WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cetera Financial Holdings, Inc. v. Whois Privacy Protection Service
Case No. D2013-1831
1. The Parties
The Complainant is Cetera Financial Holdings, Inc. of El Segundo, California, United States of America, represented by Pryor Cashman, LLP, United States of America (“U.S.”).
The Respondent is Whois Privacy Protection Service of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <ceteranetworksonline.com> is registered with Bizcn.com, Inc. (the “Registar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2013. On October 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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 November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2013.
The Center appointed Christopher J. Pibus, David, W. Quinto and Dr. Hong Xue as panelists in this matter on December 27, 2013. The Panel finds that it was properly constituted. Each member of 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 Cetera Financial Holdings, Inc. is a California investment business, and operates through 4 affiliated companies (Cetera Advisors LLC, Cetera Advisor Networks LLC, Cetera Investment Services LLC and Cetera Financial Specialists LLC). The Complainant was formed in 2010 to provide broker-dealer services and advisory programs to financial professionals and institutions.
Under the name Cetera Advisor Networks LLC, the Complainant operates a website at “www.ceteraadvisornetworks.com” to market its services to a network of financial advisors. Through its website, the advisors can access the Complainant’s Smartworks system, which processes transactions for securities and other investment products.
The Complainant owns the following U.S. trademark registrations:
C CETERA FINANCIAL GROUP, U.S. Registration No. 3,953,736 in Class 35 and 36, registered on May 3, 2011, for various financial services.
C CETERA, U.S. Registration No. 4,386,542 in Class 35 and 36, registered on August 20, 2013 for various financial services.
CETERA, U.S. Registration No. 4,386,541, in Class 35 and 36, registered on August 20, 2013 for various financial services.
In this proceeding, the Respondent is identified only as Whois Privacy Protection Service, reflecting that the actual registrant has chosen to implement a “private” domain name registration to protect its identity. The Respondent’s website at “www.ceteranetworksonline.com” is a replica of the Complainant’s website at “www.ceteraadvisornetworks.com”, including headers, tabs, text and images. Given the nature of the activities undertaken by the Respondent at its website, it is not surprising that the Respondent wishes to conceal its identity and contact particulars. The Respondent registered the disputed domain name on October 1, 2013.
5. Parties’ Contentions
The Complainant asserts its registered rights to the CETERA trademarks, described above in section 4, and relies on its use of these marks in the financial services field, since 2010. Its earliest registration dates back to 2011, and all 3 of its registrations predate the registration of the disputed domain name.
The Complainant submits that the disputed domain name is confusingly similar to its registered marks for the following reasons: (1) it incorporates the entirety of the word mark CETERA; (2) the addition of the descriptive words “networks online” is insufficient to avoid confusion; and (3) actual confusion has occurred among consumers.
In terms of rights and legitimate interests, the Complainant notes that the Respondent has never been authorized to use the CETERA marks and is not commonly known by the name “Cetera”. The Respondent’s creation of a virtual replica of the Complainant’s website, which appears to be intended to mislead Internet users and to unlawfully gather information from them, is submitted as compelling evidence to establish the absence of rights or legitimate interests.
Finally, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant relies on the characterization of the Respondent’s conduct as deliberate phishing, intended to deceive and defraud Internet users through the adoption of a confusingly similar domain name, and an associated website which has been designed as an outright counterfeit of the Complainant’s own operating website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established its rights in the CETERA trademarks by virtue of its U.S. registrations. The Respondent’s domain name is confusingly similar to the registered marks, in that it incorporates the entirety of the distinctive word “cetera” as its first and dominant element. The use of the generic terms “networks online” in place of “advisor networks” only serves to increase the likelihood of confusion as these terms suggest an association with the Complainant’s business operated under the Cetera Advisor Network name.
The Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the evidentiary record submitted in this proceeding, the Panel finds that the Complainant has an established reputation in the trademark CETERA in association with financial and advisory services, based on the use of its business name, related domain names and its registered trademarks.
The Panel accepts that the Complainant has not authorized or licensed the Respondent to use the disputed domain name in association with financial advisory services or otherwise. The Panel further accepts that the Respondent is not commonly known by the name “Cetera”, and does not own any trademark rights in the trademark CETERA. The Complainant’s evidence shows that the Respondent has in fact created a mirror image of its operating website, down to the smallest detail including the copyright and legal notices on individual pages. The Respondent has deleted the original contact information for the Complainant and inserted its own references, so that users will be diverted to the Respondent. As a result, the Respondent’s use of the disputed domain name will lead Internet users into a phishing scheme, that is: “the criminally fraudulent process of attempting to acquire sensitive financial information such as user names, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication” (Crédit Industriel et Commercial S.A., Banque Fédérative du Crédit Mutuel v. Michel Dupont, WIPO Case No. D2009-1498). The Panel finds that the Respondent’s use of a confusingly similar domain name in association with a website which is a replica of the Complainant’s website is clearly not evidence of a bona fide use or of any legitimate rights or interests on the part of the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, the Complainant has presented overwhelming evidence of bad faith on the part of the Respondent. The registration and use of a confusingly similar domain name in association with the operation of a replica website, is exactly the sort of conduct that cries out for the remedies available under the Policy. The Respondent’s phishing behaviour constitutes cybersquatting in one of its most egregious forms, in that it is calculated to deceive Internet users by its every feature, beginning with the disputed domain name itself, and then extended and elaborated through the meticulously replicated features of the associated website.
The Panel has no hesitation in concluding that the disputed domain name was registered in bad faith, as the Respondent must have known exactly what it was doing, when it registered the disputed domain name modeled on the Complainant’s distinctive mark, and then proceeded to launch and operate its fraudulent website, presenting itself to the world as if it were in fact the Complainant’s business. The Panel approves the principles enunciated in prior UDRP decisions on phishing, including: Nordea Bank AB v. Domainsecrecy.com, WIPO Case No. D2010-1818; and the Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883/Lauren Terrado, WIPO Case No. D2012-2093.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy.
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 <ceteranetworksonline.com> be transferred to the Complainant.
Christopher J. Pibus
David, W. Quinto
Dr. Hong Xue
Date: January 10, 2014