Cantor Fitzgerald Securities v. 香港Ms. Mila Wu
Claim Number: FA1503001609744
Complainant is Cantor Fitzgerald Securities (“Complainant”), represented by Michael D. Brinton of Cantor Fitzgerald Securities, Washington, D.C., USA. Respondent is 香港Ms. Mila Wu (“Respondent”), Hong Kong, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cantor.网址> and <cantorfitzgerald.网址>, registered with Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS).
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2015; the Forum received payment on March 17, 2015. The Complaint was received in both Chinese and English.
On March 26, 2015, Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) confirmed by e-mail to the Forum that the <cantor.网址> and <cantorfitzgerald.网址> domain names are registered with Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) and that Respondent is the current registrant of the names. Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) has verified that Respondent is bound by the Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) 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 April 3, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 23, 2015 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@cantor.网址, postmaster@cantorfitzgerald.网址. Also on April 3, 2015, the Chinese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
(i) Complainant uses the CANTOR and CANTOR FITZGERALD marks in connection with its financial and brokerage services. Complainant has registered the CANTOR mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,682,690, registered February 4, 2003), which establishes rights in the CANTOR mark. Complainant also holds a USPTO registration for the CANTOR FITZGERALD mark (e.g., Reg. No. 2,682,691, registered February 4, 2003), which establishes rights in that mark as well. Respondent’s <cantor.网址> and <cantorfitzgerald.网址> domain names are effectively identical to Complainant’s CANTOR and CANTOR FITZGERALD marks as the domain names incorporate the marks in their entirety, and they merely add the generic top-level domain (“gTLD”) “.网址” (which purportedly translates to the generic English acronym “URL”) to the marks.
(ii) Respondent has no rights or legitimate interests in the <cantor.网址> and <cantorfitzgerald.网址> domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the CANTOR and CANTOR FITZGERALD marks in domain registrations. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or any legitimate noncommercial or fair use. Rather, the <cantor.网址> and <cantorfitzgerald.网址> domain names resolve to inactively held pages which display the message “Server Not Found.” See Compl., at Attached Annex L.
(iii) Respondent has used the <cantor.网址> and <cantorfitzgerald.网址> domain names in bad faith. Respondent has registered the disputed domain names to disrupt Complainant’s business, and Respondent has attempted to commercially gain from the goodwill associated with Complainant’s marks. Finally, Respondent had actual or constructive knowledge of the CANTOR and CANTOR FITZGERALD marks and Complainant’s rights therein.
B. Respondent
Respondent did not submit a response. The Panel notes that the <cantor.网址> and <cantorfitzgerald.网址> domain names were both registered on January 5, 2015.
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant established that it had rights in the marks contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 uses the CANTOR and CANTOR FITZGERALD marks in connection with its financial and brokerage services. Complainant claims to have registered the CANTOR mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,682,690, registered February 4, 2003). Complainant also purports to hold a USPTO registration for the CANTOR FITZGERALD mark (e.g., Reg. No. 2,682,691, registered February 4, 2003), and argues that its trademark registrations in both the CANTOR and CANTOR FITZGERALD marks evince rights in the marks per Policy ¶ 4(a)(i). This Panel agrees that USPTO registrations are sufficient for finding rights under Policy ¶ 4(a)(i). See 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).”).
Complainant contends that Respondent’s <cantor.网址> and <cantorfitzgerald.网址> domain names are effectively identical to Complainant’s CANTOR and CANTOR FITZGERALD marks as the domain names incorporate the marks in their entirety, and they merely add the generic top-level domain (“gTLD”) “.网址” (which purportedly translates to the generic English acronym “URL”) to the marks. Panels have found where marks have been incorporated in their entirety by a respondent in a domain name registration, the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis and cannot negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Additionally, Panels have found that removing a space in a complainant’s mark featured in a domain name does not affect the confusing nature of the disputed domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, this Panel agrees that the <cantor.网址> and <cantorfitzgerald.网址> domain names are confusingly similar to the CANTOR and CANTOR FITZGERALD marks per 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 maintains that Respondent has no rights or legitimate interests in the <cantor.网址> and <cantorfitzgerald.网址> domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the CANTOR and CANTOR FITZGERALD marks in domain registrations. In light of the WHOIS information and Respondent’s failure to add any additional evidence to the record for the Panel’s consideration, the Panel agrees that there is no basis for finding Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or any legitimate noncommercial or fair use. Rather, Complainant asserts the <cantor.网址> and <cantorfitzgerald.网址> domain names resolve to inactively held pages which display the message “Server Not Found.” See Compl., at Attached Annex L. Panels have seen such use as constituting neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant contends that Respondent has a pattern of bad faith domain name registrations as evidenced by its multiple domain name registrations in the present dispute. Prior panels have concluded that registering two infringing domain names with a complainant’s marks indicates bad faith pursuant to Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). The Panel thus concludes that Respondent’s registration of the <cantor.网址> and <cantorfitzgerald.网址> domain names is evidence of bad faith registration under Policy ¶ 4(b)(ii).
Complainant makes the contention that Respondent has registered the <cantor.网址> and <cantorfitzgerald.网址> domain names to disrupt Complainant’s business, and that Respondent has attempted to commercially gain from the goodwill associated with Complainant’s marks, but provides no evidence to substantiate these claims. As such, the Panel cannot accept the Complainant’s allegations in this regard.
Complainant contends that, pursuant to Complainant’s Attached Annex L, Respondent has inactively held the disputed domain names, evincing bad faith per Policy ¶ 4(a)(iii). This Panel agrees that Respondent’s failure to make an active use of the <cantor.网址> and <cantorfitzgerald.网址> domain names constitute inactive holding under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel notes that in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003 case (WIPO, February 18, 2000), the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
The Panel observes that (1) the Complainant’s trademarks have been widely used; (2) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain names; and (3) the Respondent did not submit a Response to the Complaint. Therefore, the Panel holds that, similarly to the Telstra Corporation Limited v. Nuclear Marshmallows case above, reproducing the well-known trademark CANTOR and CANTOR FITZGERALD marks in the disputed domain names in order to attract Internet users to an inactive website is considered as being a use in bad faith, and thus agrees that Respondent’s behavior is indicative of Policy ¶ 4(a)(iii) bad faith.
Finally, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the CANTOR and CANTOR FITZGERALD marks prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here infers due to the widespread use of the Complainant’s marks that Respondent had actual notice of Complainant's marks and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). 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); 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 <cantor.网址> and <cantorfitzgerald.网址> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 7, 2015
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