteration of the websites associated with the disputed domain name and therefore Respondent is not making legitimate noncommercial or fair use of the disputed domain name, without intending to mislead and divert consumers, or to tarnish Complainant’s NASDAQ mark, for Respondent’s commercial and financial gain.
· The screen captures show that Respondent’s use of Complainant’s NASDAQ mark in the disputed domain name goes beyond fair use, and appears to be for the purpose of “phishing,” by misleading and diverting consumers of trading services and related information to Respondent’s inactive website and formerly resolved to a Chinese-language login page.
· Respondent intentionally relies on the international notoriety of Complainant’s NASDAQ mark to divert new consumers to its website;
· in addition to using the whole of Complainant’s word mark in the disputed domain name and on the associated website, Respondent’s website diverts internet users who seek the NASDAQ website to Respondent’s website through the use of a domain name that wholly incorporates and is confusingly similar to Complainant’s mark.
· the disputed domain name appears directed to those seeking Complainant’s services, but then routes to an inactive website that does not contain any financial or investment-related content.
· because Respondent registered and used the disputed domain name to infringe Complainant’s rights in the NASDAQ mark, to trade off Complainant’s goodwill, and to usurp Internet traffic rightly intended for Complainant, Respondent’s registration and use of the disputed domain name cannot constitute a bona fide offering of goods or services;
· Panels have held that use of a domain name for illegal activity – in this case, phishing – can never confer legitimate interests in the domain name on a respondent.
· Panels have confirmed that passively holding a domain name that resolves to an inactive or unpopulated site also fails to constitute bona fide use under the Policy;
· Respondent’s use of the NASDAQ mark in the disputed domain name also cannot be deemed a nominative fair use under the Oki Data test, because (a) Respondent is not actually offering Complainant’s goods and services, (b) Respondent is not selling the trademarked goods or services, or goods and/or services intended for use, with Complainant’s goods and services, and (c) the website associated with the disputed domain name does not accurately and prominently disclose Respondent’s relationship with Complainant (as there is no such relationship).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the NASDAQ mark.
The uncontested evidence shows that Respondent misappropriated Complainant’s marks and goodwill when it registered the disputed domain name on October 27, 2021, over fifty years after Complainant first commenced use of the NASDAQ mark and over twenty-five years after Complainant launched its website at <www.nasdaq.com>. Given Complainant’s long-established rights, and the fact that the NASDAQ-branded stock exchange is the second largest in the world, it is inconceivable that Respondent was not aware of Complainant’s mark when it registered the disputed domain name in 2021, in obvious bad faith.
Complinant has alleged that Respondent is using the disputed domain name for the purposes of phishing and in this regard refers to exhibits annexed to the Complaint. However Complainant has not provided a translation of the website to which it refers and it therefore the exhibits have no probative value and Complainant has failed to prove phishing as alleged.
However the evidence shows that the disputed domain name currently resolves to an inactive web page and this Panel finds that such passive holding of the disputed domain name constitutes use in bad faith for the purposes of the Policy. There is no reason as to why Respondent would passively hold the disputed domain name, Respondent has no rights or interests in the NASDAQ mark or the confusingly similar disputed domain name. Internet users seeing the disputed domain name used as an Internet website address would on the balance of probabilities be confused and misled into believing that the disputed domain name would lead to a website or location maintained by or associated with Complainant.
This Panel finds that on the balance of probabilities therefore, Respondent is using the disputed domain name in bad faith to take predatory advantage of the goodwill and reputation that Complainant has established in the NASDAQ mark.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <asia-nasdaq.com> domain name be TRANSFERRED from Respondent to Complainant
James Bridgeman SC
Panelist
Dated: June 15, 2022
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