Cantor Fitzgerald Securities v. Guy Gussarsky
Claim Number: FA1410001587224
Complainant is Cantor Fitzgerald Securities (“Complainant”), represented by Michael D. Brinton of Cantor Fitzgerald Securities, District of Columbia, USA. Respondent is Guy Gussarsky (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <cantortrading.com> and <cantorbinary.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2014; the National Arbitration Forum received payment on October 28, 2014.
On October 29, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cantortrading.com> and <cantorbinary.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@cantortrading.com, postmaster@cantorbinary.com. Also on October 30, 2014, 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 November 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant uses the CANTOR mark in connection with global financial services, including without limitation, futures, binary options, derivatives, equities, investment backing, and commercial real estate services. Complainant owns the CANTOR mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,682,690, registered Feb. 4, 2003). The <cantortrading.com> and <cantorbinary.com> domain names are confusingly similar to the CANTOR mark as the domain names include the mark in full and merely add terms that relate to Complainant’s business.
Respondent is not commonly known by the disputed domain names, and has never been authorized to use Complainant’s mark. Respondent is not making any bona fide offering, or legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to websites featuring links to various third-party websites, some of which compete with Complainant and offer financial, trading, and investment services. Respondent presumably receives click-through fees from the promoted links.
Respondent has disrupted Complainant’s own business by using the disputed domain names to deflect Internet users to competitors of Complainant. Further, Respondent is using the confusingly similar <cantortrading.com> and <cantorbinary.com> domain names to capitalize on Complainant’s goodwill through revenue generated via pay-per-click fees. Lastly, Respondent had knowledge of Complainant’s rights in the CANTOR mark at the time of domain name registration, which evinces bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in global financial services, including futures, binary options, derivatives, equities, investment banking, and commercial real estate services.
2. Complainant owns the CANTOR mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,682,690, registered Feb. 4, 2003). The <cantortrading.com> and <cantorbinary.com> domain names are confusingly similar to the CANTOR mark as the domain names include the mark in full and merely add terms that relate to Complainant’s business.
3. Respondent registered each of the disputed domain names on May 30, 2014.
4. The disputed domain names resolve to websites featuring links to various third-party websites, some of which compete with Complainant and offer financial, trading, and investment services.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it uses the CANTOR mark in connection with global financial services, including without limitation, futures, binary options, derivatives, equities, investment banking, and commercial real estate services. Complainant submits that it owns the CANTOR mark with the USPTO (e.g., Reg. No. 2,682,690, registered Feb. 4, 2003). The Panel agrees that Complainant’s USPTO registration of the CANTOR mark demonstrates Complainant’s rights in mark for purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CANTOR mark. Complainant submits that the <cantortrading.com> and <cantorbinary.com> domain names are confusingly similar to the CANTOR mark as the domain names include the mark in full and merely add terms that relate to Complainant’s business. Complainant iterates that the term “trading” is merely a generic term used in financial securities transactions, and “binary” is descriptive of financial options. Prior panels have concluded that the inclusion of a term related to a complainant’s business only serves to increase confusing similarity where the domain name incorporates the complainant’s mark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). Further, Complainant correctly asserts that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As such, the Panel agrees that the <cantortrading.com> and <cantorbinary.com> domain names are confusingly similar to the CANTOR mark pursuant to Policy ¶ 4(a)(i) as the added terms relate to Complainant’s business offerings thereby increasing the likelihood of confusion, and the affixation of the gTLD “.com” serves no distinguishing value.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has taken Complainant’s CANTOR trademark and used it in its domain names in its entirety with the addition of generic words related to Complainant’s business;
(b) Respondent has then caused the disputed domain names to resolve to websites featuring links to various third-party websites, some of which compete with Complainant and offer financial, trading, and investment services;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the disputed domain names, and has never been authorized to use Complainant’s mark. The Panel notes that the WHOIS information lists “Guy Gussarsky” as registrant of both domain names. Accordingly, the Panel determines there is no basis to find Respondent is commonly known by the <cantortrading.com> and <cantorbinary.com> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Further, Complainant argues that Respondent is not making any bona fide offering, or legitimate noncommercial or fair use of the disputed domain names. Complainant submits the disputed domain names resolve to websites featuring links to various third-party websites, some of which compete with Complainant and offer financial, trading, and investment services. Complainant adds that Respondent presumably receives click-through fees from the promoted links. The Panel observes that the <cantortrading.com> domain name resolves to feature links such as “The Greatest Penny Stocks,” “Copy the best traders,” and “Learn to Trade Smarter,” while the <cantorbinary.com> domain name resolves to promote comparable links such as “Best Money Market Rates,” “Binary Options Brokers,” and “Official TD Ameritrade.” See Compl., at Attached Ex. H. The Panel agrees that Respondent’s use of the disputed domain names to featured monetized links to third-party websites, some of which compete with Complainant’s own offerings, amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has disrupted Complainant’s own business by using the disputed domain names to deflect Internet users to competitors of Complainant. The Panel recalls that the disputed domain names resolve to promote links related to the financial sector such as “Learn to Trade Smarter,” “Binary Options Brokers,” and “Official TD Ameritrade.” See Compl., at Attached Ex. H. The Panel agrees that the promotion of these competing links via the <cantortrading.com> and <cantorbinary.com> domain names amounts to commercial disruption and warrants a finding of bad faith pursuant to Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent is using the confusingly similar <cantortrading.com> and <cantorbinary.com> domain names to capitalize on Complainant’s goodwill through revenue generated via pay-per-click fees. See Compl., at Attached Ex. H. Under similar circumstances, the panel in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Here, the Panel agrees that Respondent’s use of the <cantortrading.com> and <cantorbinary.com> domain names to promote click-through hyperlinks is indicative of Policy ¶ 4(b)(iv) bad faith.
Next, Complainant argues that Respondent had knowledge of Complainant’s rights in the CANTOR mark at the time of domain name registration, which evinces bad faith. While previous panels have generally refused to find bad faith based on constructive knowledge, the Panel determines that Respondent had actual knowledge of Complainant and its rights in the CANTOR mark given Respondent’s use of the domain names to promote services related to Complainant. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the Complainant’s trademark and its subsequent use of the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cantortrading.com> and <cantorbinary.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 3, 2014
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