WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cantor Fitzgerald Securities and Cantor Index Limited v. zhangyu0802 and Lidechag
Case No. D2012-1207
1. The Parties
The Complainants are Cantor Fitzgerald Securities of New York, United States of America and Cantor Index Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Kilpatrick Townsend & Stockton LLP, United States (“US”).
The Respondent is zhangyu0802 of Shanghai, China and Lidechag of Shanghai, China.
2. The Domain Names and Registrars
The disputed domain name <cantor-fsa.com> is registered with Shanghai Yovole Networks, Inc. and the disputed domain name <cantorfsa.com> is registered with Bizcn.com, Inc (together “the Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2012. On June 14, 2012, the Center transmitted by email to Shanghai Yovole Networks, Inc. and Bizcn.com, Inc. a request for registrar verification in connection with the Domain Names. On June 15, 2012, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the named Respondent is listed as the registrant and providing the contact details. On June 18, 2012, Shanghai Yovole Networks, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain name which differed from the named Respondent (PrivacyProtect.org of Queensland, Australia) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 20, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 25, 2012.
The Center verified that the Complaint together with the amended 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”).
On June 20, 2012, the Center notified the parties in both English and Chinese that the language of the Registration Agreements in this case are Chinese. On June 24, 2012, the Complainant requested that English be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding within the specified due date.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on July 27, 2012. 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 Complainants together with its affiliates are a well-known provider of global financial and technology services, and in particular, specialized services in the areas of computerized equity and fixed income capital markets and brokerage services. The Complainants and their predecessors in title have been in the financial services business since 1945 when they established a brokerage service in New York under the name Cantor Fitzgerald. The Complainants have about 1,400 employees in offices in more than 30 locations around the world.
The Complainants have used the mark and name CANTOR in commerce since 1947 in relation to their financial services. These services are provided under a family of trade marks and trade names incorporating the term “Cantor”. These include CANTOR, CANTOR FITZGERALD, CANTOR EXCHANGE, CANTOR INDEX, CANTOR DIRECT, CANTOR GAMING and CANTOR CO2E. The Complainants also own many registered trade marks around the word for the CANTOR family of trade marks including in the US under trade mark registration numbers 2682690, 2895713, 3170687 and 4015683 and in the European Union under Community trade mark registration numbers 3380541 and 2302966. The Complainants and their affiliates own and operate various websites containing the CANTOR mark including the websites connected to the following domain names <cantor.com>, <cantorfx.com>, <cantorcapital.com>, <cantor.co.uk>, <cantorindex.co.uk> and <cantorcfds.co.uk>.
<cantorfsa.com> was registered on October 7, 2011 and <cantor-fsa> was registered on December 6, 2011. The Domain Names were connected to websites (“the Websites”) that were identical or nearly identical to one another and which purported to be the websites of one of the Complainants, Cantor Index Limited and the content include the use of the Complainants’ CANTOR trade marks as well as content from the previous websites of the Complainants. As of the date of this decision, the Websites are no longer active.
5. Parties’ Contentions
The Complainants contend that the Domain Names are identical or confusingly similar to the CANTOR trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainants request transfer of the Domain Names.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainants must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issues
(i) Consolidation of Proceedings
Paragraph 3(c) of the Rules provides the basis for a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The UDRP panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in cases concerning consolidation of multiple respondents and extracted the following general principles:
1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative service provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, the Panel notes the following:
(i) Each of the Domain Names incorporate the Complainants’ CANTOR trade mark in its entirety.
(ii) Each of the Domain Names is connected to websites containing identical or nearly identical content, both of which purport to be the websites of the Complainants and bear the Complainants’ CANTOR trade marks;
(iii) The Websites are identical or nearly identical to the websites connected to the domain names <ukcantor.com>, <ukcantor.net>, <ukcantorhk.com> and <cantorint.com> which were the subject of UDRP proceedings (Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, KangTuo, WIPO Case No. D2012-0154) in which the Complainants were successful;
(iv) The email addresses posted on the “Contact Us” pages of the Websites include the use of domain name <ukcantor.com> which was the subject of the UDRP proceedings referred to in (iii) above;
(v) The Websites are also identical or nearly identical to the websites connected to domain names which were the subject to two other WIPO decisions, Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index, WIPO Case No. D2010-0807 (<cantoruk.com>) and Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, WIPO Case No. D2010-2204 (<cantoruk.net>) in which the Complainants were successful.
As neither of the registrants in these proceedings or the Websites have been authorized by the Complainants, this reflects that the Complainants have been the target of common conduct based on the registration and use of the Domain Names and such conduct clearly affects the Complainants’ rights in the CANTOR trade marks.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainants have established that it is more likely than not that the Domain Names are subject to the common ownership or control of either zhangyu0802 or Lidechag. The Panel finds such common control to justify consolidation of the Complainants’ claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainants pursuant to paragraph 10(e) of the Rules.
(ii) Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from both registrars, the language of the registration agreements is Chinese.
The Complainants submit in paragraphs 18 to 23 of Section V of the Complaint as well as in submissions dated June 23, 2012 that the language of the proceeding should be English. The Complainants’ submissions as to why the language of the proceeding should be English are very detailed and helpful. The Panel will not set out all the reasons given save to highlight the point that the Respondents are proficient and able to communicate in English as the content of the Websites is in English and has been set up to give visitors the impression that they are the websites of the Complainants.
The Panel accepts the Complainants’ submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainants may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have established that they have rights to the trade mark CANTOR.
The threshold test for confusingly similarity typically involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case, the Complainants’ registered trade mark CANTOR is the dominant portion of the Domain Name. The Panel finds the addition of the acronym for the Financial Services Authority (“FSA”), the regulator in the United Kingdom (“UK”) of the industry which the Complainants’ operate, after the word CANTOR in the Domain Names does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainants have rights.
D. Rights or Legitimate Interests
The Complainants have not authorized or licensed the Respondent to register or use the Domain Names and accompanying Websites. The Websites purport to be or be connected to one of Complainants, Cantor Index Limited. It even provides the contact information of the Complainants. It is clear that the Respondent is trying to pass itself off as the Complainants. When a respondent attempts to pass itself off as the complainant, it is evidence that the respondent lacks rights or legitimate interests in the domain name (see Fandango, Inc. v. zhangyanan, NAF Claim No. 1335297).
The Panel finds that the Complainants have made out a prima facie case, a case calling for an answer from the Respondent. As the Respondent failed to respond to the Complainants’ contentions, it therefore has failed to displace the assertion on the part of the Complainants that the Respondent has no rights or legitimate interests in the Domain Names. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that a domain name has been both registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainants’ CANTOR trade mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainants’ trade mark in its entirety and also includes the acronym of the regulator of the industry in the UK in which the Complainants’ operate is, in the Panel’s view, evidence that the registration of the Domain Names was in bad faith.
With respect to the use of the Domain Names, the Respondent has set up websites that purport to be the Complainants by bearing the Complainants’ name, trade marks, content belonging to the Complainants’ previous websites as well as the Complainants’ contact details. The Respondent also appears to be engaged in a phishing scheme to defraud Internet users. The Websites ask users to provide their names, email addresses, investment or wire transfer information and other personal details. This shows a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites are authorized or endorsed by the Complainants. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes that the registration and use use of the Domain Names was in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <cantor-fsa.com> and <cantorfsa.com> be transferred to the Complainants.
Dated: August 15, 2012