Nasdaq, Inc. v. Qiu Shi Xia
Claim Number: FA2003001888937
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, United States. Respondent is Qiu Shi Xia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasdaq87.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2020; the Forum received payment on March 19, 2020.
On March 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nasdaq87.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 March 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 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@nasdaq87.com. Also on March 20, 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 April 14, 2020, 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., is a global financial technology, trading and information services provider to the world’s capital markets.
Complainant has rights in the NASDAQ mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <nasdaq87.com> domain name is confusingly similar to Complainant’s NASDAQ mark because it subsumes the whole of the mark merely adding the descriptive term “87” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <nasdaq87.com> domain name because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s NASDAQ mark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the at-issue domain name to confuse and mislead customers in furtherance of a phishing scheme.
Respondent registered and uses the <nasdaq87.com> domain name in bad faith because Respondent uses the domain name to suggest an affiliation with Complainant in order to disrupt Complainant’s business and commercially benefit from diverted Internet traffic. Additionally, Respondent’s typosquatting behavior further evidences bad faith. Finally, Respondent had knowledge of Complainant’s rights in the NASDAQ mark based upon its fame and the manner in which Respondent used the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NASDAQ mark through its registration of such mark with the USPTO and otherwise.
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 its NASDAQ trademark.
Respondent’s at-issue domain name addresses a website which displays Complainant’s trademark and offers a login page where internet users may setup an account and “log in.”
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 the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
Respondent’s at-issue <nasdaq87.com> domain name consists of Complainant’s entire NASDAQ trademark followed the numeral “8,” the numeral ”7,” and the top-level domain name “.com.” The differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s NASDAQ mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.)..
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). Absent contrary evidence of Policy ¶ 4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue 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.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Qui Shi Xia” and there is no evidence in the record which suggest that the Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii) that Respondent is not commonly known by the at-issue domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark suggests that the respondent lacks rights and legitimate interests. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue 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.”).
Respondent’s <nasdaq87.com> domain name has been used to address a website that displays Complainant’s trademark and offers a form to “login in” and/or create an account and “log in.” Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charter Communications Holding Company, LLC v. Chandon Kumar, FA1808001800637 (Forum Sept. 7, 2018) (“The disputed domain name incorporates Complainant’s registered mark without authorization, and it is being used for a website that mimics Complainant’s website in a manner obviously designed to mislead Internet users. Such use does not give rise to rights or legitimate interests under the Policy.”); see also Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain name.
Respondent’s <nasdaq87.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to trick internet users into believing the <nasdaq87.com> domain name and its addressed webpage, which displays Complainant’s mark, logo, and color scheme, are affiliated with Complainant when they are not. Such use shows Respondent’s bad faith registration and use of the <nasdaq87.com> domain name pursuant to Policy ¶ 4 (b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Additionally and as mentioned above, Respondent’s at-issue domain name addresses a webpage that displays Respondent’s trademark and other intellectual property. Respondent’s use of the domain name to pass itself off as Complainant is disruptive to Complainant’s business and shows Respondent’s desire to use the domain name to attempt to attract internet users to its <nasdaq87.com> website, presumably for commercial gain. Respondent’s use of the at-issue domain name thus indicates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iii), as well as under Policy ¶ 4(b)(iii).
Although Complainant claims Respondent is engaging in typosquatting, the Panel disagrees. Respondent formed the at-issue domain name, inter alia, by concatenating “87” to Complainant’s trademark. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may use the confusion to inappropriately capitalize on the target mark’s goodwill. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). However, in our case the addition of “87” to Complainant’s trademark would not likely be the result of inadvertently typing the NASDAQ mark. Likewise, although the domain name is confusingly similar to Complainant’s NASDAQ trademark, the addition of the “87” to Complainant’s mark is just an addition to the mark rather than a misspelling or mistyping of the NASDAQ mark.
Finally, Respondent had actual knowledge of Complainant’s rights in the NASDAQ mark when it registered <nasdaq87.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and inclusion of the suggestive term “87” in Respondent’s domain name. The “87” may be taken to be a reference to the stock market crash of 1987. Respondent’s registration and use of a confusingly similar domain name with prior knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to 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 <nasdaq87.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 16, 2020
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