Nasdaq, Inc. v. wang wen ge / shang hai jian xi cai wu zi xun zhong xin ( you xian he huo )
Claim Number: FA2106001950533
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nasdaqsecurities.com> and <nasdaqbusinessschool.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2021; the Forum received payment on June 10, 2021. The Complaint was received in English.
On June 11, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 June 17, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 7, 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@nasdaqsecurities.com, postmaster@nasdaqbusinessschool.com. Also on June 17, 2021, the Chinese and English language 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 July 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is capable of understanding English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Chinese being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Chinese and English).
Complainant contends that since the homepage of Respondent’s website (to which both disputed domain names resolve) displays English translations of key entity names associated with Respondent, the email provided on each page of the website is only provided in the English language, and Respondent asserts that Nasdaq Securities Co., Ltd. is headquartered in New York and displays an image of the company’s certificate of incorporation issued by the state of New York, Respondent is capable of understanding the English language.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the two domain names are owned by the same entity as both route to the same webpage and both were registered on the same day using the same Registrar.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
A. Complainant
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 on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 922,973, registered Oct. 26, 1971). Respondent’s <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names are identical and confusingly similar to Complainant’s NASDAQ mark because they incorporate Complainant’s entire mark, adding only the generic or descriptive terms “securities” and “business school” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names as it is not commonly known by the disputed domain names and Complainant has not licensed or authorized Respondent to use the NASDAQ mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent passes itself off as Complainant without disclaiming any affiliation thereof and offers goods and services that are unrelated to Complainant.
Respondent registered and uses the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names in bad faith. Respondent registered domain names which incorporate Complainant’s whole mark, where Respondent passes off as Complainant and benefits commercially by purportedly offering securities investment services and business educational services under Complainant’s mark. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the NASDAQ mark based on the substantial fame of the mark, which has been used for over fifty years by Complainant who is the second largest provider of stock exchange services in the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Nasdaq, Inc. (“Complainant”), of New York, NY, USA. Complainant is the owner of domestic and international registrations for the mark NAASDAQ, which it has used continuously since 1968, in connection with its provision of global financial technology, trading, and information goods and services.
Respondent is Wang Wen Ge / Shang Hai Jian Xi Cai Wu Zi Xun Zhong Xin (You Xian He Huo) (“Respondent”), China. Respondent’s registrar’s address is listed as Beijing, China. The Panel notes that the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names were both registered on or about March 19, 2021.
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 claims rights in the NASDAQ mark through its registration with the USPTO (e.g., Reg. No. 922,973, registered Oct. 26, 1971). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names are identical and/or confusingly similar to Complainant’s NASDAQ mark because they incorporate Complainant’s entire mark, adding only the generic and/or descriptive terms “securities” and “business school” and the gTLD “.com.” When the entire mark is incorporated, adding a generic and/or descriptive or even meaningless term and a gTLD “.com” to the mark does not negate confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see additionally Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, Complainant points out that the term “securities” is related to Complainant’s business because Complainant provides a global marketplace for buying and selling securities. Further, the terms “business school” refers to the “Nasdaq Business School” which Respondent advertises, although no evidence indicates that such a place exist. The Panel here finds that the disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names because Respondent is not commonly known by the disputed domain names, nor has Complainant licensed or authorized Respondent to use the NASDAQ mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. 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.”). Here, the WHOIS information identifies “wang wen ge / shang hai jian xi cai wu zi xun zhong xin (you xian he huo)” as the registrant of both domain names. See Registrar Verification Email. Additionally, Complainant asserts that it has not licensed or authorized Respondent to use the NASDAQ mark. Complainant also provides evidence in the form of the SEC report of its subsidiaries that it does not endorse or sponsor any company called “Nasdaq Securities Co., Ltd.” which Respondent claims to be. The Panel here finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and 4(c)(iii) because Respondent passes itself off as Complainant without disclaiming any affiliation thereof and offers goods and services that are unrelated to Complainant. Use of a complainant’s mark without disclaiming any connection with complainant amounts to passing off, which does not constitute a bona fide offering of goods or services. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio-visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also 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). Also, use of a disputed domain name to display content unrelated to complainant can be evidence of a respondent’s lack of rights and legitimate interests under Policy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
Here, Complainant provides screenshots showing that Respondent’s website prominently displays Complainant’s NASDAQ mark and names Xu Guangxun as personally involved in many prior transactions involving Complainant. Complainant contends that Respondent’s actions constitute an attempt to pass off, as there is no disclaimer even though Respondent is not offering Complainant’s goods and services. Additionally, Respondent’s website refers to numerous company names and fails to clarify the exact nature of any of their purported services. The Panel here finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv) because Respondent registered domain names which incorporate Complainant’s whole mark, and Respondent passes off as Complainant. Respondent benefits commercially by purportedly offering securities investment services and business educational services under Complainant’s mark. Registration of a domain name which appropriates a complainant’s mark for commercial gain and passes off as a complainant on the resolving website, offering competing or unrelated goods and services, is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see additionally LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see additionally PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
The Panel again notes that Complainant provides evidence that the disputed domain names resolve to the same website which displays Complainant’s mark multiple times throughout and does not disclaim any association with Complainant. Complainant further asserts that Respondent appears to use the domain names to offer securities investment consultancy, financial advisory, government public relations, and educational services since the company names include Nasdaq Securities Co, Ltd. and Nasdaq Business School Limited. The Panel here finds Respondent’s actions described above illustrate bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <nasdaqsecurities.com> and <nasdaqbusinessschool.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 27, 2021
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