WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. v. Whois Privacy Protection Service Inc./Nguyen Thanh Cong
Case No. D2010-1766
1. The Parties
The Complainant is Chicago Mercantile Exchange Inc. of Chicago, IL, United States of America, represented by Norvell IP LLC, United States of America.
The Respondent is Whois Privacy Protection Service Inc./Nguyen Thanh Cong of Bellevue, WA , United States of America and Daklak, Vietnam, respectively.
2. The Domain Name and Registrar
The disputed domain name <cmemarkets.com> (the “Disputed Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2010. On October 20, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 20, 2010 eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on November 1, 2010.
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 Respondent of the Complaint, and the proceedings commenced on November 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on December 14, 2010. 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 has traded since at least 1919 as the Chicago Mercantile Exchange Inc. and provides an international marketplace for the exchange or trading of financial derivative products, namely futures and options contracts and also offers market data services. The Complainant has very substantial revenues and trades a very substantial number of contracts each year.
The Complainant is part of the CME Group, Inc., which is a grouping of four financial exchanges and maintains an Internet presence through its domain name <cme.com> that resolves to its parent’s website at “cmegroup.com”. The Complainant owns a combined word and device mark which consists of a globe logo and the word mark CME GROUP, which it has used since 1983. The Complainant also owns numerous trademark registrations the CME Group trademark in the United States of America and elsewhere, as well as two trademark registrations for CME, namely United States Trademark Registrations Nos. 1,085,681 and 3,084,640, registered on February 14, 1978 and April 25, 2006, respectively.
The Respondent, who used a privacy service, registered the Disputed Domain Name on April 12, 2010.
5. Parties’ Contentions
The Complainant submits that it owns various trademark registrations, including its CME mark described above, and that the Disputed Domain Name is confusingly similar to its trademarks.
The Complainant says that it has not authorised the Respondent to use its CME mark or its combined word and globe logo mark; and that the Respondent is not commonly known by either of these marks and only started using them after its registration of the Disputed Domain Name in April 2010. It maintains that the Respondent is not making a bona fide offering of goods or services from its website at the Disputed Domain Name and that this is indicated, in particular by Respondent’s blatant copying of the Complainant’s combined word and globe logo mark, albeit done piecemeal by using “CME” instead of “CME Group” together with other elements of the design, layout and content of the Respondent’s website which appear to be copied from third-party financial data providers.
The Complainant says that the Respondent is providing directly competing products and services to its market-data services under an imitation of the Complainant’s logo and also in relation to products and services provided by its competitors. The Respondent’s website also features third party advertisements in the area of trading, finance and franchises, which generate revenue for the Respondent each time a visitor clicks through the advertisements. Overall the Complainant submits that the Respondent is using its well-known CME brand and logo without authorization in clear bad faith, which has continued even after notification by the Complainant of its rights and of its Complaint concerning the unauthorized use of the CME marks.
As far as registration and use in bad faith is concerned the Complainant submits that its mark and logo is so well-known in relation to its area of activity that it can only be that the Respondent sought intentionally to register the Disputed Domain Name incorporating the CME mark with an intention to derive financial gain under paragraph 4(b)(i) of the Policy or in the alternative or in addition, to attract Internet users by creating a likelihood of confusion with the Complainant’s marks or products and services in terms of paragraph 4(b)(iv) of the Policy. It says that further evidence of this is provided by the fact that the Respondent provided financial data on its website, which in conjunction with the Complainant’s mark and logo would be likely to confuse Internet users into thinking that there was some affiliation or endorsement by the Complainant. According the Complainant, the Respondent gains its revenue through third party advertisements and a subscription service on the website. In addition the Complainant notes that its CME exchange was referenced on the Respondent’s website, which indicates that the Respondent was well aware of the Complainant’s marks. In summary the Complainant submits that the Respondent clearly registered and used the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns two word mark registrations in the United States of America for its CME mark, namely United States Trademark Registration Nos. 1,085,681 and 3,084,640. The substantive element of the Disputed Domain Name differs from the Complainant’s CME mark only by the inclusion of the common English word “markets”. The Disputed Domain Name includes the Complainant’s mark in its entirety and the addition of the word “markets” does not assist in distinguishing the Disputed Domain Name from the Complainant’s trademark. Consistent with the views of past UDRP panels, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CME trademark.
As a result the Panel finds that the Complainant has demonstrated the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent registered the Disputed Domain Name in 2010, many years after the Complainant commenced using its CME mark and distinctive globe logo, which the Panel finds to be very well established and widely-known in the financial services industry. There is no evidence to suggest that the Respondent is using or is otherwise known by the “CME Markets.” The Respondent’s combined use of the CME marks in the Disputed Domain Name that the Panel has found to be identical or confusingly similar to the Complainant’s CME mark and the Respondent’s use of the Complainant’s globe device mark in relation to a suite of competing goods and services, without any obvious disclaimer is highly suggestive to the Panel that the Respondent has used the Disputed Domain Name to confuse Internet users into visiting its site and thinking that there is some affiliation or endorsement between the parties. The fact that the Respondent’s website also featured a range of advertisements in the area of trading, finance and franchises, which most likely brought it revenue, further affirms the Panel’s view that the Respondent is using the Complainant’s mark in the Disputed Domain name to drive traffic to its website. Moreover, based on the case record, the Panel finds that none of the circumstances enunciated in paragraph 4(c) of the Policy are present in this case.
That the Respondent failed to respond to the Complainant’s original cease and desist letter and subsequently failed to file a response to the Complaint only serves to confirm the Panel’s view that the Respondent does not have a right or legitimate interest in the Disputed Domain Name
Consequently the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel has found that the Complainant’s CME trademark and distinctive globe device mark are widely-known in the financial services industry. In these circumstances and considering that the Respondent registered the Disputed Domain Name in 2010, used the Complainant’s mark in the Disputed Domain Name, without authority and also referred to the Complainant’s trademarks on the website to which said domain name resolves,without authority, it seems to the Panel to obviously not be a case of coincidental registration of a domain name, but rather of intentional bad faith registration. As noted above with regard to the second element of the Policy, the Panel considers that the Respondent has used the Disputed Domain Name to intentionally attract internet users to its website in order to induce them into believing that there is some affiliation or endorsement by the Complainant; and then to profit from this traffic whether through its advertising efforts or services offered from the site. The Respondent’s initial use of a privacy service for this venture further reinforces the Panel’s view that the requirements of paragraph 4(b)(iv) of the Policy are satisfied in this case and that accordingly finds that the Respondent has registered and used the Disputed Domain Name in bad faith.
Accordingly, the Complainant has succeeded in making out the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cmemarkets.com> be transferred to the Complainant.
Dated: December 28, 2010