NYSE Group, Inc. v. DNS Administrator / Cykon Technology Limited
Claim Number: FA1612001709950
Complainant is NYSE Group, Inc. (“Complainant”), represented by Richard L. Cruz of DLA Piper LLP, Pennsylvania, USA. Respondent is DNS Administrator / Cykon Technology Limited (“Respondent”), Hong Kong.
The domain name at issue is nyses.com, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David J. Steele as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2016; the Forum received payment on December 30, 2016.
On December 30, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the nyses.com domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 January 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@nyses.com. Also on January 3, 2017, 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.
A timely Response was received and determined to be complete on February 13, 2017.
On February 22, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David J. Steele 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A summary of the factual record and parties’ contentions is as follows:
A. Complainant
Complainant, NYSE Group Inc., operates the leading global exchange for trading in securities under its brand NYSE. More than 2,400 companies are listed on the New York Stock Exchange, making NYSE the world’s largest stock exchange by market capitalization of its listed companies at $19.3 USD trillion as of June 2016. As a result of the global presence and success of NYSE, the “New York Stock Exchange” and “NYSE” brand names have come to be very well known in the financial services industry, both in the United States and throughout the rest of the world.
Since as early as 1863, Complainant and its predecessors have continuously used the NYSE mark in commerce. Further, Complainant operates its official Internet website for the NYSE mark at the domain name nyse.com.
Complainant protects its NYSE mark from potential infringement, dilution, disparagement, misappropriation, and unfair competition.
Complainant owns NYSE registrations in numerous jurisdictions around the word, and owns a family of marks incorporating the NYSE prefix (e.g., NYSE ARCA, NYSE BONDS, NYSE MKT, etc.).
The domain name nyses.com is confusingly similar to and wholly incorporates the NYSE mark. Additionally, in this case, the addition of the letter “s” to the domain name does not distinguish the name from the NYSE mark because pluralizing Complainant’s trademark does not avoid the confusing similarity between the disputed domain name and the mark.
Respondent, who is not affiliated with Complainant, has chosen a domain name that wholly incorporates Complainant’s NYSE mark. Because Complainant owns the exclusive rights in the NYSE mark and has United States federal registrations and international registrations therefor, Respondent cannot establish legitimate rights in the domain name.
Respondent is not engaging, and has not engaged in a bona fide offering of goods or services under, or a fair use of, the domain name. Instead, Respondent has used the domain name to host a commercial parking page. Respondent’s sole use of the domain name is misdirecting consumers who are attempting to locate the website for NYSE for Respondent’s own commercial gain.
In response to Complainant’s cease and desist letter, Respondent offered to sell the subject domain name to Complainant for $10,000 USD.
B. Respondent
Respondent admits that NYSE is a distinctive mark. Respondent further acknowledges Complainant’s long history and success using the NYSE mark.
Because NYSE (the 4 letter mark) is very well-known, it is very unlikely that someone would type “www.nyses.com” (the 5 letter domain name) to try and look for Complainant’s website. There is no evidence of actual confusion.
The disputed domain name, which Respondent states has not yet been developed as a hosting site, is temporary serving as a portal website showing links to services and products not relating to Complainant’s or its competitors’ business. The links are nothing more than promotions for general goods and services, which are not misleading, or contrary to the Policy or any relevant law. Complainant cannot be harmed in any way by their presence.
Registering a word and using it for purposes unconnected with Complainant or its activities does not violate Complainant’s trademark rights or the Policy.
Respondent had plans to use the disputed domain name in its line of hosting business.
Respondent registered the disputed domain name on March 14, 2010. For the past years, Respondent had never attempted to contact Complainant or other parties directly to offer the domain for sale.
Respondent’s offer to sell the domain name, which was sent “Without prejudice,” should not be admissible as evidence in this proceeding. “Without prejudice” is used purely in the course of negotiations to settle a dispute.
Respondent believes that Complaint should have made a counter offer to Respondent to resolve the dispute, instead of filing the subject complaint so both parties could have come to an agreement.
Respondent was not engaged in opportunistic bad faith because it did not register other available confusingly similar domain names such as “NY-SE.com,” “N-Y-S-E.com,” “NYSE.biz,” “NYSE.info,” or “NYSE.whatever” with “whatever” being one of the hundreds of new extensions available in the current market.
(1) The subject domain name, nyses.com, is confusingly similar to Complainant’ NYSE mark;
(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.
The subject domain name is ORDERED transferred from Respondent to Complainant.
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;
(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.
Complainant claims to have rights in the NYSE mark based on registration of the mark with the USPTO (e.g., Reg. No. 909,350, registered March 2, 1971). See Compl., at Attached Annex C. The registration of a mark with the USPTO (or other trademark registration of national effect) is sufficient to demonstrate a registrant’s rights in a mark under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Moreover, in this particular case, Complainant’s mark is “well-known” both in the United States, where Complainant is based, but around the world and including Hong Kong, where Respondent is based. Respondent further agrees that Complainant’s mark is well-known (“Respondent agrees, with the long history and success of Complainant’s business, NYSE is a distinctive mark in its specific industry. With Complainant’s great success, we can fairly assume that most Internet users, especially those in the Complainant’s industry, know NYSE is a short 4-letter acronym, which stands for “New York Stock Exchange”). See Response.
The subject domain name differs from the mark through the addition of the letter “s” and the gTLD “.com.” Panels have commonly held that adding the letter “s” to a mark to form a domain name does not alleviate confusing similarity. See Paperless Inc. v. ICS Inc, FA 1629515 (FORUM Aug. 17, 2015) (establishing a confusing similarity between the paperlessspost.com domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”).
Here, the addition of the letter “s” to the domain name does not distinguish the name from the NYSE mark because pluralizing Complainant’s trademark does not avoid the confusing similarity between the disputed domain name and the mark. Moreover, with this particular subject domain name, the addition of the letter “s” to Complainant’s NYSE mark is also confusingly similar because the additional letter “s” is directly adjacent to the letter “e” on the keyboard, making it likely that consumers would mis-type the Complainant’s NYSE mark. This confusing similarity is further likely because Complainant’s mark ends with the letters “se” (i.e., nyse), thus making the additional of the letter “s” at the end of the subject domain name even more likely to be mistyped when consumers attempt to enter nyse (that is, they may type “nyses” rather than the correct letters “nyse.”
Common misspellings and/or typographical variations have consistently been found to satisfy the confusingly similar prong of ¶ 4(a)(i) of the Policy. See AltaVista v. O.F.E.Z. et al., Case No. D2000-1160 (WIPO Feb. 28, 2001) (finding that a misspelling or typographical variation of a well‑known mark is deemed to be “confusingly similar” to the complainant’s mark in violation of paragraph 4(a)(i) of the UDRP); See also AltaVista Company v. Astavista.com, FA 95251 (FORUM Aug. 17, 2000) (finding altaivsta.com and astavista.com confusingly similar to ALTAVISTA); Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, Case No. D2000-0330 (WIPO June 7, 2000) (finding domain names brtannica.com, britannca.com, and britannica.com virtually identical and confusingly similar to complainant’s marks “BRITANNICA” and britannica.com).
Lastly, numerous panels have found that adding the gTLD “.com” is not relevant to an analysis of confusing similarity. See Reese v. Morgan, FA 917029 (FORUM Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Taken together, the Panel finds that the subject domain name, nyses.com, is confusingly similar to the NYSE mark according to the Policy ¶ 4(a)(i).
Complainant has established the requirements of this element of the Policy.
Under the Policy, once a complainant asserts a prima facie case against the respondent, the respondent then bears the burden of proving that it has rights or legitimate interests in the subject domain name pursuant to ¶ 4(a)(ii) of the Policy. AOL LLC v. Gerberg, FA 780200 (FORUM Sep. 25, 2006). A complainant establishes a prima facie case by a showing that (1) a respondent is not known by a complainant’s marks or (2) authorized to use the marks. G.D. Searle & Co. v. Martin Mktg., FA 118277 (FORUM Oct. 1, 2002); Dunkin’ Brands Group, Inc. et al. v. Giovanni Laporta, FA 568547 (Nat. Arb. Forum Aug. 25, 2014).
Here, Complainant asserts that Respondent is not known by the subject domain name, nyses.com (or anything similar). Respondent, who has responded to the Complaint, does not deny this fact, nor does it otherwise prove that it is known by the subject domain name. The WhoIs data for the domain name further supports that Respondent is not known by the subject domain name.
Similarly, Complainant has trademark rights to NYSE (and Respondent admits this fact in its answer), and Complainant further asserts that Respondent is not authorized to use its mark as part of the subject domain name. Accordingly, the burden to prove Respondent’s rights or legitimate interest shifts to Respondent.
Respondent contends that it plans to use the disputed domain name in connection with its hosting business. Respondent provides evidence of its registration and use of other domain names and websites (unrelated to the subject domain name) in connection with its hosting business; Respondent’s contention is that these other unrelated domain names evidence its intent to develop such a business using the subject domain name. Respondent further states that the current use of the subject domain name to host a parking page is temporary. Lastly, Respondent notes that the links are nothing more than promotions for general goods and services, which are not misleading, or contrary to the Policy or any relevant law.
Other than these self-serving statements about its intent to develop a site, no evidence has been produced supporting Respondent’s “demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” Policy 4(c)(i). Moreover, the subject domain name has been registered by Respondent for several years, which further undermines Respondent’s argument.
Respondent further contends that registering a word and using it for purposes unconnected with Complainant or its activities does not violate Complainant’s trademark rights or the Policy. Cast in the light of whether or not Respondent has demonstrated its rights and legitimate interest in the subject domain name under the Policy, the question becomes, simply, whether Respondent’s use of a domain name that is confusingly similar to a well-known mark to host a commercial parking page establishes rights or a legitimate interest under the Policy.
Numerous panels have held – as this Panel does today – that using a domain name that is confusingly similar to a well-known mark to resolve to a commercial parking page to host unrelated advertisements is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See SimScale GmbH v. Oliver Sharp, FA1401001537384 (FORUM February 3, 2014) (holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as 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).”).
Complainant has established the requirements of this element of the Policy.
Complainant claims that Respondent registered and is using the domain name in bad faith for several reasons. First, Complainant claims that Respondent has registered the domain name for the purpose of selling it to the trademark owner for profit, as is evidenced by Respondent’s offer to sell the domain name for $10,000 USD. Second, Complainant claims that Respondent registered and is using the disputed domain in bad faith based on Respondent’s attempt to confuse and attract Internet users to a parking page for Respondent’s commercial gain. Finally, Complainant claims that Respondent registered and is using the domain name in bad faith because, in view of the fame and notoriety of Complainant’s NYSE mark, it is inconceivable that Respondent could have registered the nyses.com domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Each of these theories is discussed in further detail below.
Panels routinely find bad faith where a respondent attempts to sell a domain name that is confusingly similar to a trademark to the mark owner for an excessive amount. See George Weston Bakeries Inc. v. McBroom, FA 933276 (FORUM Apr. 25, 2007) (concluding that the respondent registered and was using the gwbakeries.mobi domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Here, Respondent’s offer to sell the subject domain name is highly probative of its bad faith (given that the domain name is confusingly similar to a well-known mark and that Respondent has put forth no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). Respondent, however, contends that its offer to sell the domain name to Complainant for $10,000 USD is inadmissible because it was made “Without prejudice.”
Generally, the details of settlement negotiations (i.e., offers to settle or compromise a claim) are not admissible as evidence in subsequent proceedings. However, this general rule does not bind this Panel. Under paragraph 10(d) of the Rules, the panel “shall determine the admissibility of evidence.” Thus, as a technical matter, the general rule regarding the admissibility is not binding on this Panel.
The Panel recognizes that there is a split in authority on this point. Several Panels have adopted the dictates of United States Federal Rule of Civil Procedure 408, which excludes evidence of offers of compromise after the dispute has begun. See LifePlan v. Life Plan, Case No. FA0005000094826 (NAF July 13, 2000); Milwaukee Radio Alliance, L.L.C. v. WLZR-FM LAZER 103, Case No. D2000-0209 (WIPO June 5, 2000); Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001) (finding that offers to sell a domain name made during settlement discussions are inadmissible). Other Panels have not applied the principal, and have looked to evidence of offers to sell the domain name (one of the express bad faith elements, Policy para 4(b)(i)). CBS Broadcasting, Inc. v. Saidi, Case No. D2000-0243 (June 2, 2000) (noting different aims of Policy and Rule 408); Motorola, Inc. v. NewGate Internet, Inc., Case No. D2000-0079 (WIPO Apr. 20, 2000) (3-member Panel; one Panelist in dissent on this point); Netvault Ltd v. SV Computers, Case No. D2000-0095 (WIPO July 19, 2000) (same).
This Panel is of the opinion that the Policy’s goal of preventing cybersquatting would not be furthered by per se excluding evidence of a registrant’s offer to sell the domain name simply because it is marked “Without prejudice.” To do otherwise would permit cybersquatters to simply mark all offers as “Without prejudice” and would remove this highly probative evidence from the bad faith calculus. The Panel finds the reasoning of the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., Case No. WIPO D2000-1525 (January 29, 2001) particularly helpful. In Magnum Piering the panel stated:
It is true that canny complainants might attempt to entice innocent registrants into making offers they would not otherwise have made. However, an offer to sell is of no moment if a registrant has a right or legitimate interest in the domain name at issue, and so this scenario is not threatening to legitimate registrants. Nor does an offer to sell automatically mandate a finding of bad faith; the Panel is still obligated to review the entire record to determine if bad faith exists. But the history leading up to the adoption of the Policy suggests that an offer to sell, absent a legitimate interest and absent contrasting evidence of good faith, is so likely to be evidence of bad faith registration and use that its exclusion is likely to result in injustice. By contrast, Rule 408 covers an enormous range of situations, and reflects a policy judgment that, on average, an offer to compromise is not reliable evidence of responsibility or intent. Moreover, parties in federal court litigations have other tools including discovery and cross-examination to help bring the true facts to the surface, thus making submission of settlement offers less important; UDRP Panels, in contrast, can rely only on a truncated paper record, and this Panel agrees with those that have held that Rule 408 should not operate to further limit the information available to Panels.
Moreover, Panels are fully capable of assessing whether an offer of sale reflects a good faith effort to compromise or part of a bad faith effort to extort.
Accordingly, pursuant to paragraph 10(d) of the Rules, and supported by the cases cited above, this Panel will consider the evidence of Respondent’s offer to sell the domain name to Complaint for $10,000 USD.
Here, the domain name is confusingly similar to a well-known mark and Respondent has put forth no demonstrable evidence showing its preparations to use the domain name in connection with a bona fide offering of goods or services. Upon receiving Complainant’s cease and desist letter, Respondent offered to sell the domain name for $10,000 USD – an amount excessively greater than its document out of pocket costs associated with registering the domain name. This is precisely the kind of abusive behavior the Policy was designed to address. Policy para 4(b)(ii). As such, Respondent’s offer, alone, supports a finding of bad faith registration and use of the domain name.
Complainant next claims that Respondent registered and is using the disputed domain in bad faith based on Respondent’s attempt to confuse and attract internet users for commercial gain. Again, Respondent’s domain name resolves to a commercial parking page. Generally, the use of a domain name, that is not identical or confusingly similar to a mark, to host a commercial parking page does not support a finding of bad faith under the Policy. In this case, however, the subject domain name is confusingly similar to a well-known mark. It is well settled that the use of a domain name that is identical or confusingly similar to a complainant’s mark to host a parking page is evidence of bad faith. See Williams-Sonoma, Inc. v. Fees, FA 937704 (FORUM Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (FORUM May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the blackstonewine.com domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Here, in view of the confusing similarity of the domain name (merely adding the letter “s” to the well-known NYSE mark), Respondent’s use of domain names to host a commercial parking page supports a finding of bad faith under the Policy.
Complainant’s final claim regarding bad faith registration and use is that, because Complainant has no connection or affiliation with the domain name and because the NYSE mark is well-known, Respondent’s registration of the domain name demonstrates opportunistic bad faith.
It is well settled that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner supports such a finding. See Household Int’l, Inc. v. Cyntom Enters., FA 096784 (FORUM Nov. 7, 2000) (inferring that the respondent registered a well‑known business name with hopes of attracting the complainant’s customers). Here, because the NYSE mark is so obviously connected with Complainant, and because the subject domain name is confusingly similar to the well-known NYSE mark, registration by Respondent, who has no connection with Complainant, supports a finding of bad faith.
Complainant has established the requirements of this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the nyses.com domain name be TRANSFERRED from Respondent to Complainant.
_______________________________
David J. Steele, Panelist
Dated: February 25, 2017
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