The domains incorporated the NYSE trademark along with various generic terms, including ‘market’, ‘loans’ and ‘trading’.
NYSE explained that the volume of domains registered exhibit “a pattern of bad faith registration of domain names containing well-known marks”.
It claimed that the Val Sklarov, the original registrant of the domains, had registered many of the domain names “within minutes” of responding to a cease-and-desist letter from NYSE.
NYSE said that the Sklarov had “clearly registered the domain names opportunistically in bad faith”.
However, Sklarov claimed that NYSE did not operate in Ukraine, target Ukrainian customers, and had no rights to the trademark in Ukraine, which is a “sovereign country, which has its own Trademark and Patent Office and does not adhere to trademark protection on its territory afforded to third parties in other countries”.
“Further, the letters ‘Y’ and ‘S’ do not exist in the Cyrillic alphabet, so Ukrainian consumers would not be confused by the domain names,” Sklarov said.
Sklarov stated that he had been intended to launch a website named ‘New York Services Enterprise’, which will “offer mortgages, business and real estate loans, auto loans, insurance, credit cards, financial consulting, real estate sales and construction services to customers in Ukraine”.
He said he had been operating this business since March 2015 under the name “America 2030 Capital”.
However, sole panellist Daniel Banks said that each of the domains resolved to a page which states “website coming soon” and did not provide a “bona fide offering of goods or services or for a legitimate non-commercial or fair use”, proving that Sklarov lacked any rights or legitimate interests in the domains. Banks added that Sklarov’s “failure to make an active use of the domain names demonstrates its bad faith”.
All 21 domains were transferred from Sklarov to NYSE.