nasdasq.com

WIPO Arbitration and Mediation Center

Complainant is The Nasdaq Stock Market, Inc., New York, United States of America, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.

Respondent is Act One Internet Solutions of ‘s-Hertogenbosch, Netherlands.

The domain name the subject of this Complaint is <nasdasq.com>.

The Registrar is Total Registrations Ltd.

On February 11, 2003, (by e-mail) and February 14, 2003, (in hard copy), Complainant submitted to the WIPO Arbitration and Mediation Center (the "Center") a Complaint under the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Supplemental Rules (the "Supplemental Rules"). The Panel agrees that payment was properly made; that the Center rightly assessed the Complaint’s compliance with the formal requirements; and that Complaint was properly notified in accordance with paragraph 2(a) of the Rules. On March 11, 2003, Respondent submitted its Response. The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any justice court.

Complainant is the owner of the trademark NASDAQ, registered in a number of countries for financial services and operations. That NASDAQ is a world famous trademark in the field of financial services is beyond dispute.

Respondent, Act One Internet Solutions of ‘s-Hertogenbosch (Netherlands), has registered its domain name <nasdasq.com>, without dispute, well after trademark rights from the name NASDAQ were acquired by Complainant, and has no known connection with any activity or trade carried out under the trade name or trademark NASDAQ. On the other hand, Respondent operates a website at "www.nasdasq.com" offering a "demo" for future Internet services and company management services. A link to Complainant’s website is also provided.

a. Complainant claims that it is the owner of the well-known and largely used NASDAQ trademark for financial services.

b. Complainant claims that the domain name <nasdasq.com> has been registered by Respondent in bad faith. Respondent did not ignore Complainant’s trademark rights, nor has Respondent any rights or legitimate interests in respect of the domain name. In fact, Respondent tries to take advantage of those Internet users who may misspell "nasdaq" as "nasdasq" (in fact, a case of "typosquatting").

c. Complainant claims that the domain name <nasdasq.com> has been, or is being, used by Respondent in bad faith, particularly by directing visitors to a website at least in potential competition with Complainant’s business.

a. Respondent claims that both locations (Netherlands vs New York) and services are different between the websites "www.nasdaq.com" and "www.nasdasq.com", thus making any conflict unlikely.

b. Respondent claims that, through significant investments for its website, it has acquired a legitimate interest in the domain name.

c. Respondent claims that its use is not in bad faith, as evidenced by the link offered to Complainant’s own website and by the fact that there are no "trading activities" for the time being.

Under paragraph 4(a) of the Policy, the Panel should be satisfied that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered in bad faith;

(iv) the domain name is being used in bad faith.

The Panel finds that Complainant has established that it is the owner of the trademark NASDAQ for financial services. The validity of its trademarks is beyond dispute. Respondent’s domain name is so similar to Complainant’s trademark to create confusion and to benefit of possible typos ("typosquatting").

There is no evidence that Respondent has any rights or legitimate interests whatsoever in respect of a domain name confusingly similar to the well-known trademark NASDAQ. The argument that Respondent spent some money to register a domain name and create a website may be used by any infringer and cannot be regarded as acceptable under the Policy. On this point also, Complainant prevails.

Respondent, when registering the domain name, was obviously aware that NASDAQ was a trademark associated with Complainant’s services.

When it may be presumed that "the Respondent (…) knew of the renown of the Complainant’s trademarks," a finding of "opportunistic bad faith" is in order (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157 (November 27, 2000): here, the panel found that Respondent, as "an Italian citizen," could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000), the panel noted that: "<veuvecliquot.org> is so obviously connected with such a well-known product [Veuve Clicquot champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith." In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (May 17, 2000), it was also suggested that:

"the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000)]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark ."

Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLICQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainant’s EXPEDIA website" (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000)). Here, not only is NASDAQ a well-known trademark in its field, but Respondent is active in a field which cannot be regarded as very far from Complainant’s as it includes company management services.

The Panel concludes that the domain name has been registered in bad faith.

Complainant states that the domain name is being used in bad faith. Respondent claims that it clearly advertises that it is a Dutch company, that it provides a link to Complainant’s website, and that it has (so far) no commercial activities. In the Panel’s opinion, none of these arguments is crucial. Nasdaq is a world-wide operation, and hypothetically it could have a Dutch affiliate company. A link to the Complainant’s website does not, alone, establish good faith and in fact may have been included merely to circumvent the Policy. The offer of "commercial services" is not needed to establish bad faith, and at any rate the "demonstration" offered seems to be aimed at a future commercial activity. A strong impression remains that Respondent only uses "nasdasq" in order to benefit of its confusing similarity with "nasdaq" and of possible typing mistakes by Internet users ("typosquatting").

The Panel concludes that the domain name <nasdasq.com> is used by Respondent in bad faith.

Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain name <nasdasq.com> be transferred to Complainant.

Dr. Massimo Introvigne
Sole Panelist

Dated: April 1, 2003