Cantor Fitzgerald Securities v. WhoisByProxy Admin
Claim Number: FA1312001532954
Complainant is Cantor Fitzgerald Securities (“Complainant”), represented by Michael D. Brinton of Cantor Fitzgerald Securities, Washington, D.C., USA. Respondent is WhoisByProxy Admin (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cantorfutures.com>, registered with DomainPrime.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2013; the National Arbitration Forum received payment on December 5, 2013.
On December 5, 2013, DomainPrime.com LLC confirmed by e-mail to the National Arbitration Forum that the <cantorfutures.com> domain name is registered with DomainPrime.com LLC and that Respondent is the current registrant of the name. DomainPrime.com LLC has verified that Respondent is bound by the DomainPrime.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cantorfutures.com. Also on December 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant is recognized as an international leader and provider of global financial services including, futures, derivatives, broker-dealer, domestic and international equities, fixed income sales and trading. Complainant’s business originated in 1945, when founders Bernie Cantor and John Fitzgerald created Cantor Fitzgerald. Complainant has used the CANTOR marks since at least as early as 1947.
2. Complainant has rights in the CANTOR mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2,682,690 registered February 4, 2003).
3. Respondent’s <cantorfutures.com> domain name is confusingly similar to Complainant’s CANTOR mark. Respondent’s disputed domain name incorporates Complainant’s CANTOR mark in its entirety with the addition of the generic term “futures.” Respondent uses futures because it is a banking term “commonly used to describe contracts of sale or purchase of a security at a predetermined price on a specified future date.” Respondent also adds the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <cantorfutures.com> domain name.
a. Respondent does not own any trademark or services mark rights or registrations for the terms “cantor,” “futures,” or “cantorfutures.” Respondent registered the <cantorfutures.com> domain name on August 10, 2013 which was much later than Complainant’s first use of the CANTOR marks in 1947. Respondent is also not licensed or authorized by Complainant to use Complainant’s CANTOR marks in any way, and there is no evidence on the record including the WHOIS information suggesting otherwise.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <cantorfutures.com> domain name because Respondent has registered it for the purpose of selling it for profit. Respondent’s disputed domain name resolves to an online domain auction services where Respondent auctions off disputed domain names for $1,895.
5. Respondent registered and is using the <cantorfutures.com> domain name in bad faith.
a. Respondent attempts to sell the disputed domain name by using the <cantorfutures.com> domain name to resolve to an auction site including the phrase; “CantorFutures.com is for sale, Click here to buy CantorFurtures.com for $1,895.”
b. Respondent uses Complainant’s famous CANTOR mark to Confuse Internet users and wrongfully attract them to its resolving website for commercial gain.
c. Respondent presumably had notice of Complainant’s mark because it is well known and famous and because Respondent registered the <cantorfutures.com> domain name significantly after Complainant’s first use and registration of the CANTOR mark.
Respondent registered <cantorfutures.com> domain name on August 10, 2013.
1. Respondent’s <cantorfutures.com> domain name is confusingly similar to Complainant’s CANTOR mark.
2. Respondent does not have any rights or legitimate interests in the <cantorfutures.com > domain name.
3. Respondent registered or used the <cantorfutures.com> domain name in bad faith.
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."
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 registered by Respondent 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.
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., FA 95095 (Nat. Arb. Forum July 31, 2000) (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. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it is recognized as an international leader and provider of global financial services including, futures, derivatives, broker-dealer, domestic and international equities, fixed income sales and trading. Complainant states that its business originated in 1945, when founders Bernie Cantor and John Fitzgerald created Cantor Fitzgerald. Complainant claims that it has used the CANTOR marks since at least as early as 1947 and asserts its rights in the CANTOR mark through its registrations with the USPTO (E.g., Reg. No. 2,682,690 registered February 4, 2003). Panels have previously concluded that providing evidence of a registration with the USPTO is sufficient to establish rights in a given mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore concludes that Complainant has rights in the CANTOR mark under Policy ¶ 4(a)(i) pursuant to its registration with the USPTO.
Complainant, secondly contends that Respondent’s <cantorfutures.com> domain name is confusingly similar to Complainant’s CANTOR mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent’s disputed domain name incorporates Complainant’s CANTOR mark in its entirety with the addition of the generic term “futures.” Complainant alleges that Respondent uses futures because it is a banking term “commonly used to describe contracts of sale or purchase of a security at a predetermined price on a specified future date.” Complainant notes that Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Panels have continuously found that adding generic terms and a gTLD does not sufficiently distinguish a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel therefore concludes that Respondent’s <cantorfutures.com> domain name is confusingly similar to Complainant’s CANTOR mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <cantorfutures.com> domain name under Policy ¶ 4(c)(ii). Complainant explains that Respondent does not own any trademark or service mark rights, or registrations for the terms “cantor,” “futures,” or “cantorfutures.” Complainant also states that Respondent registered the <cantorfutures.com> domain name on August 10, 2013 which was much later than Complainant’s first use of the CANTOR marks in 1947. Additionally, Complainant claims that Respondent is not licensed or authorized by Complainant to use Complainant’s CANTOR marks in any way, and there is no evidence on the record including the WHOIS information suggesting otherwise. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “WhoisByProxy admin” as registrant. Panels have generally concluded that a respondent is not commonly known by a disputed domain name where the facts presented, including the WHOIS information, do not give rise to the conclusion that a respondent is recognized or known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The Panel concludes that Respondent is not commonly known by the <cantorfutures.com> domain name under Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <cantorfutures.com> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant contends that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <cantorfutures.com> domain name because Respondent has allegedly registered the disputed domain name for the purpose of selling it for profit. Complainant states that Respondent’s disputed domain name resolves to an online domain auction services where Respondent auctions off disputed domain names for upwards of $1,895. See Complainant’s Ex. H. The Panel notes that the panel in Vance Int’l, Inc. v. Abend, found that UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007). The Panel thus concludes that Respondent has no rights or legitimate interests in the <cantorfutures.com> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent registered and is using the <cantorfutures.com> domain name in bad faith under Policy ¶ 4(b)(i). Complainant claims that Respondent attempts to sell the disputed domain name by using the <cantorfutures.com> domain name to resolve to an auction site including the phrase; “CantorFutures.com is for sale, Click here to buy CantorFurtures.com for $1,895.” See Complainant’s Ex. H. Previous panels have concluded that using a disputed domain name to resolve to an auction site offering to sell domain names for prices in excess of out-of-pocket costs indicates bad faith use and registration. See Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that the respondent’s attempt to sell the domain name in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith). The Panel concludes that Respondent’s use of the auction site resolving from the disputed domain name is sufficient to establish bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent uses Complainant’s famous CANTOR mark to Confuse Internet users and wrongfully attract them to Respondent’s resolving website for commercial gain. The Panel notes Annex H to see a screenshot of the website that resolves from Respondent’s disputed domain name. The Panel sees that Respondent’s resolving website rates the “brandability” of the disputed domain name and also features the term “Cantor Futures” as the “Base Domain.” Prior panels have concluded that using a confusingly similar domain name to attract Internet users to its resolving website with the intent to confuse Internet users as to a complainant’s association with the resolving website and thus commercially profit from that confusion, indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). The Panel finds bad faith under Policy ¶ 4(b)(iv) and agrees that there is a likelihood for Internet users to confuse a domain name auction promotion as somehow being affiliated with Complainant.
Complainant asserts that Respondent presumably had notice of Complainant’s mark because it is a well-known mark and because Respondent registered the <cantorfutures.com> domain name significantly after Complainant’s first use and registration of the CANTOR mark. Complainant argues that Respondent therefore has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cantorfutures.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 30, 2014
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