WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited
Case No. D2010-2204
1. The Parties
Complainant is Cantor Fitzgerald Securities of New York, United States of America; Cantor Index Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Kilpatrick Stockton LLP, United States of America.
Respondent is Cantor Index Limited of Hong Kong, SAR of the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <cantoruk.net> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2010. On December 16, 2010, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 17, 2010, Todaynic.com, Inc. 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 December 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2011.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on January 19, 2011. 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 has offered financial services since 1947 under the CANTOR mark and various related marks. Complainant provided evidence of trademark registrations in the United States, the United Kingdom, in Hong Kong, SAR of China and many other countries. Complainant also uses the mark in various domain names including <cantor.com>, which was the subject of a previous UDRP Complaint against the same Respondent posing as Cantor Index Limited. Complainant also uses various other domain names incorporating “uk”, denoting its operations in the United Kingdom, which began three decades ago.
Respondent registered the <cantoruk.net> domain name on August 27, 2010, and uses it to pass itself off as Complainant.
5. Parties’ Contentions
A. Complainant contends the following:
1. Respondent’s <cantoruk.net> domain name is confusingly similar to Complainant’s CANTOR mark.
2. Respondent does not have any rights or legitimate interests in the <cantoruk.net> domain name.
3. Respondent registered and used the <cantoruk.net> domain name in bad faith.
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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Case No. FA 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); See also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 cancelled or transferred:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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
The Panel finds that Complainant has established rights in its CANTOR mark through trademark registration pursuant to Policy paragraph 4(a)(i). See Microsoft Corp. v. Burkes, NAF Case No. FA 652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, NAF Case No. FA 932344, where the panel found that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction.
Respondent’s <cantoruk.net> domain name is confusingly similar to Complainant’s CANTOR mark. The disputed domain name incorporates Complainant’s mark entirely and simply adds the geographic term “uk” and the generic top-level domain (“gTLD”) “.net”. The Panel finds that these changes do not differentiate the disputed domain name enough to avoid a finding of confusing similarity to Complainant’s mark. In fact, the addition of “uk” makes the domain name more confusing since Complainant has offices in the United Kingdom. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (“[…] it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark”); See also 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”); See also Katadyn N. Am. v. Black Mountain Stores, NAF Case No. FA 520677 (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s CANTOR mark.
The Panel finds that Complainant has met the requirements of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant alleges that Respondent lacks rights and legitimate interests in the <cantoruk.net> domain name. Complainant makes a prima facie showing in support of its allegations and therefore the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy paragraph 4(a)(ii). Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., NAF Case No. FA 1089426 (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); See also Bank of Am. Corp. v. McCall, NAF Case No. FA 135012 (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy paragraph 4(c).
Complainant asserts it has not authorized or licensed Respondent to use or register its CANTOR mark in the domain name. Although the WhoIs information identifies Respondent as “Cantor Index Limited”, the Panel finds no additional evidence that would provide a basis for finding that Respondent is commonly known by the domain name. To the contrary, Respondent has attempted to pass itself off as Complainant before. See Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, WIPO Case No. D2010-0807. The Panel concludes that Respondent is not commonly known by the <cantoruk.net> domain name under Policy paragraph 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, NAF Case No. FA 830934 (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant provided evidence that Respondent has a link at the website to an application form for allegedly opening an account with Respondent, which is used to harvest the confidential personal information of unsuspecting Internet users. This fraud, called phishing, cannot constitute a bona fide offering of goods or services. See Australia and New Zealand Banking Group Limited v. Bashar Ltd., WIPO Case No. D2007-0031, denouncing phishing, which “aims at stealing valuable information from visitors to the website and has become a serious problem […]”. Respondent clearly created the fraudulent site with the intent of capitalizing on confusion created by the similarity of the domain name and Complainant’s mark. Respondent’s domain name and website appear to relate to Complainant, when in fact there is no such connection. Such use of a domain name based on Complainant’s CANTOR mark to promote services unrelated to Complainant and to trade upon the goodwill associated with Complainant is not a legitimate use. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“We [. . .] conclude that use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”); See also eSpeed Government Securities, Inc. and Aqua Securities, L.P. v. aqua-securities, WIPO Case No. D2007-1661 (“Respondent is not using the domain name in connection with a bona fide offering of goods or services. Nor is Respondent making a legitimate noncommercial or fair use of the domain name. Rather, Respondent appears to have registered and is using the domain name solely for financial gain by passing itself off as Complainant […] and by deceiving Internet users.”).
The Panel finds that Complainant has met the requirements of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Respondent’s phishing scheme is itself an indication of bad faith registration and use under the provisions of the Policy at paragraph 4(b)(iv). See, e.g., Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031; Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614 (stating that “[phishing] is a compelling indication both of bad faith registration and use under Paragraph (b)(iv)”); See also CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 (“The Panel agrees with the Complainant that the Respondent’s motive must be to somehow cash in on the personal data thus obtained. This is a violation of the bad faith registration and use provisions of the Policy at Paragraph 4(b)(iv).”).
Respondent not only used Complainant’s mark in its domain name but also copied various elements of Complainant’s websites in an attempt to pass itself off as Complainant, further evidence of bad faith under paragraph 4(a)(iii) of the Policy. Respondent also did this with its previously held <cantoruk.com> domain name, which was transferred to Complainant in Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, supra.
The Panel finds that Complainant has met the requirements of Policy paragraph 4(a)(iii).
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 <cantoruk.net> be transferred to Complainant.
Sandra J. Franklin
Dated: January 26, 2011