Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is The Nasdaq Stock Market, Inc., a Delaware Corporation with a place of business at One Liberty Plaza, 165 Broadway, New York, New York 10006, USA.

The Complainant is represented by Messrs Akin, Gump, Strauss, Hauer and Feld LLP of 1676 International Drive, Penthouse Suite, McLean, Virginia 22102, USA.

The Respondent is Seocho with an address at 1336-2 Seocho-2-dong, Seocho-ku, Seoul, 137-072, Republic of Korea.

The domain names in dispute are <nsadaq.com> and <nasdack.com>.

The Registrar of both domain names is BulkRegister.com, Inc. of 10 East Baltimore Street, Suite 1500, Baltimore Maryland 21202, USA.

3. Procedural History

An initial complaint was received by the WIPO Arbitration and Mediation Center on December 27, 2001. Acknowledgement of receipt of the Complaint was given to the Complainant on December 28, 2001.

On December 31, 2001, a request for verification of the domain names was made to BulkRegister.com, Inc. Confirmation was received that the domain names <nsadaq.com> and <nasdack.com> were registered with BulkRegister.com, Inc. in the name of the Respondent whose administrative and technical contact was shown as Vladimir Snezko with an address at Host for You, Post Box 97, Moscow, RU111538, Russian Federation.

On January 14, 2002, notification of the complaint and the commencement of the administrative proceeding was e-mailed to the Respondent and a copy sent also by post and by courier. The Panel has seen evidence of these communications with the Respondent.

No response having been received from the Respondent notification of the Respondent's default was given by the Center on February 6, 2002. No further communication having been received from the Respondent notification of the appointment of the administrative panel consisting of a sole panelist Mr. Clive Duncan Thorne was given on February 19, 2002, with a projected decision date of March 5, 2002. The Panel has since requested an extension of time for submission of the decision. This was on the basis that the Complainant had filed three other complaints (Nos. D2001-1495, 1496 and 1497) and that the Panel wished to consider all four cases at the same time.

The panelist has submitted a statement of acceptance and declaration of impartiality and independence. The Panel understands that payment of the due fees has been properly made by the Complainant.

According to the Complainant the Nasdaq Stock Market is the largest electronic screen-based market in the world with the capacity to handle a share volume in excess of 5 billion shares a day. It is also the largest stock market in the world per daily share volume and the world's best recognised stock market.

Using advanced computer and telecommunication technologies Nasdaq enables securities firms to execute transactions for investors and for themselves from anywhere they are located. In addition to its sophisticated technology Nasdaq is distinguished from other exchanges by its use of multiple market makers i.e. independent dealers who openly compete with one another for investors’ orders in each Nasdaq security. Nasdaq has two tiers; the Nasdaq National Market with Nasdaq's larger companies whose securities are the most actively traded, and the Nasdaq Small Cap Market with emerging growth companies.

There are approximately 4,300 companies listed on the Nasdaq Stock Market making Nasdaq the market of choice for more companies than any other US securities market. In addition Nasdaq lists more non-US based issues than all other US securities markets combined.

Nasdaq also develops, operates and maintains systems, services and products for a number of securities markets that it operates for the ultimate benefit and protection of investors. Nasdaq also formulates regulatory policies and listing criteria applicable to the market it operates. Nasdaq encompasses the maintenance of complex technological infrastructures for the collection, processing, and dissemination of trade and quotation information; a compliment of sophisticated order execution and negotiation systems; an online stock watch unit responsible for trading halts and extensive services provided to Nasdaq companies and Nasdaq market participants.

Nasdaq owns numerous trade marks and service marks containing or comprising NASDAQ "for various financial products and services". The mark "NASDAQ" has been in continuous use in the United States, since 1968. It is registered in the US Patent and Trade Mark Office and in approximately 40 other countries around the world. As a result of a long extensive use of the mark "NASDAQ" for financial products and services the Complainant asserts that Nasdaq has become a famous mark around the world indicating a source of products and services originating exclusively with Nasdaq.

At page 6 of the Complaint the Complainant refers to the fact that Nasdaq has registered hundreds of domain names most of which have been used by Nasdaq in connection with active websites containing content originating from or approved by Nasdaq. Annex D to the Complaint is a NSI Directory Printout showing representative domain names owned by Nasdaq.

It should be noted that as a result of the wide use of the mark Nasdaq the mark Nasdaq has become a distinctive part of the Complainant's trade name in connection with its business. Nasdaq commonly referred to as "Nasdaq" by members of the general public as well as by members of the financial industry and media.

Exhibited at Annexes E and F to the Complaint are a number of US Trade Mark Registrations for the mark Nasdaq including for example US Trade Mark Nos 0922973 and 1259277 for the mark "Nasdaq".

The Complainant also submits that Nasdaq has generated substantial goodwill in the mark NASDAQ as a result of its long and continuous use of the mark. The Complainant refers for example to the Nasdaq market site in New York City including the visual display site overlooking Times Square New York an advertisement for which is exhibited at Annexes H to the Complaint. The Complainant submits that goods and services offered under the Nasdaq mark have achieved a reputation for excellence and that the mark has become synonymous with the provision of high quality and reliable stock market information and trading services.

It appears that on March 3, 2001, the Respondent registered the domain names <nsadaq.com> and <nasdack.com> with BulkRegister.com. As a result of this coming to the attention of the Complainant the Complainant's representatives sent cease and desist letters by e-mail and by courier and mail to the Respondent indicating that registration of the two domain names in dispute violated the Complainants' trade mark rights under US law. No response was received to the initial letters and follow up letters were subsequently sent. No response appears to have been received to any of the letters. The letters are exhibited at Annex J to the Complaint. It should be noted that two of the letters dated September 20, 2001, and October 1, 2001, were returned as undeliverable.

In order to succeed in its request for an order to transfer the domain names to the Complainant, the Complainant has the burden of proof in showing that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") are present. These are as follows:

(i) The Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interest in respect of domain names;

(iii) The Respondent's domain names are registered and are being used in bad faith.

The Panel proceeds to deal with each of these in turn.

The Complainant submits that the Respondent's domain names incorporate two of the most common mis-spellings of the mark "Nasdaq". It points out that the transposition of the letters "s" and "a" is the only difference between the Respondent's domain name <nasdaq.com> and Nasdaq's registered mark NASDAQ. In the case of the Respondent's domain name <nasdack.com> the Complainant submits that it is a phonetic equivalent and that accordingly the domain names are confusingly similar.

The Panel, in the absence of any submissions to the contrary by the Respondent, accepts these submissions. In particular the Panel considers both Respondent's marks are phonetically confusingly similar to the Complainant's registered mark NASDAQ. The Panel also accepts the existence of the Complainant's trade mark rights referred to in section 4 above.

The Complainant submits that the Respondent has no trade mark rights in the domain names in dispute. The Complainant points out that the Respondent's only use of the domain names is to direct visitors to the <goto.com> and <LowerMyBills.com> websites. In the absence of any Response, the Panel takes the view that there is no evidence before it showing that the Respondent has any rights or legitimate interests in respect of the domain names and in these circumstances it is prepared to accept the Complainant's submissions.

In support of this submission the Complainant submits:

(i) The Respondent had constructive notice of the Complainant's trade mark rights;

(ii) The Respondent has precluded Nasdaq from using two of the most common mis-spellings of its mark;

(iii) Nasdaq has not agreed or consented or licensed the Respondent's use or registration of domain names containing its marks;

(iv) The Respondent is not using the domain names in a non-commercial fair use manner;

(v) The Respondent does not have the authority or licence to use the Nasdaq mark;

(vi) The Respondent has declined to co-operate with Nasdaq to resolve the instant dispute and continues to use the domain names;

(vii) The failure to respond to the cease and desist letter evidences bad faith;

(viii) The Respondent's use and registration of the domain names is an "obvious attempt to trade on the value of Nasdaq's mark taking advantage of typographical errors". It refers to the practice of "typo squatting"; and,

(ix) People who may access the domain names in an attempt to reach Nasdaq's website may incorrectly believe that Nasdaq's website is affiliated, sponsored or somehow connected with the website <goto.com> or <LowerMyBills.com> so that the only conceivable purpose of the use of the domain names is to divert traffic intended for the Complainant.

Having considered these submissions and taking into account that there is no response filed the Panel is not prepared to accept that registration per se of the domain names without the licence of the Complainant constitutes bad faith.

Nevertheless, the fact that the Respondent has failed to respond to the cease and desist letters and the fact that the registration of the domain names which are phonetic infringements of the mark NASDAQ take advantage of typographical errors show that the marks have not been registered and used in good faith.

The Panel is therefore prepared to accept that "the only conceivable purpose" of the use of the two domain names in dispute is to divert traffic intended for the Complainant. Accordingly the Panel accepts that the domain names have been registered and used in bad faith.

It follows that the Complainant has succeeded in its Complaint.

7. Decision

The Complainant requests that the domain names <nsadaq.com> and <nasdack.com> be transferred from the Respondent to the Complainant. The Panel finds for the Complainant and orders that the domain names <nsadaq.com> and <nasdack.com> should be transferred from the Respondent to the Complainant.

Clive Duncan Thorne
Sole Panelist

Dated: March 13, 2002