WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cantor Fitzgerald Securities, Cantor Index Limited v. Mark Mark, Chen Xian Sheng/Whois Protect

Case No. D2014-0125

1. The Parties

The Complainants are Cantor Fitzgerald Securities of New York, New York, United States of America (“Cantor”); Cantor Index Limited of London, United Kingdom of Great Britain and Northern Ireland (“Cantor Index”), represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondents are Mark Mark of Virgin Islands, Overseas Territory of the United States of America; Chen Xian Sheng of Shenzhen, Guangdong Province, China; Whois Protect.

2. The Domain Names and Registrars

The disputed domain name <cantorforex.com> is registered with GoDaddy.com, LLC. The disputed domain name <cantorindexforex.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. These two disputed domain names are referred to collectively as the “Disputed Domain Names” hereinafter.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2014. On January 28, 2014, the Center transmitted by email to GoDaddy.com, LLC and Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrars”) a request for registrar verification in connection with the Disputed Domain Names. On January 28, 2014, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent “Mark Mark” is listed as the registrant for the disputed domain name <cantorforex.com> and providing the contact details. On February 7, 2014, the Registrar Chengdu West Dimension Digital Technology Co., Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <cantorindexforex.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on February 7, 2014 providing the registrant and contact information disclosed by the Registrar Chengdu West Dimension Digital Technology Co., Ltd., inviting the Complainants to submit an amendment to the Complaint, and requesting the Complainants to address the issue of multiple Respondents. The Complainants filed an amended Complaint on February 13, 2014 in which the Complainants also provided arguments and evidence in relation to the issue of multiple Respondents.

On February 7, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 10, 2014, the Complainant submitted a request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint in both Chinese and English, and the proceeding commenced on February 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 11, 2014.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on March 17, 2014. 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

The Complainant Cantor and its affiliate, the Complainant Cantor Index, are providers of global financial and technology services and specialized services in the areas of computerized equity and fixed income capital markets and brokerage services. The Complainant Cantor provides a variety of products and services in the equity and fixed income capital markets.

The Complainant Cantor is the trademark owner of CANTOR and CANTOR INDEX, including, inter alia:

(1) CANTOR, the United States trademark, Registration No. 78306703 in class 36 registered in 2004.

(2) CANTOR, Chinese trademark, Registration No. 6147039 in class 9 registered in 2010.

(3) CANTOR INDEX, Community trademark, Registration No. 002302966 in class 36 registered in 2003.

According to the WhoIs database and the registration information of the Disputed Domain Names provided by the Registrars, the Respondents are Mark Mark and Chen Xian Sheng. The disputed domain name <cantorforex.com> was registered on December 16, 2013. The disputed domain name <cantorindexforex.com> was registered on May 22, 2013.

5. Parties’ Contentions

A. Complainants

The Complainants’ contentions could be summarized as follows:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

The Disputed Domain Names incorporate the Complainants’ CANTOR trademark in its entirety. The disputed domain name <cantorindexforex.com> includes the Complainants’ CANTOR INDEX trademark in its entirety. “Forex” is a common abbreviation for “foreign exchange”. The mere addition of the abbreviation “forex” does not diminish the confusing similarity between the Disputed Domain Names and the Complainants’ CANTOR trademarks.

(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

There is no relationship between the Complainants and the Respondents. The Respondents are not licensed, permitted or entitled other rights by which the Respondents could register, own or use any domain name incorporating the Complainants’ CANTOR trademark. The Disputed Domain Names are not, nor could they be contended to be, nicknames of the Respondents or in any other way identified with or related to rights or legitimate interests of the Respondents. The Respondents have registered and are using the Disputed Domain Names solely for financial gain and not with a bona fide offering of goods or services.

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

The Respondents’ bad faith registration of the Disputed Domain Names is established by the fact that the Disputed Domain Names completely incorporate the Complainants’ CANTOR mark, were acquired long after the CANTOR trademark became well-known in the financial world, and use false or incomplete registrant information to register the Disputed Domain Names. The Respondents have sought to profit from the Disputed Domain Names by using them to create an aura of affiliation with the Complainants and the goodwill associated with the CANTOR trademarks and to phish the Internet users’ personal and confidential information.

The Complainants request that the Disputed Domain Names be transferred to the Complainant Cantor Fitzgerald Securities.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issues

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (see paragraph 4.3 of WIPO Overview 2.0).

The Complainants request the language of proceeding to be English. The Respondents did not reply to the request of the Complainants. The Registration Agreement for the Disputed Domain Name <cantorforex.com> is in English and that for the Disputed Domain Name <cantorindexforex.com> is in Chinese. Given to the following factors, the Panel decides that the language of the proceeding be English.

1. The web sites to which the Disputed Domain Names resolve to both have content in English;

2. The web sites are designed to attract Internet users around the world rather than only to Chinese users;

3. The Center’s communication to the Respondents used both English and Chinese and gave the Respondents an opportunity to object to the Complainants’ request. The Respondents did not reply to the Center.

Given these facts, the Panel is satisfied that the Respondents have sufficient familiarity with English that the Respondents should be able to understand the language of the Complaint and have chosen not to respond. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

B. Consolidation of Multiple Complainants

Paragraph 10(e) of the Rules states that “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.

The consensus view of UDRP panels on the consolidation of multiple complainants is summarized in paragraph 4.16 of the WIPO Overview 2.0, whereby: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; […]. In order for the filing of a single complaint brought by multiple complainants […] which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”

It can be deemed that the multiple complainants have a specific common grievance against the respondent where the multiple complainants have a common legal interest in the trademark rights on which the complaint is based. Multiple complainants may establish a common legal interest if the multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture (Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./Official Tickets Ltd, WIPO Case No. D2009-0331).

The Complainants established that they both belong to the Cantor Fitzgerald Group commonly introducing themselves and their services by <cantor.com> to the Internet users. The Complainant Cantor is the owner of CANTOR and CANTOR INDEX trademarks on which the Complaint is based. Therefore, the Complainants have a specific common grievance against the Respondents.

Meanwhile, the Respondents did not reply to the consolidation request of the Complainants. It is equitable and procedurally efficient not to require the Complainants to submit respective complaints with nearly identical arguments. There is no evidence showing that the Complainants’ request of the consolidation would affect the Respondents’ rights in responding to the Complaint. Therefore, the Panel accepts the Complainants’ request and finds it appropriate to consolidate the multiple Complainants in one administrative proceeding.

C. Consolidation of Multiple Domain Names and Respondents

The consensus view of UDRP panels on the consolidation of multiple domain names and respondents is also summarized in paragraph 4.16 of the WIPO Overview 2.0, whereby: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which […the] complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the web sites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.

The web sites under the Disputed Domain Names have nearly identical content and claim to be for the same company, Cantor Index & Forex Limited, and both feature the same logo. Both of the Respondents posted the same contact address on the web sites under both Disputed Domain Names which is in fact the address of the Complainant Cantor Index. Therefore, the Panel finds that the web sites under the Disputed Domain Names are subject to common control.

The Respondents did not reply to the consolidation request of the Complainants. There is no evidence showing that the Complainants’ request of the consolidation would affect the Respondents’ rights in responding to the Complaint. Therefore, the Panel accepts the Complainants’ request and finds it appropriate to consolidate the Disputed Domain Names and the two Respondents in one administrative proceeding.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

Paragraph 1.8 of WIPO Overview 2.0 summarizes the consensus view of UDRP panels regarding whether a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case, whereby: “[i]n most circumstances, […] a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP […]”.

The Complainant Cantor is the owner of the CANTOR and CANTOR INDEX trademarks. According to the Complainants’ web site under <cantor.com>, the Complainant Cantor Index is an affiliate to the Complainant Cantor. Therefore, the Complainants both have rights in the CANTOR and CANTOR INDEX trademarks for the purpose of filing a UDRP case.

The Disputed Domain Names both incorporate CANTOR trademark in its entirety. The disputed domain name <cantorindexforex.com> also includes CANTOR INDEX trademark in its entirety. In addition to the Complainants’ CANTOR or CANTOR INDEX trademarks, the Disputed Domain Names both consist of “forex” and “.com”. The word “forex” is a common abbreviation for “foreign exchange” and a generic term. The CANTOR or CANTOR INDEX elements are still immediately recognizable as the Complainants’ trademark. In the Panel’s view, the addition of other descriptive and generic terms does not mitigate the likelihood of confusion between the Disputed Domain Names and the Complainants’ trademark. (J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126). The applicable top-level suffix “.com” in the Disputed Domain Names also does not distinguish the Disputed Domain Names from the Complainants’ CANTOR and CANTOR INDEX trademarks.

Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainants’ trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the domain name[.]”

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:

“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Complainant Cantor is the owner of the CANTOR and CANTOR INDEX trademarks and the Complainant Cantor Index also has rights in the trademarks for the purpose of filing a UDRP case. The Complainants also confirm that the Respondents are not licensed or authorized by the Complainants to use the CANTOR or CANTOR INDEX trademarks in any form.

According to the WhoIs database, the names of the Respondents have no connection to CANTOR or CANTOR INDEX trademark. There is no evidence indicating that the Respondents are commonly known by the Disputed Domain Names or the name of “cantor” or “cantor index”. The Panel finds that the Complainants have made out a prima facie case that the Respondents lack rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondents to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.

The Respondents did not submit any response to the Complaint. The Respondents did not submit any allegation or evidence establishing that the Disputed Domain Names are used in connection with a bona fide offering of goods or services or for noncommercial or fair use. Therefore, there is no allegation or evidence from the Respondents indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The CANTOR and CANTOR INDEX trademarks have been registered long before the registration of the Disputed Domain Names in 2013. The information of the Complainants’ CANTOR trademark and financial services is available on the web site under <cantor.com>. There is no allegation or evidence suggesting that the Respondents selected the “cantor” and “cantor index” strings with a generic term as used in the Disputed Domain Names for any reason other than to create a likelihood of confusion with the Complainants’ trademarks as to source, sponsorship, affiliation or endorsement. The Panel finds that the Disputed Domain Names have been registered in bad faith.

The Respondents use the same logo which contains the CANTOR INDEX trademark in its entirety on the web sites to which the Disputed Domain Names resolve. The contact address that the Respondents left on the web sites is actually that of the Complainant Cantor Index. The Respondents attempted to cause the web sites under the Disputed Domain Names to appear to be affiliated or endorsed by the Complainants. Meanwhile, these web sites are designed to attract Internet users to visit and to leave their confidential and personal data, such as email address, phone number and bank account information. The Respondents obviously use the Disputed Domain Names to phish the Internet users’ personal data, which is also a form of commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ web sites. This fraudulent use of the Disputed Domain Names is obviously in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the Complainants fulfill the condition provided in paragraph 4(a)(iii) of the Policy.

8. Decision

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 Names <cantorforex.com> and <cantorindexforex.com> be transferred to the Complainant Cantor Fitzgerald Securities.

Peter J. Dernbach
Sole Panelist
Date: March 31, 2014