NASDAQ, INC. v. Zhichao Yang
Claim Number: FA2107001956784
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doseywright.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2021; the Forum received payment on July 27, 2021. The Complaint was received in English.
On July 28, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <doseywright.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. 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 August 4, 2021, the Forum served the English language Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of August 24, 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@doseywright.com. Also on August 4, 2021, the English and Chinese 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 August 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Complainant alleges that because Respondent is conversant in 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. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that Respondent is proficient in English because the disputed domain name resolves to a pay-per-click website in the English language. The Panel agrees and determines that this proceeding will be conducted in English.
A. Complainant
1. Respondent’s <doseywright.com> domain name is confusingly similar to Complainant’s DORSEY WRIGHT mark.
2. Respondent does not have any rights or legitimate interests in the <doseywright.com> domain name.
3. Respondent registered and uses the <doseywright.com> domain name in bad faith.
B. Respondent did not file a Response.
Dorsey, Wright & Associates, LLC is a wholly-owned subsidiary of Nasdaq, Inc. Complainant holds a registration for the DORSEY WRIGHT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,301,610, registered October 2, 2007).
Respondent registered the <doseywright.com> domain name on August 21, 2020, and uses it to resolve to a pay-per-click website.
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 Panel finds that Complainant has rights in the DORSEY WRIGHT mark through its registration of the mark with the USPTO. 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.”).
Respondent’s <doseywright.com> domain name uses a slightly misspelled version of Complainant’s DORSEY WRIGHT mark and adds the gTLD “.com.” These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Therefore, the Panel finds that Respondent’s <doseywright.com> domain name is confusingly similar to Complainant’s DORSEY WRIGHT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant contends that Respondent lacks rights and legitimate interests in the <doseywright.com> domain name, as Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the DORSEY WRIGHT mark. The WHOIS information for the disputed domain name lists the registrant as “Zhichao Yang.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Complainant argues that Respondent fails to use the <doseywright.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses it in connection with pay-per-click hyperlinks. Using a disputed domain name in connection with pay-per-click hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot showing that the disputed domain name resolves to a pay-per-click website. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent further lacks rights or legitimate interests in the <doseywright.com> domain name because Respondent engages in typosquatting. Typosquatting is the purposeful misspelling of a mark and is further evidence that a respondent lacks rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See The Hackett Group, Inc. v. Brian Herns / The Hackett Group, FA1412001597465 (Forum Feb. 6, 2015) (holding that the respondent’s incorporation of the complainant’s entire mark with only the addition of the letter ‘s’ indicated that the respondent had engaged in typosquatting and was further evidence that the respondent lacked rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii)). Accordingly, the Panel finds further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <doseywright.com> domain name in bad faith because Respondent uses the domain name to divert Internet users to its website with pay-per-click links. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Complainant also contends that Respondent registered the <doseywright.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the DORSEY WRIGHT mark prior to registering the disputed domain name, due to the famous nature of Complainant’s mark. Worldwide prominence of a mark can show actual knowledge and demonstrate bad faith under Policy ¶ (a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant demonstrates that its DORSEY WRIGHT mark is globally recognized as one of the largest providers of investment strategies in the world, tracking 35 Nasdaq Dorsey Wright Indexes, and managing over $7.2 billion in exchange-traded funds. Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <doseywright.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 30, 2021
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