Complainant is Cantor Fitzgerald Securities of New York, United States of America (US), represented by Kilpatrick Stockton LLP, United States.
Respondent is DNS Admin of Torrance, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cantorasia.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. On May 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 20, 2010, eNom 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 May 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 26, 2010.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 29, 2010. 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 is a provider of global financial and technology services, with approximately 1,400 employees and offices in more than 30 locations around the world.
Complainant owns numerous United States federal trademark registrations, including three on the Principal Register of the United States Patent and Trademark Office (USPTO) for CANTOR, used alone, for financial or brokerage services: US Reg. Nos. 2,682,690; 2,895,713; and 3,170,687 (stylized). Complainant also owns United States registrations for composite marks that incorporate CANTOR including: CANTOR FITZGERALD, CANTOR DIRECT, CANTOR MARKET DATA, CANTOR GAMING, CANTOR GAMING & DESIGN, CANTOR FITZGERALD MORNING NEWS, CANTOR FITZGERALD EBS, and CANTOR G3 VISION.
Complainant also owns registrations for its CANTOR marks in the Asia-Pacific Region, including People's Republic of China and Japan. The registrations in China include CANTOR (Reg. No. 6147037) in Class 38; CANTOR (Reg. No. 6147039) in Class 9; CANTOR FITZGERALD (Reg. No. 6147022) in Class 38; and CANTOR FITZGERALD (Reg. No. 6147040) in Class 9. The registrations in Japan include CANTOR (Reg. No. 5243277) in Classes 9 and 38; CANTOR (Reg. No. 5236016) in Classes 36 and 42; CANTOR FITZGERALD (Reg. No. 4785136) in Classes 9 and 36; CANTOR FITS (Reg. No. 4899619) in Classes 9, 36, 38, and 42; and CANTOR ONLINE (Reg. No. 4554356) in Classes 36 and 38. Complainant owns numerous trademark registrations for CANTOR marks in the European Union and other countries throughout the world, including Canada, Argentina, Brazil, Norway, Switzerland, Australia, and New Zealand.
Complainant and its affiliates own and use a number of Internet domain names for web sites that include the mark CANTOR, including, <cantor.com> and <cantorasiamorningnews.com>, as well as country-specific web sites such as <cantor.co.uk> (redirecting web traffic to “www.cantor.com”) and <cantorindex.co.uk>. Complainant uses the domain name <cantorasiamorningnews.com> in connection with financial services. The web site located at <Cantorasiamorningnews.com> offers a centralized collection of current financial news from multiple sources such as, by way of example, the Wall Street Journal, Bloomberg, and BBC News.
Complainant and its affiliates have promoted and offered financial products and services in Asia under the CANTOR marks. Complainant's subsidiaries or affiliates in Asia include Cantor Fitzgerald (SAR of China, Hong Kong) Capital Markets Limited and Cantor Fitzgerald (Singapore) Capital Markets Limited in Asia. In 2008, Cantor Fitzgerald (Hong Kong) established a Thailand Representative Office in Bangkok.
The Domain Name was registered by Respondent on October 21, 2009. The web site to which the Domain Name resolves includes content in Chinese in connection with advertising and the marketing of products and services unrelated to Complainant and its financial products and services.
5. Parties' Contentions
A. Complainant
Complainant contends that, as a result of its substantial marketing, advertising, and promotional efforts and activities in connection with its CANTOR marks, they have obtained significant fame in the financial realm, and the marks have acquired a high degree of public recognition and distinctiveness as symbols of the source of quality services offered by Complainant, and embody valuable reputation and goodwill belonging exclusively to Complainant.
Complainant maintains that Respondent's registration of the Domain Name, well after Complainant used, widely promoted, and registered its CANTOR marks, can hardly be attributed to a coincidence. While Respondent uses the Domain Name in connection with the advertising or marketing of products and services unrelated to Complainant, Complainant urges that Respondent has used the Domain Name in an attempt to direct Internet traffic to its web site for its own profit, and to free ride on the goodwill associated with Complainant and its products and services. Such parasitic registration and use of Complainant's name and marks are unmistakable evidence of the fact that Respondent can have no rights or legitimate interest in the Domain Name and has registered and used the Domain Name in bad faith.
Complainant states that the Domain Name is nearly identical and is confusingly similar to Complainant's well known CANTOR marks, as it incorporates the mark CANTOR exactly and in its entirety. The mere addition of the word “asia” is of no import and fails to alleviate confusion, particularly in light of Complainant's ongoing activities in Asia. The Domain Name therefore appears to be a localized sub-set of the CANTOR mark and is likely to be confused with it. Indeed, given that Cantor's affiliated business entities have offices in Asia and have conducted business there for years, the addition of “Asia” to Complainant's CANTOR name and mark adds to the confusing similarity between the Domain Name and Complainant's marks—suggesting to web users that the Domain Name is related to Complainant and its affiliates operating in Asia.
Furthermore, Complainant contends that by adopting the Domain Name incorporating the identical CANTOR mark and simply adding a geographic designation, Respondent is attempting to capitalize on Complainant's marks and name. Respondent is clearly hoping to mislead consumers into believing that the Domain Name is affiliated with Complainant to attract Internet users to Respondent's web site for Respondent's commercial gain. Given Complainant's extensive use of the CANTOR name in combination with other terms, the renown of the CANTOR marks, the fact that Complainant's affiliated entities operate in multiple cities in Asia, and the fact that Complainant owns and uses the domain name <cantorasiamorningnews.com>, consumers who see the Domain Name will reasonably believe that it is related to Complainant. Consumers who search the Internet for Complainant or its financial services by using Complainant's CANTOR name and mark may be directed to the Domain Name, thereby creating a likelihood of confusion. For all these reasons, Complainant maintains that the Domain Name is identical or confusingly similar to its CANTOR marks.
With regard to any rights or legitimate interests of Respondent, Complainant urges that because its adoption and extensive use of its CANTOR marks predate the first use of the Domain Name, the burden is on Respondent to establish rights or legitimate interest in the Domain Name. However, Complainant's marks are well-known and widely recognized, so there can be no rights or legitimate use by Respondent. Instead, based on the widespread recognition of Complainant's marks and Complainant's business presence in Asia for years, Respondent's registration and use of the Domain Name shows opportunistic bad faith.
In any event, Complainant states that Respondent cannot demonstrate or establish rights or legitimate interests in the Domain Name. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's CANTOR marks. Respondent has never been given any permission to register or use the Domain Name. Complainant does not sponsor or endorse Respondent's activities in any respect and has not provided its consent to Respondent's use and exploitation of the CANTOR marks in the Domain Name and on its affiliated web site. Moreover, Complainant states, upon information and belief, that the Domain Name is not a nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent.
Complainant maintains that Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. Because Complainant's CANTOR marks are well-known and Respondent has no rights in them, the only reason why Respondent could have wanted to register and use a domain name incorporating the CANTOR name and mark was that Respondent knew of the CANTOR marks and wanted to use CANTOR in the Domain Name in order to profit from the traffic generated by the notoriety of Complainant and its name and marks, and not for any legitimate noncommercial or fair use purpose. Respondent appears to have blatantly attempted to mislead consumers by using Complainant's name and mark in the Domain Name so as to capitalize on initial interest confusion created by the similarity of the Domain Name with Complainant and its services. Respondent is using the Domain Name to drive Internet traffic to its web site in order to offer products and services completely unrelated to Complainant. Such use of the Domain Name based on Complainant's marks to promote services unrelated to Complainant and to trade upon the goodwill associated with Complainant and its marks is not a legitimate interest or use.
Finally, Complainant alleges that Respondent has registered and is using the Domain Name in bad faith for commercial gain and to benefit from the goodwill associated with Complainant. Respondent's bad faith registration of the Domain Name is established by the fact that the Domain Name completely incorporates Complainant's CANTOR mark, was acquired long after Complainant's marks became well-known in the financial world, and is unrelated to Respondent's trade name, product names, or any business interest connected to Respondent. Respondent's bad faith is also established by the likelihood that Internet users will mistakenly believe that the Domain Name and web site are connected with Complainant and its offices or affiliates in Asia and Complainant's products and services offered in or focusing on Asia.
In sum, the fact that Respondent has targeted Complainant is obvious from the notoriety of Complainant's CANTOR marks and from Respondent's own bad faith conduct. Respondent could only have registered a domain name so confusingly similar to Complainant's marks to capitalize on the valuable goodwill associated with those marks. Based on all of the above, Complainant argues that Respondent's sole interest in the Domain Name is to profit unlawfully from it.
B. Respondent
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 transferred:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) the 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
Paragraph 4(a)(i) of the Policy is satisfied when a complainant is able to prove two necessary elements: first, that the complainant has rights in a trademark or service mark, and second, that the domain name in dispute is identical or confusingly similar to the trademark or service mark on which the complainant relies.
Here, the Panel finds that Complainant's has established rights in trademarks registered in the United States, China and Japan including CANTOR, CANTOR FITZGERALD, CANTOR FITS, CANTOR ONLINE, CANTOR DIRECT, CANTOR MARKET DATA, CANTOR GAMING, CANTOR FITZGERALD MORNING NEWS, CANTOR FITZGERALD EBS, and others. Complainant therefore has established trademark rights, in particular, in jurisdictions that are relevant given the jurisdiction where Respondent is located (i.e., the United States, according to registration records), as well as the jurisdiction at which the Domain Name may be targeted (i.e.,, China, given that the content on the web site is in Chinese).
The Panel also finds that the Domain Name is confusingly similar to Complainant's CANTOR marks. The Domain Name differs from the CANTOR mark only in that a descriptive geographic term has been added, along with the generic top-level domain “.com”. Given Complainant's goodwill and reputation, established not only in the United States but also in Asia where Complainant's affiliated business entities have conducted business for years, the addition of “asia” to Complainant's CANTOR name and mark does not diminish, but rather adds to the confusing similarity between the Domain Name and Complainant's marks. See 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”); Telemundo Network Group LLC v. LaPorte Holdings,
WIPO Case No. D2005-0966 (finding that addition of geographically descriptive term “Puerto Rico” added to confusing similarity where Complainant operated in Puerto Rico).
Accordingly, the Panel finds that Respondent's Domain Name is confusingly similar to Complainant's CANTOR marks, and therefore the condition of Paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor does it appear that Respondent is generally known by the Domain Name or authorized by Complainant to use the CANTOR trademark. See Telstra Corporation Ltd. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant's trademark). As discussed above, the CANTOR marks are well-known and widely used by Complainant in the financial services sector, and Complainant's rights in its marks predate Respondent's registration of the Domain Name. The Panel finds that the Domain Name is so confusingly similar to Complainant's distinctive CANTOR mark, that Respondent could not reasonably pretend it was intending to develop a legitimate activity. Instead, the use of the Domain Name appears to be taking advantage of the goodwill and reputation in Complainant's marks and does not represent a use in connection with a bona fide offering of goods and services, or use for any legitimate noncommercial or fair use purpose. See Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589; Chanel Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700.
In the light of the above analysis, Complainant has established prima facie evidence that none of the circumstances establishing rights or legitimate interests apply. As stressed by many UDRP decisions, in such a case the burden of proof shifts to Respondent to rebut the evidence. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,
WIPO Case No. D2002-0683; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. Respondent, however, has provided no response and thus no evidence to carry its burden. In this respect, some UDRP panels have considered that a failure by a respondent to submit a response is itself at least an implied acknowledgement by the respondent that it has no rights or legitimate interests in a disputed domain name. See e.g., Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). In any event, the Panel has reviewed the record in this case and finds nothing therein that would suggest that Respondent has any rights or legitimate interests in the Domain Name. Accordingly, because Respondent failed to submit an answer to the Complaint, and given that the allegations of the Complaint prima facie do not raise any substantial doubts, the Panelist accepts as true the allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As mentioned above, Complainant's CANTOR trademarks have acquired considerable reputation and notoriety, identifying Complainant's global operations and financial and technology services. The Panel thus agrees with Complainant that it is highly likely that Respondent registered the Domain Name in October 2009 – well after Complainant's names and marks had become widely well-known – with knowledge of Complainant's marks. Respondent appears to have intentionally registered the Domain Name, targeting Complainant's distinctive CANTOR mark while combining it with the geographical term “Asia” in the Domain Name, in order to create the impression that Respondent web site is connected with or sponsored by Complainant or its Asian business operations. There is no plausible reason for why Respondent would have otherwise registered the Domain Name incorporating the word “Cantor,” and Respondent has failed to respond to provide any such reason. Similarly, in the case Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397, the panel found as follows:
“In the present case, the Panel finds that, since Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant's trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.” Nike, Inc. v. B. B. de Boer,
WIPO Case No. D2000-1397.
The same analysis applies here. See also Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,
WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard,
WIPO Case No. DAS2003-0001; Bartercard Ltd & Bartercard International Pty Ltd . v. Ashton-Hall Computer Services,
WIPO Case No. D2000-0177.
Moreover, it appears that Respondent has been using the Domain Name to drive Internet traffic to its web site in order to advertise and/or offer products and services unrelated to Complainant. In this way, Respondent is capitalizing on the initial interest confusion created by the similarity of the Domain Name with Complainant's name and marks. Respondent's bad faith is established by the likelihood that Internet users will mistakenly believe that the Domain Name and the site to which it resolves are connected with Complainant and its offices or affiliates in Asia and its products and services offered in Asia.
This is evidence of Respondent's bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any response from Respondent, there is no attempt at any rebuttal.
7. Decision
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 <cantorasia.com> be transferred to Complainant.
Christopher S. Gibson Sole Panelist
Dated: July 5, 2010
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