WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Case No. D2010-0807 1. The Parties
Complainants are Cantor Fitzgerald Securities of New York, New York, United States of America and Cantor Index Limited of London, United Kingdom of Great Britain and Northern Ireland (collectively “Complainant”), represented by Kilpatrick Stockton LLP, United States of America.
Respondent is Cantor Index of London, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. On May 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On May 20, 2010, eNom transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 22, 2010.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 5, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a provider of global financial and technology services, with approximately 1,400 employees and offices in more than 30 locations around the world.
Complainant owns numerous United States federal trademark registrations, including three on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for CANTOR, used alone, for financial or brokerage services: United States Reg. Nos. 2,682,690; 2,895,713; and 3,170,687 (stylized). Complainant also owns United States registrations for composite marks that incorporate CANTOR including: CANTOR FITZGERALD, CANTOR DIRECT, CANTOR MARKET DATA, CANTOR GAMING, CANTOR GAMING & Design, CANTOR FITZGERALD MORNING NEWS, CANTOR FITZGERALD EBS, and CANTOR G3 VISION.
Complainant also owns many Community Trade Mark registrations for its CANTOR marks in the European Union, including CANTOR (CTM Reg. No. 3380541), CANTOR INDEX (CTM Reg. No. 2302966), CANTOR FITZGERALD (CTM Reg. No. 3283041), CANTOR FITZGERALD MORNING NEWS (CTM Reg. No. 5819743), CANTOR MARKET DATA (CTM Reg. No. 4532611) and several others. Complainant owns numerous trademark registrations for CANTOR marks in other countries throughout the world, including Canada, People's Republic of China, Argentina, Brazil, Japan, Norway, Switzerland, Australia, and New Zealand.
Complainant and its affiliates own and use a number of Internet domain names for websites that include the mark CANTOR, including, , and , as well as country-specific websites such as (redirecting web traffic to “www.”), , and . Complainant uses the websites associated with these domain names to provide information to web users about Complainant's products and services.
Complainant has promoted and offered financial products and services in the United Kingdom under its CANTOR marks for about thirty years. It currently operates multiple business entities in the United Kingdom, including Cantor Index Limited, which was established in the year 2000. Of particular relevance to this case, Complainant uses the name and mark CANTOR INDEX extensively in connection with financial services.
The Domain Name was registered by Respondent on October 21, 2009. The website to which it previously resolved was posted under the name Cantor Index Limited and included content related to Complainant and its financial products and services. 5. Parties' Contentions A. Complainant
Complainant contends that, as a result of its substantial marketing, advertising, and promotional efforts and activities in connection with its CANTOR marks, they have obtained significant fame in the financial realm, and the marks have acquired a high degree of public recognition and distinctiveness as symbols of the source of quality services offered by Complainant, and embody valuable reputation and goodwill belonging exclusively to Complainant.
Complainant maintains that Respondent's registration of the Domain Name, well after Complainant used, widely promoted, and registered its CANTOR marks, can hardly be attributed to a coincidence. Respondent is attempting to fraudulently pass itself off as Complainant by posting a website at the Domain Name that is nearly identical to Complainant's website located at “www.”. In addition to copying text, logos and the layout of Complainant's website, Respondent also lists the name and address of Cantor Index Limited for its alleged contact information for the Domain Name.
Complainant states that the Domain Name is nearly identical and is confusingly similar to Complainant's well-known CANTOR marks, as it incorporates the mark CANTOR exactly and in its entirety. The mere addition of the country abbreviation “UK” is of no import and fails to alleviate confusion, particularly in light of Complainant's use of “UK” with its mark CANTOR in the designation “Cantor Index UK” and Complainant's use of “UK” in several of its domain names registered in the “.” top-level country code domain. The Domain Name therefore appears to be a localized variant of the CANTOR mark and is likely to be confused with it. Indeed, given that Complainant has offices in the United Kingdom and has conducted business there for nearly three decades, the addition of “UK” to Complainant's CANTOR name and mark adds to the confusing similarity between the Domain Name and Complainant's marks — suggesting to web users that the Domain Name is related to Complainant and its CANTOR financial services offered in the United Kingdom.
Furthermore, Complainant contends that by adopting the Domain Name incorporating the identical CANTOR mark and simply adding the standard country abbreviation, Respondent is attempting to capitalize on Complainant's marks and name. Respondent is clearly hoping to mislead consumers into believing that the Domain Name is affiliated with Complainant to attract Internet users to Respondent's website for Respondent's commercial gain. Given Complainant's extensive use of the CANTOR name in combination with other terms, the renown of the CANTOR marks, the fact that one of Complainant's businesses operates in the United Kingdom under the name Cantor Index Limited, and the fact that Complainant owns and uses the domain names and , consumers who see the Domain Name will reasonably believe that it is related to Complainant. Consumers who search the Internet for Complainant or its financial services by using Complainant's CANTOR name and mark may be directed to the Domain Name, thereby creating a likelihood of confusion. The likelihood of confusion is magnified due to Respondent's copying of Complainant's website. For all these reasons, Complainant maintains that the Domain Name is identical or confusingly similar to its CANTOR marks.
With regard to any rights or legitimate interests of Respondent, Complainant urges that because its adoption and extensive use of its CANTOR marks predate the first use of the Domain Name, the burden is on Respondent to establish rights or legitimate interest in the Domain Name. However, Complainant's marks are well-known and widely recognized, and there can be no rights or legitimate interests of Respondent. Instead, based on the widespread recognition of Complainant's marks and Respondent's copying large portions of Complainant's website almost exactly, Respondent's registration and use of the Domain Name shows opportunistic bad faith.
In any event, Complainant states that Respondent cannot demonstrate or establish rights or legitimate interests in the Domain Name. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's CANTOR marks. Respondent has never been given any permission to register or use the Domain Name. Complainant does not sponsor or endorse Respondent's activities in any respect and has not provided its consent to Respondent's use and exploitation of the CANTOR marks in the Domain Name and on its affiliated website. Moreover, Complainant states that the Domain Name is not, nor could it be, a nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent.
Complainant maintains that Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. Rather, Respondent registered the Domain Name only for financial gain. Respondent has blatantly tried to create a false association between itself and Complainant by creating a fraudulent website that was a close copy of Complainant's website. Complainant also believes that Respondent has used the Domain Name in connection with a fraudulent phishing scheme, in order to obtain financial gain. Respondent had placed a link to a purported application form for opening an account on the website to which the Domain Name resolved, using this, upon information and belief, to harvest confidential personal information from unsuspecting web users.
Finally, Complainant alleges that Respondent has registered and is using the Domain Name in bad faith for commercial gain and to benefit from the goodwill associated with Complainant. Respondent's bad faith registration of the Domain Name is established by the fact that the Domain Name completely incorporates Complainant's CANTOR mark, was acquired long after Complainant's marks became well-known in the financial world, and is being used in connection with a fraudulent phishing scheme to defraud Internet users. In addition, the registration information in the WhoIs records for the Domain Name is false, as it refers to Complainant's name and address in London, and Respondent has also posted the same on Respondent's website. Such phishing schemes have been repeatedly held to compel a finding of bad faith registration and use. Alternatively, bad faith is demonstrated by the fact that Respondent has used the Domain Name to attempt to pass itself off as Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 transferred:
(1) the Domain Name 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. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy is satisfied when a complainant is able to prove two necessary elements: first, that the complainant has rights in a trademark or service mark, and second, that the domain name in dispute is identical or confusingly similar to the trademark or service mark on which the complainant relies.
Here, the Panel finds that Complainant has established rights in trademarks registered in the United States and the European Union, including CANTOR, CANTOR FITZGERALD, CANTOR INDEX, CANTOR FIRST, CANTOR ONLINE, CANTOR DIRECT, CANTOR GAMING, CANTOR FITZGERALD MORNING NEWS, CANTOR FITZGERALD EBS, CANTOR MARKET DATA, and others. Complainant therefore has established trademark rights, in particular, in jurisdictions that are relevant given the jurisdiction where Respondent is supposedly located, as well as the jurisdiction at which the Domain Name may be targeted.
The Panel also finds that the Domain Name is confusingly similar to Complainant's CANTOR marks. The Domain Name differs from the CANTOR mark only in that a descriptive geographic abbreviation “UK” has been added, along with the generic top-level domain “.com”. Given Complainant's goodwill and reputation, the addition of “UK” to Complainant's CANTOR name and mark does not diminish, but rather adds to the confusing similarity between the Domain Name and Complainant's marks. See Avon Products Inc. v. Jongsoo Lee,WIPO Case No. D2001-0272 (“The domain name adopts that famous mark with the addition of the geographic designation ‘korea.' The domain name therefore appears to be a localised [sic] sub-set of the famous mark and is likely to be confused with it”); Telemundo Network Group LLC v. LaPorte Holdings,WIPO Case No. D2005-0966 (finding that addition of geographically descriptive term “Puerto Rico” added to confusing similarity where Complainant operated in Puerto Rico).
Accordingly, the Panel finds that Respondent's Domain Name is confusingly similar to Complainant's CANTOR marks, and therefore the condition of paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests
The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor does it appear that Respondent is generally known by the Domain Name or authorized by Complainant to use the CANTOR trademark. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use the domain name because respondent was not licensed or otherwise permitted to use complainant's trademark). As discussed above, the CANTOR marks are well-known and widely used by Complainant in the financial services sector and, in particular, in the United Kingdom. Complainant's rights in its marks predate Respondent's registration of the Domain Name. The Panel thus finds that the Domain Name is confusingly similar to Complainant's distinctive CANTOR mark, and Respondent could not reasonably pretend it was intending to develop a legitimate activity in connection with the Domain Name. Instead, the registration of the Domain Name appears to be an intentional targeting of Complainant and its name and marks, while Respondent's use of the Domain Name appears to have been taking advantage of the goodwill and reputation in Complainant's marks in an attempt to defraud Internet users through what might be an illegal phishing scheme. See Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700.
In the light of the above analysis, Complainant has established prima facie evidence that none of the circumstances establishing rights or legitimate interests for a respondent apply. As stressed by many UDRP decisions, in such a case the burden of proof shifts to Respondent to rebut the evidence. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. Respondent, however, has provided no response and thus no evidence to carry its burden. In this respect, some UDRP panels have considered that a failure by a respondent to submit a response is itself at least an implied acknowledgement by the respondent that it has no rights or legitimate interests in a disputed domain name. See e.g., Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). In any event, the Panel has reviewed the record in this case and finds nothing therein that would suggest that Respondent has any rights or legitimate interests in the Domain Name and, quite to the contrary, that Respondent appears to have been blatantly passing itself off in bad faith as Complainant or its London-based affiliates. Accordingly, because Respondent failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise any substantial doubts, the Panel accepts as true the allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As discussed above, Complainant's CANTOR trademarks have acquired considerable reputation and notoriety, identifying Complainant's global operations and financial and technology services. The Panel finds that there is clear and unrebutted evidence in this case that Respondent targeted Complainant's CANTOR marks in a scheme of blatant passing off. Respondent registered the Domain Name in October 2009 – well after Complainant's names and marks had become well-known, and likely with knowledge of Complainant's marks. Respondent appears to have intentionally registered the Domain Name while targeting Complainant's distinctive CANTOR mark and combining it with the country abbreviation “UK,” in order to create the impression that Respondent's website was connected with or sponsored by Complainant or its UK-based business operations. Respondent copied text, logos and other elements from Complainant's website at “www.”, in an effort to defraud Internet users into believing that Respondent was affiliated with, or part of, Complainant's business entities. Indeed, Complainant has shown that there was at one time a link on Respondent's website to a form purporting to open an account for an Internet user, which collected personal data in connection with an apparently illegal phishing scheme. This is evidence of Respondent's bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any response from Respondent, there has been no attempt at any rebuttal. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Dated: July 6, 2010
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