The Complainant is Cantor Fitzgerald Securities, United States of America (“United States”), represented by Coates IP, United States.
The Respondent is Wanda J. Bradley, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant decided not to file an amended Complaint, but instead, sent an email to the Center on November 19, 2020, requesting that the Respondent’s identity be added to the record. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on December 22, 2020. 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 The Complainant, based in New York City, has become recognized as an international leader and provider of global financial services, including investment banking services, real estate services, and equities, among others. Founded in 1945, the Complainant, along with its affiliated group of companies, later expanded into a global financial services firm serving clients worldwide. The Complainant and its affiliates have approximately 12,000 employees worldwide serving institutional clients from its offices in 39 cities across North America, Europe, Asia Pacific and the Middle East. The Complainant owns numerous trademark registrations for CANTOR and variations thereof in many jurisdictions worldwide. The United States trademarks include, but are not limited to: CANTOR, United States Registration No. 2,682,690, registered on February 4, 2003 in International Class 36; CANTOR FITZGERALD, United States Registration No. 2,682,691, registered on February 4, 2003 in International Class 36; and CANTOR, United States Registration No. 2,895,713, registered on October 19, 2004 in International Class 36 (hereinafter referred to collectively as the “CANTOR Mark”). The Complainant owns many domain names incorporating the CANTOR Mark. The Complainant registered its domain name The Disputed Domain Name was registered on March 6, 2020. The Respondent uses the Disputed Domain Name to perpetuate a job phishing scam in which the Respondent uses emails purportedly emanating from the Complainant’s Human Resources Manager to offer individuals a position with the Complainant. The emails requested personal and confidential financial information from applicants, and those applicants were instructed to send such information to the Respondent at the Disputed Domain Name via the email address solely controlled by the Respondent. In addition, the Respondent used the Disputed Domain Name to resolve to the Complainant’s official website. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, - the Disputed Domain Name was registered and is being used in bad faith as the Respondent is using the Disputed Domain Name as part of a job phishing scheme. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks. It is uncontroverted that the Complainant has established rights in the CANTOR Mark based on its many years of use as well as its registered trademarks for the CANTOR Mark in the United States and other jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the CANTOR Mark. The Disputed Domain Name Moreover, as stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a descriptive or dictionary word to a trademark is insufficient to prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its CANTOR Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. In addition, the Respondent is using the Disputed Domain Name for the purpose of trading on the Complainant’s CANTOR name and Mark to deceive unwitting Internet users into thinking that they arrived at a site belonging to the Complainant, which it does not. Instead, the Respondent is using the Disputed Domain Name as part of a fraudulent job phishing scheme. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” See WIPO Overview 3.0 , section 2.13.1 . Given that the Disputed Domain Name resolves to the Complainant’s official website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Plus, the use by the Respondent of the Disputed Domain Name that incorporates the well-known CANTOR Mark in its entirety does so without rights or legitimate interests. See Gilead Sciences, v. Main Contact,WIPO Case No. D2020-0776 (finding that the disputed domain names Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy. First, by registering and using the Disputed Domain Name for commercial gain, the Respondent has exhibited bad faith. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s spam emails by creating a likelihood of confusion with the Complainant’s name and Mark as to the source, sponsorship, affiliation, or endorsement of those emails. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367 (finding paragraph 4(b)(iv) of the Policy applicable where the disputed domain name was not used in a typical website, but rather used in an email address to send scam emails). As demonstrated above, the Respondent is using the Disputed Domain Name to operate a phishing scheme aimed at defrauding the Complainant and its customers. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” See WIPO Overview 3.0, section 3.4. Second, the Panel finds that the Respondent had actual knowledge of the Complainant and its CANTOR Mark when it registered and used the Disputed Domain Name. The Respondent redirects the Disputed Domain Name to the Complainants’ official website located at “www.cantor.com”, providing evidence that the Respondent is attempting to identify as or associate with the Complainant, indicative of bad faith. Moreover, the Respondent also used the Disputed Domain Name as a job phishing scheme to send spam emails to the Complainant’s customers allegedly originating from the Complainant’s Human Relations Manager. The customer was directed to complete and return a job application requesting confidential financial information relating to the alleged job offer. Such misuse of the CANTOR Mark in the Disputed Domain Name and the use of the CANTOR Mark on the emails sent to the Complainant’s customers demonstrated bad faith. Any statement that the Respondent did not have actual knowledge of the Complainant and its CANTOR Mark before registering and using the Disputed Domain Name would lack credulity. The Disputed Domain Name was registered in 2020, long after the Complainant first began using the CANTOR Mark in commerce in 1947. The Panel finds it highly likely that the Respondent had actual knowledge of the Complainant’s CANTOR Mark when registering the Disputed Domain Name, demonstrating bad faith. Finally, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s CANTOR Mark and to drive Internet traffic seeking the Complainant’s services to the Complainant’s official website, to which the Disputed Domain Name resolved, and to send spam emails to the Complainant’s customers as part of a job phishing scheme. See paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, Lynda M. Braun
Sole Panelist
Date: December 30, 2020
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