Nasdaq, Inc. v. Johnson Zhang
Claim Number: FA2205001996218
Complainant is Nasdaq, Inc. (“Complainant”), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Johnson Zhang (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasdaq597.com>, registered with Realtime Register B.V..
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2022; the Forum received payment on May 13, 2022.
On May 18, 2022, Realtime Register B.V. confirmed by e-mail to the Forum that the <nasdaq597.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@nasdaq597.com. Also on May 23, 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.
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 is a financial technology, trading, and information services provider. Complainant has rights in the NASDAQ mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 922,973, registered Oct. 26, 1971).. Respondent’s <nasdaq597.com> domain name is identical or confusingly similar to Complainant’s NASDAQ mark as it incorporates the mark in its entirety and adds the numbers “597” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <nasdaq597.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its NASDAQ mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts users for its own commercial gain while hosting an inactive webpage. Furthermore, Respondent passes off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <nasdaq597.com> domain name in bad faith. Respondent diverts users for commercial gain while disrupting Complainant’s business by engaging in phishing. Additionally, Respondent attempted to pass off as Complainant and held an inactive webpage. Furthermore, Respondent used a privacy service to mask its identity and registered the disputed domain name with actual knowledge of Complainant’s rights in the NASDAQ mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <nasdaq597.com> domain name.
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 rights in the NASDAQ mark through its registration with the USPTO (e.g. Reg. No. 922,973, registered Oct. 26, 1971). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nasdaq597.com> domain name is identical or confusingly similar to Complainant’s NASDAQ mark. Under Policy ¶ 4(a)(i), adding numbers along with a “.com” gTLD is insufficient in differentiating a disputed domain name from the mark. See Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”). The disputed domain name incorporates the mark in its entirety and adds the numbers “597” along with the “.com” gTLD. The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <nasdaq597.com> domain name, nor has Complainant authorized or licensed Respondent to use its NASDAQ mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See 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.”). The WHOIS record identifies Respondent as “Johnson Zhang”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its NASDAQ mark in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <nasdaq597.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users to respondent’s website for its own commercial gain does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain name’s resolving website, which previously displayed Complainant’s mark and a login page and now sits inactive. This is evidence that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent is not using the <nasdaq597.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by passing off as Complainant in furtherance of a phishing scheme. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant in furtherance of a phishing scheme does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which on at least February 18, 2022, displayed Complainant’s NASDAQ mark and a login page in the Chinese language. This is evidence that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent is not using the <nasdaq597.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by inactively holding the disputed domain name’s resolving website. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name’s resolving website does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (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 Policy ¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website, which as of May 13, 2022, no longer resolves to an active webpage. The Panel finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <nasdaq597.com> domain name in bad faith by passing off as Complainant and creating the impression of affiliation with Complainant. Under Policy ¶ 4(b)(iv), passing off as Complainant to create a false sense of affiliation is evidence of bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which on at least February 18, 2022, displayed Complainant’s NASDAQ mark and a login page in the Chinese language. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the <nasdaq597.com> domain name in bad faith by disrupting Complainant’s business and offering competing business by inviting users to its login page. Under Policy ¶ 4(b)(iii), using a disputed domain name to disrupt complainant’s business and offer competing business is evidence of bad faith registration and use. See 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)). Complainant provides a screenshot of the disputed domain name’s resolving website, which on at least February 18, 2022, displayed Complainant’s NASDAQ mark and a login page in the Chinese language. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered and uses the <nasdaq597.com> domain name in bad faith by inactively holding the disputed domain name’s resolving website. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name is evidence of bad faith registration and use. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which as of May 13, 2022, no longer resolves to an active webpage. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <nasdaq597.com> domain name in bad faith by using a privacy service. Under Policy ¶ 4(a)(iii), using a WHOIS privacy service may contribute to a finding of bad faith registration and use. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Respondent’s use of a privacy service is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <nasdaq597.com> domain name with actual knowledge of Complainant’s rights in the NASDAQ mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. 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).”). The Panel finds, from the fame of the mark and the use made of the domain name that Respondent had actual knowledge of Complainant’s rights in the mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <nasdaq597.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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