WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cantor Fitzgerald Securities v. Kabir S Rawat
Case No. D2013-1257
1. The Parties
The Complainant is Cantor Fitzgerald Securities of New York, New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (“U.S.”).
The Respondent is Kabir S Rawat of Gurgaon, India.
2. The Domain Name and Registrar
The disputed domain name <cantorfitzgeraldsecurities.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2013.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 16, 2013. 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
Formed over 65 years ago, the Complainant has become widely recognized as an international leader in global financial services including without limitation, broker-dealer, domestic and international equities, capital markets, and investment banking services. The Complainant is particularly well-known for its securities work. The Complainant has approximately 1,600 employees serving more than 5,000 institutional clients in 30 locations around the globe.
The disputed domain name <cantorfitzgeraldsecurities.com> was registered on March 27, 2013. It resolves to a parking page displaying pay-per-clicks ads in the field of finance. The page also announces that the disputed domain name is for sale.
5. Parties’ Contentions
The Complainant submits first that it has become widely recognized as an international leader in global financial services. It has spent significant sums to advertise the CANTOR mark and maintain websites at domain names incorporating the CANTOR mark worldwide.
The Complainant also explains that it has used its trademark CANTOR and CANTOR FITZGERALD together with other terms including without limitation Cantor Fitzgerald Securities being used for its securities business. The name Cantor Fitzgerald Securities is also used by affiliates of the Complainant as a trade name.
Then, the Complainant contends it owns many valid and subsisting U.S. trademark registrations for the CANTOR trademark in connection with financial services, including, without limitation, CANTOR FITZGERALD, CANTOR FITZGERALD EBS, CANTOR, CANTOR DIRECT, CANTOR MORNING NEWS and CANTORCO2E. The Complainant also owns a number of other valid and subsisting trademark registrations for the CANTOR trademark in connection with financial services in a variety of other countries throughout the world including without limitation India, Argentina, Australia, Brazil, Canada, China, the countries of the European Community and Japan. Trademark copies are submitted by the Complainant in annex.
Domain names that incorporate the CANTOR mark in connection with websites for the Complainant’s financial services are also owned by the Complainant.
The disputed domain name is used for a website which benefits to the Respondent through monetized click-through advertising. Such advertising promotes the goods and services of the Complainant’s competitors. The Respondent has also tried and is currently trying to sell the disputed domain name through a domain name auction service.
According to the Complainant, the disputed domain name <cantorfitzgeraldsecurities.com> is identical and/or confusingly similar to the Complainant’s CANTOR trademarks and domain names. It wholly incorporates Complainant’s CANTOR and CANTOR FITZGERALD registered trademarks as well as its Cantor Fitzgerald Securities trade name. The Respondent’s inclusion of the word “securities” in the disputed domain name does not exclude the likelihood of confusion.
Then, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. Its reasoning is based on the following elements. The Complainant’s mark predates the first use of the disputed domain name. There is no relationship between the Complainant and the Respondent. No authorization was given to the Respondent by the Complainant. The Respondent is making a commercial use of the disputed domain name which is not legitimate. The Respondent uses the disputed domain name for commercial links in the field of the Complainant. The Respondent as the one who chose the disputed domain name is fully responsible for the use to which the disputed domain name is put and in particular for what appears on the web pages placed at the disputed domain name.
For the Complainant, there are a number of reasons, other than just selecting the CANTOR trademark, for believing that the Respondent registered and used the disputed domain name with full knowledge of the Complainant’s rights in the CANTOR trademarks and related domain names in connection with financial services.
First, graphics on the website at the disputed domain name are of a financial subject matter. Second, the Respondent chose to use the unequivocally financial term “securities” as part of the disputed domain name. Third, the Respondent actually refers to the website at the disputed domain name as “The Leading Cantor Fitzgerald Securities Site on the Net” which is a clear indication that the Respondent was aware of other websites containing the CANTOR mark. Fourth, the Respondent’s agent for selling the disputed domain name refers to it as one of its highest ranking domain names available in the financial category. Thus, the allegation that the Respondent did not have actual knowledge of the Complainant and its CANTOR trademark before registering the disputed domain name strains credulity.
The Complainant contends nevertheless, that even if the Respondent’s registration and use of the disputed domain name was pure coincidence, it would not matter because the objective notoriety of the Complainant’s CANTOR trademark overcomes any subjective ignorance of the Respondent. UDRP panels have held that where a complainant’s marks are so well-known for use in connection with a product or service, a respondent who incorporates those marks in their entirety does so without rights or legitimate interests.
The Complainant alleges that the Respondent registered the disputed domain name long after the CANTOR and CANTOR FITZGERALD trademarks became well-known, long after the Complainant began using the CANTOR trademark in domain names, and long after the Complainant obtained registrations for the CANTOR mark. A simple Google search would have obviously revealed the Complainant’s extremely effective use of the CANTOR trademark in connection with financial services. Accordingly, the Complainant considers that the Respondent, at the very least, had constructive notice of the Complainant’s rights, and there can be no legitimate use by the Respondent.
The Complainant explains that because the Complainant is a widely recognized financial institution, the CANTOR trademarks are well-known and the Respondent has no rights or legitimate interests in the CANTOR trademark, the only reason why the Respondent could have wanted to register and use a domain name incorporating or imitating the CANTOR trademark was because it knew these famous marks and wants to take advantage of the goodwill associated with them.
Specifically, the sole purpose of the Respondent appears to be benefiting from the confusion of Internet users and from the clicking through to the Complainant’s competitors via hyperlinks.
The Complainant lastly contends that the disputed domain name was registered and is being used in bad faith due to the well-known character of the trademark CANTOR. The Complainant also insists that the Respondent’s bad faith is further established by the use of the disputed domain name for monetized click-through advertising links. Many links point to other websites which offer products and services from the Complainant’s competitors. According to the Complainant, bad faith is also inferred by the offer of the disputed domain name for sale.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (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. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Complainant has sufficiently proven its rights in the trademarks CANTOR and CANTOR FITZGERALD.
The disputed domain name differs from the trademark CANTOR FITZGERALD by the addition of the descriptive term “securities”. It is now well established that the addition of merely generic or descriptive wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. (Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923, BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0434, and Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0361).
The Panel finds that the addition of the descriptive term “securities” in the disputed domain name which evokes the Complainant’s business is not enough to dispel confusion. On the contrary, the Panel finds that the word “securities” enhances the likelihood of confusion since it corresponds to services the Complainant provides (Barclays Bank PLC v. Above.com Pty Ltd, WIPO Case No. D2012-0093).
When it comes to the adjunction of the generic top-level domain (gTLD) “.com”, it is now well established that the gTLD should generally not be taken into account when evaluating the identity or similarity between the disputed domain name and the Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt, WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828).
The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not made any attempt to rebut the prima facie case made by the Complainant. Therefore, the Panel will decide this dispute on the basis of the Complainant’s undisputed contentions of facts. Although the Respondent’s default does not automatically result in a decision in favor of the Complainant, the Panel may draw negative inferences from the same (see Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The webpage that is published at the disputed domain name hosts pay-per-click links to the Complainant’s competitors’ websites. See, Inter IKEA Systems B.V. v. Domains By Proxy LLC/ Getme Ikea, WIPO Case No. D2012-2324, Elizabeth Arden, Inc. v. Fundacion Private Whois, WIPO Case No. D2012-1590, National Bedding Company L.L.C. v. Back To Bed, Inc., WIPO Case No. D2010-0106 and LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” [see also paragraph 3.8 below] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The absence of intent to use the website can also be inferred from the fact that the website contains an explicit statement that the disputed domain name is for sale (Compagnie Gervais Danone v. DomainPark Limited, WIPO Case No. D2008-0587, Rolls-Royce Motor Cars Limited v. Auto Media Holdings, WIPO Case No. D2010-0421, and John Wiley & Sons, Inc. v. BigOBot, LLC, c/o Krystal Riggs, WIPO Case No. D2011-1398). The Complainant has not licensed or authorized the use of its trademark to the Respondent and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name, so the requirements of paragraph 4(a)(ii) of the Policy are also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, a complainant needs to prove that the domain name has been registered and is being used in bad faith.
1) registration in bad faith
The Panel is satisfied that the Respondent must have been aware of the Complainant and its CANTOR and CANTOR FITZGERALD trademarks when it registered the disputed domain name.
In the Panel’s view, the fact that the disputed domain name incorporates the Complainants’ trademarks in their entirety and reproduces the Complainant’s company name evidences that the registration of the said disputed domain name was in bad faith.
The Complainant's CANTOR and CANTOR FITZGERALD trademarks have acquired considerable reputation and notoriety. The Complainant’s company name Cantor Fitzgerald Securities also appears to have been extensively used.
A trademark search would have revealed the existence of the Complainant’s prior trademark rights. The Respondent’s failure to do so is a contributory factor to its bad faith (LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling, WIPO Case No. D2008-0226).
Finally, the Complainant’s trademarks are fanciful words. The Panel concludes that it is likely that the reputation of Complainant and its trademark was the reason that decided the Respondent to register the disputed domain name. Had said mark been unknown, it would have been far less appealing in the Panel’s opinion.
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.
2) use in bad faith
“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or “commercial gain” was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).”
“Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant's trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”
The Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s renowned trademark as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning.
The Respondent is likely aware of the existence of the Complainant’s trademarks CANTOR and CANTOR FITZGERALD. In light of this knowledge, the Respondent uses the disputed domain name as a “parking page displaying pay-per-click ads” which should be considered as use in bad faith. In previous UDRP decisions, it was recognized that “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” (IKEA Systems B.V. v. Domains By Proxy LLC / Getme Ikea, WIPO Case No. D2012-2324, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258).
The Panel also finds that the disputed domain name is so obviously connected with the Complainant and its services that its very use by a third party with no connection with the Complainant suggests opportunistic bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The fact the disputed domain name is offered for sale also infer a finding of use in bad faith in the Panel’s view (Academy of Motion Picture Arts and Sciences v. This Name Is For Sale, WIPO Case No. D2005-1063).
For all of these reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <cantorfitzgeraldsecurities.com> be transferred to the Complainant.
Date: August 30, 2013