Nasdaq, Inc. v. Na Me
Claim Number: FA2205001996236
Complainant is Nasdaq, Inc. ("Complainant"), represented by Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, District of Columbia, USA. Respondent is Na Me ("Respondent"), The Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nasdaqshells.com>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2022; the Forum received payment on May 13, 2022.
On May 13, 2022, NameSilo, LLC confirmed by email to the Forum that the <nasdaqshells.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 May 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nasdaqshells.com. Also on May 17, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 June 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a global provider of financial technology, trading, and information services to capital markets. Complainant operates the second largest stock exchange in the world, and its technology powers more than 100 marketplaces in 50 countries, processing approximately 10% of the world's security transactions. Complainant has used the NASDAQ mark in connection with its services since 1968 and claims that the mark has become famous around the world. Complainant owns trademark registrations for NASDAQ in standard character form in the United States, China, and other jurisdictions worldwide.
The disputed domain name <nasdaqshells.com> was registered in September 2021, in the name of a privacy registration service. (The Panel notes that the underlying registration information revealed by the registrar in connection with this proceeding appears to be fictitious, stating the registrant's name as "Na Me," with an incomplete Philippines address, an incongruent postal code, and an invalid or incomplete telephone number.) The domain name is being used for a website that contains or promotes adult-oriented sexually explicit videos. Chinese-language text in the footer identifies the site as "Lemon Video," states that it is based in the United States, and refers to <ningmengmv.com> as its "permanent" address. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <nasdaqshells.com> is confusingly similar to its NASDAQ mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <nasdaqshells.com> incorporates Complainant's registered NASDAQ trademark, adding the generic (or, at least, nondistinctive) term "shells" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Nasdaq, Inc. v. Nwa Chi, FA 1986356 (Forum Mar. 25, 2022) (finding <nasdaqcrest.com> confusingly similar to NASDAQ); Nasdaq, Inc. v. Zhong Cun Zhu / Zhu Zhong Cun, FA 1931177 (Forum Mar. 9, 2021) (finding <nasdaq8.com> confusingly similar to NASDAQ). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a sexually explicit commercial website with no apparent connection to the mark, presumably using the mark for the sole purpose of attracting traffic to the website. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Baylor University v. Quhao, FA 1994353 (Forum June 6, 2022) (finding lack of rights or interests arising from use of domain name for unrelated pornographic content); Nasdaq, Inc. v. Zhong Cun Zhu / Zhu Zhong Cun, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's mark and is using it to display or promote sexually explicit content. The Panel infers from the circumstances that Respondent is seeking to profit by diverting Internet users searching for Complainant or its mark. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Baylor University v. Quhao, supra (finding bad faith based upon use of domain name incorporating well-known mark to display pornographic content); Nasdaq, Inc. v. Zhong Cun Zhu / Zhu Zhong Cun, supra (same). Respondent's use of a privacy registration service and false underlying registration information lends further support to the inference of bad faith. See, e.g., Nasdaq, Inc. v. Max Alvin, FA 1863636 (Forum Oct. 17, 2019) (treating false registration data as evidence of bad faith). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nasdaqshells.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 13, 2022
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