Nominet UK Dispute Resolution Service DRS Complaint No 02965 Decision of Independent Expert

1.	Parties

Complainant: 	BGC International 
Country:	GB

Respondent:	COA World Entertainment Limited
Country:	CY

2.	Domain Names

cantor-casino.co.uk casino-index.co.uk

3.	Procedural Background

The Complaint was received in full by Nominet on 13 September 2005. The Complaint was validated on 14 September 2005 and was sent by Nominet to the Respondent on that date. Nominet informed the Respondent that it had 15 working days, i.e. until 6 October 2005, to respond to the Complaint.

By 10 October 2005, no formal Response having been received from the Respondent, Nominet wrote to the Complainant confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit and the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a formal response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that they have sent the Complaint to the Respondent by post and e-mail to the contact details held on Nominet's register.
When registering a .uk domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:‑

"4.1 give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2). This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register"

In addition paragraph 2(e) of the Dispute Resolution Procedure (the "Procedure") states that:‑

"e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.	if sent by facsimile, on the date transmitted; or
ii.	if sent by first class post, on the second Day after posting; or
iii.	if sent via the Internet, on the date that the communication was transmitted;
iv.	and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly,"

In fight of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent. In addition, it is clear from an email sent by a representative of the Respondent to Nominet on 14 September 2005, that the Respondent has received the Complaint.

I now move on to consider the consequences of the Respondent not submitting a response. The Procedure envisages just such a situation and provides in Paragraph 15 that:‑

"c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision,

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5. The Facts

The Complainant is, together with Cantor Fitzgerald Securities, Cantor Casino (Alderney) Limited, Cantor Index Limited and other companies, part of a group of companies (the "Cantor Group"). In 1945, two partners, Bernie Cantor and John Fitzgerald founded a business as financial intermediaries. It is unclear from the evidence to what extent the business traded as 'Cantor Fitzgerald' as opposed to or in addition to 'Cantor', although the Cantor Group founded the Cantor Index, a spread betting service, in the late 1990's and in addition has been using the domain name <cantor.com> since 1994. In addition the Cantor Group has been operating a website at <cantorindex.com> since 2002. Further websites are operated under the names 'Cantor Sport', Cantor Odds', and `Cantor Spreadfair'. In the last three years, approximately $20m has been spent marketing the various 'Cantor' brands. The business conducted under the brands referred to is substantial, and the `Cantor Index' service alone has an estimated weekly turnover of $700,000.

Recently Cantor Casino (Alderney) Limited was licensed to conduct business. It does so via a website using the domain name <cantorcasino.co.uk>, where it is stated that the service offered commenced on 14 July. Presumably this is a reference to July this year.
Cantor Fitzgerald Securities is the applicant or proprietor of the following trade marks -
Trade Mark	Class		Type	No	Status	Date	
CANTOR	9,	36,	38	CTM	E3380541	Registered	2,10.03	
CANTOR
INDEX	36			CTM	E2302966	Registered	16.07.01	
CANTOR
ODDS	9,	36,	38	CTM	E3384526	Registered	02.10.03	
CANTOR
(Stylised)	9,	36,	38, 42	CTM	E4034807	Applied for	20.09.04	
CANTOR
CASINO	9,	36,	38, 41	CTM	E4513181	Applied for	25.07.05	
The Cantor Group also holds registrations for the following domain names: <cantorindex.co.uk> (registered on 23 September 1999); <cantorcasino.co.uk> (registered on 2 August 2001); <cantorcasino.com> and <cantorcasino.org> and <cantorcasino.net> (ail registered on 4 February 2002) (the "Complainant's Domains").

The Respondent registered the disputed Domain Names on 26 November 2001. At the time of this Complaint, the websites to which they were pointed advertised casino and gaming services.

On 2 August 2005, the Complainant's legal representatives wrote to the Respondent in terms which asserted the client's rights, and demanded amongst other things, the transfer of the disputed Domain Names to the Respondent. No response was received to that letter.

The Parties' Contentions Complainant

It is asserted that the disputed Domain Names have either identical and/or similar features to trade marks in which the Complainant (and/or the Cantor Group) has rights. In support of that assertion the Complainant submits that the disputed Domain Name cantor-casino.co.uk> is identical to the Cantor Group's application for the 'CANTOR CASINO' trade mark; is similar to the Cantor Group's trade mark registration for 'CANTOR'; and almost identical to the Complainant's Domains.

With regard to the other disputed Domain Name <casino-index_co.uk>, the Complainant says that it is confusingly similar to the Cantor Group's trade mark registration for 'CANTOR INDEX', and uses elements of the Complainant's Domains.

The Complainant sets out in detail, its argument why the disputed Domain Names are Abusive Registrations, with specific reference to the following parts of Nominet's Dispute Resolution Policy (the `Policy"), as follows -

•	The Domain Names were registered as blocking registrations (para 3(a)(i)(B)
•	The Domain Names were registered for the purpose of unfairly disrupting the business of the Complainant and/or the Cantor Group (para 3(a)(i)(C)
•	The Respondent's use of the Domain Names will confuse people into believing that the Domain Names are registered to, operated or authorised by or otherwise connected to the Complainant (para 3(a)0))

it also asserts that the factors identified above and others set out in paragraph 3 of the Policy are not exhaustive, and that consideration must be given to whether the registration is abusive within the more general definition of an Abusive Registration, as defined in thePolicy, and further if and to the extent that the Respondent's use violates the complainant's rights under the applicable law, the registration must be an Abusive Registration.

The Complainant also argues by reference to a number of previous DRS Expert decisions and UK case law that the disputed Domain Names in the hands of the Respondent is inherently abusive given the distinctiveness and notoriety of the Complainant's 'CANTOR' mark. It also says that the Respondent's use of the disputed Domain Names is unfairly taking advantage of the Complainant's goodwill insofar as visitors to the Respondent's websites will be confused as to whether they have located the Complainant's website, and intentionally so given that the disputed Domain Names were registered only four months after the Cantor Group itself registered the domain name <cantorcasino.co_uk>. This is especially damaging to the Complainant given the need for probity in the financial sector,

The Complainant says that the Respondent cannot fulfil any of the factors set out in paragraph 4 of the Policy that may demonstrate that the disputed Domain Names are not Abusive Registrations, in particular: that the Respondent is not commonly known by the names `CANTOR INDEX' or `CASINO INDEX' (para 4(a)(i)(B); or that the domain name is generic or descriptive and the Respondent is making fair use of it (para 4(a)(ii)).

The Complainant seeks the transfer of the disputed Domain Names. Respondent
As indicated above, the Respondent has not filed a Response. 6. Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Dispute Resolution Service Policy ("the Policy'), prove to the Expert on the balance of probabilities that;

(i)	it has Rights (as defined in paragraph I of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii)	the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities. It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant's Rights

Does the Complainant have rights?
As indicated above, it is necessary that the Complainant has Rights. In the present case the Complainant is BGC International. This company is a UK private unlimited company, incorporated on 14 January 1986 and previously known as Cantor Fitzgerald International, Cantor Fitzgerald (U.K.) Limited and Swift 1599 Limited. It would appear to be the case that the Complainant is not the direct proprietor of any of the trade mark registrations/applications referred to above, which are in the name of Cantor Fitzgerald Securities. Furthermore the Complainant's Domains, upon which the Complainant relies are also not held in its name but rather in the name of other companies in the Cantor Group. The question that must therefore be determined is whether the Complainant, BGC International, can claim entitlement to any rights upon which the Complaint can be founded.

No information has been given as to any licence arrangement between the proprietor of the trade marks that have been cited, and the Complainant. However the Complaint identifies BGC International as part of a wider group of companies that has traded under various names which incorporate the 'CANTOR' mark, such that significant goodwill has been created. It is not uncommon that significant business undertakings operate via a multitude of different companies or entities, and I do not think it unreasonable to infer that as part of that group, BGC International has acquired rights to use the 'CANTOR' name and as such has the capacity to bring this Complaint.

Existence of Rights

The Policy defines Rights as follows -

"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"

It is clear to me that the Complainant (as part of the Cantor Group) has significant rights in the mark 'CANTOR' given the extensive use of that mark dating back over a period of time at least until 1994, when the mark was used as part of a domain name <cantor.com> directed to the main website of the Cantor Group, and as a result of that group's use of the mark 'CANTOR INDEX' the mark applied to their spread betting activities. I am not persuaded that the Complainant has Rights in the extended name 'CANTOR CASINO', insofar as the identical trade mark referred to by the Complainant is only an application for such a mark, and as such no rights attach to that mark pending registration. Additionally the application for this mark is made some four years after the disputed Domain Name was registered. Furthermore there is no real evidence of use of that extended name not least because the Complainant or the Cantor Group is yet to commence meaningful business under the name. However, because of the Rights that it has in the mark 'CANTOR', I am of the opinion that the Complainant does have Rights in a name or mark similar to the disputed Domain Name <cantor-casino.co.uk>.

With regard to the other disputed Domain Name, <casino-index.co.uk>, the Complainant has not satisfied me that it has Rights in either an identical or similar name. Whilst the Complainant has referred to the registered trade mark 'CANTOR INDEX'; extensive use of that term; an application to register the mark 'CANTOR CASINO'; and an intention to use the mark, it cannot identify any use of the terms `CASINO-INDEX'. In my opinion it cannot be said that by the separate usage of the words 'CASINO' and 'INDEX' that the Complainant has acquired any rights, not least because its usage of those generic words has always been in conjunction with the distinctive mark `CANTOR'.

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name ,<cantorcasino.co.uk> is an Abusive Registration.

The Complainant submits that the registration is abusive because (1) it blocks the Complainant's use of the domain; (2) its purpose is to disrupt the business of the Complainant; (3) its use is likely to confuse people into believing that the Respondent is associated/connected with the Complainant; and (4) that it is abusive generally in light of the use of the Claimant's well known mark 'CANTOR'.

With regard to the first ground (blocking), I am not convinced that sufficient evidence exists to prove that the primary intention (as required by the Policy) of the Respondent was to deprive the Complainant of the opportunity to block a registration consisting of a name or mark in which the Complainant had Rights. First of all the Complainant was already the registrant of the domain name <cantorcasino.co.uk>, and to the extent that Rights existed in November 2001 when the disputed Domain Name was registered, they existed in the mark 'CANTOR' rather than `CANTOR-CASINO'.

I an also not convinced that the fourth ground (confusing use) has been made out under a strict interpretation of the Policy, which requires that use of the disputed Domain Name has caused confusion. In the present circumstances, the Complainant has not identified any cases of actual confusion, although in many respects that is unsurprising as the Complainant is yet to meaningfully launch its business under the 'CANTOR CASINO' name.

However in my opinion the second (disruption) and fourth (generally abusive) grounds do have merit. The Complainant has adduced evidence that it has substantial goodwill in the mark 'CANTOR' in the financial sector generally and also in the more discrete area of spread betting. It has promoted the 'CANTOR' mark extensively and has developed a high media profile, such that there is a significant prospect that the use of the mark in the financial sector and allied sectors (including gambling) is likely to lead to an association being made with the Complainant and/or the Cantor Group. That evidence has not been challenged by the Respondent and 1 have no reason to reject it.

In such circumstances, it seems highly likely that use of the disputed Domain Name <cantorcasino.co.uk>, which is a combination of the Complainant's distinctive mark and a generic/descriptive term connected with the gambling sector, will lead users of the internet who locate the Respondent's website to believe that the website is associated with the Complainant, and worse, divert business away from the Complainant to the Respondent. It seems implausible in the absence of an explanation, given the notoriety of the 'CANTOR' mark that this was not the intention of the Respondent when it registered the disputed Domain Name, or at least commenced use of it.
7. Decision

For the reasons set out above, I find that the Complainant does not have Rights in respect of a name or mark which is similar or identical to the disputed Domain Name <casinoindex.co.uk>, and the Complaint therefore fails in respect of that domain.

However, for the further reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar or identical to the disputed Domain Name cantor-casino.co.uk>, and that the Domain Name in the hands of the Respondent, is an Abusive Registration, and the Complaint therefore succeeds in respect of that domain.
The disputed Domain Name <cantor-casino.co.uk> should be transferred to the Complainant. Simon Chapman

2 November 2005