The Complainant is Cantor Fitzgerald Securities, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Sandra Hilbrow, South Africa.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 10, 2021. 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 BackgroundThe Complainant is a United States company that operates a global financial services business founded in 1945 with a presence in 35 cities around the world. The Complainant holds a portfolio of trademark registrations that include the mark CANTOR or variations thereof, including United States Registration No. 2682691 for the trademark CANTOR FITZGERALD, registered on February 4, 2003.
The Complainant owns several domain names that incorporate its trademark including
The Disputed Domain Name
The Complainant cites its United States Registration No. 2682691 for the trademark CANTOR FITZGERALD, registered on February 4, 2003, and other registrations in the United States and Europe, for the mark CANTOR FITZGERALD as prima facie evidence of ownership.
The Complainant submits that the mark CANTOR FITZGERALD is widely known globally and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BELFIUS trademark and that the similarity is not removed by the addition of the letters “bk”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a webpage that purports to offer banking and financial services under the name Cantor Fitzgerald Bank.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that “[t]he disputed domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark CANTOR FITZGERALD in numerous jurisdictions, including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,
WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the CANTOR FITZGERALD trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark CANTOR FITZGERALD; (b) followed by the letters “bk”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,
WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “cantorfitzgeraldbk”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the letters “bk”: see, e.g., Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,
WIPO Case No. D2006-0033.
The Panel finds that the addition of the letters “bk” does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Many previous UDRP panels have recognized that “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. The nature of such additional term(s) may however bear on assessment of the second and third elements.” (WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) its trademarks predate the Respondent’s adoption of the Disputed Domain Name; (ii) the Respondent has not been commonly known by the Disputed Domain Name; (iii) the Respondent is making unlicensed use of the Complainant’s trademarks; and (iv) the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks because the “Respondent has used the Domain Name to attract and redirect web traffic to a website that purports to offer financial services under the CANTOR FITZGERALD mark and name”. In this regard, the Complainant also notes “(i) the notoriety of Complainant’s longstanding CANTOR Marks and financial services, (ii) the fact that Respondent has no rights in those marks, and (iii) that Respondent has used false contact information and appears to be engaged in a phishing scheme”.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra.
Further, where the composition of the Disputed Domain Name identifiably contains the Complainant’s entire trademark, the potential for phishing or fraud attendant on a financial services business, in this Panel’s view carries “a risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see Guerlain S.A. v. PeiKang,
WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”); and WIPO Overview 3.0, section 2.5.1).
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online phishing scam using a website pretending to be associated with the Complainant operating under the brand CANTOR FITZGERALD for the purpose of misleading potential consumers, based on the wide recognition of the Complainant’s mark CANTOR FITZGERALD, with the intention to deceive visitors to the fake website into submitting personal information and, possibly, sensitive financial information.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy requires that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The examples of bad faith registration and use in the Policy, paragraph 4(b), are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230).
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, noting the distinctiveness of the Complainant’s trademark CANTOR FITZGERALD and the nature of its financial services business, it is most improbable that the Respondent might have registered the Disputed Domain Name without knowing of the Complainant’s trademark CANTOR FITZGERALD. This Panel accepts the Complainant’s evidence of the “parasitic” website purporting to be an authorized website of the Complainant in relation to its supposed banking business, as evidence that the Respondent was well aware of the Complainant’s trademark CANTOR FITZGERALD when registering the Disputed Domain Name.
In addition, a gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by 18 years.
On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive visitors to its webpage into believing it was a legitimate webpage hosted from a domain name associated with the Complainant’s CANTOR FITZGERALD brand. The obvious risk of deception or confusion as to the origin of such a website, or its putative affiliation with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.4.
The Panel finds that the most likely reason for the Respondent registering the Disputed Domain Name, using false contact details (noted to be in breach of its registration agreement), and then used it to represent that it is a bank that is somehow connected with the Complainant on the website, and asked visitors to the website for their personal information by inviting them to “book an appointment”, is that the Respondent was attempting to perpetrate a fraud.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark CANTOR FITZGERALD and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by creating a website that pretends to be associated with or authorized by the Complainant, for the purpose of seeking to obtain personal information, and possibly sensitive financial information, in an attempt to defraud potential customers of the Complainant, an activity that falls into a category of conduct known as “phishing”. Numerous previous UDRP panels have held that the registration and the use of a disputed domain name in connection with a fraudulent phishing scheme constitutes bad faith under the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,
WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163 and Cantor Fitzgerald Securities v. Wanda J. Bradley,
WIPO Case No. D2020-3051.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Nicholas Weston
Sole Panelist
Date: December 15, 2021