WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc., CME Group Inc. v. PrivacyProtect.org and Amit Trivedi
Case No. D2012-1666
1. The Parties
The Complainant is Chicago Mercantile Exchange Inc., CME Group Inc. of Chicago, Illinois, United States of America, represented by Norvell IP LLC, United States of America.
The Respondents are PrivacyProtect.org of Nobby Beach, Queensland, Australia and Amit Trivedi of Madhya Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <cmegroups.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2012. On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the First Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 2012, 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 August 28, 2012.
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 September 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2012.
The Center appointed Jane Lambert as the sole panelist in this matter on October 11, 2012. 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 letters “CME” in the Complainant’s corporate name stand for the “Chicago Mercantile Exchange”. The CME is one of four commodities and securities exchanges that the Complainant manages. The others are the Chicago Board of Trade, COMEX (Commodities Exchange) and NYMEX (New York Mercantile Exchange). A wide range of securities, commodities and other assets are traded in “open outcry” (that is to say, on a trading floor) or electronically through those exchanges.
Though the Complainant was formed only in 2007 the CME has existed since 1898 and traded in its current name or style since 1919. The Complainant has offices around the world including the USA, UK, Brazil, Canada, Japan and Singapore and its electronic trading floors allow trading around the clock in over 150 countries.
The Complainant has registered the initials “CME” simpliciter or in combination with other words as trade marks in a number of countries. Its portfolio includes, in particular, the mark CME GROUP which has been registered in the United States since January 15, 2008 for conducting commodities, securities, monetary and financial instrument and exchange services under registration number 3,367,684.
In 2011 the Complainant and its subsidiaries generated revenues of USD 3.3 billion from 3.4 billion transactions with a notional value of USD 1 quadrillion. The Complainant spends many millions of dollars of advertising its services by reference to the signs “CME Group” and “CME”. Accordingly the public in the United States and elsewhere associate the signs “CME Group” and “CME” in relation to commodities and securities trading with the Complainant and its exchange and none other.
The disputed domain name was registered on June 20, 2012, by the First Respondent which is a domain name privacy service. After the commencement of these proceedings, the Complainant learned that the First Respondent had registered the disputed domain name on behalf of the Second Respondent. Very little is known of the Second Respondent except the town and state in India where he is believed to live.
The disputed domain name had been used by an imposter who has claimed to be the secretary of the Complainant’s president Terrence Duffy. Using the email address “[…]@cmegroups.net” the imposter has requested investment information on the pretext that it was sought by Mr. Duffy.
5. Parties’ Contentions
The Complainant claims the transfer of the disputed domain name on the following grounds:
(1) The disputed domain name is confusingly similar to the Complainant’s trade marks. The Complainant says that the disputed domain name differs from its corporate name and registered trade marks only in inessentials. It contends that that a de minimis difference between a domain name and a trade mark is insufficient to overcome a finding of confusing similarity for which contention it cites Desnoes & Geddes, Ltd. v. Cory Legue, WIPO Case No. D2002-0659 (WIPO September 6, 2002) and Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627 (WIPO February 21, 2001).
(2) The Respondents have no rights or legitimate interests in the disputed domain name. The Complainant states more than once that neither Respondent is connected to, affiliated with or licensed by, the Complainant and that there is no evidence that either of them has a right or legitimate interest in the disputed domain name. The Complainant considers each of the circumstances listed in paragraph 4(c) of the Policy that could demonstrate rights or legitimate interests in a domain name and argues that none applies to this case.
(3) The Respondents have registered and used the disputed domain name in bad faith. The Complainant says that
- The Respondents knew or should have known of Complainants’ rights in CME and CME GROUP Marks and names prior to registration of the disputed domain name;
- The Respondents engaged in typosquatting, which is per se bad faith;
- The Respondents registered and used the disputed domain name to perpetrate a fraud;
- The Respondents registered and used the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s marks and names as to the source, sponsorship, affiliation, or endorsement of the Respondents’ services; and
- The Respondents failed to respond to a letter from the Complainant’s lawyers demanding the transfer of the disputed domain name.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires a Complainant to prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that each of those three elements is present.
A. Identical or Confusingly Similar
The disputed domain name differs from the Complainant’s corporate name and its United States registered trade mark CME GROUP mentioned above only in the addition of the letter “s”. That is unlikely to be enough for the public to distinguish the disputed domain name from the corporate name or trade mark. If a member of the public notices the “s” at all he or she may think that it denotes the possessive (suggesting perhaps that the website belongs to the Complainant) or that it denotes the plural (suggesting that the Complainant has continued to expand its business). Accordingly, the Panel is satisfied that the first element is present.
B. Rights or Legitimate Interests
Paragraph 4 (c) of the Policy provides that any of the following circumstances shall demonstrate that a Respondent has rights or legitimate interests to a domain name for the purposes of paragraph 4 (a) (ii):
(i) Before any notice to the Respondent of the dispute, he or she has made use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he or she has acquired no trade mark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that any of those circumstances applies. Nor is there any other evidence that the Respondents enjoy a right, or has a legitimate interest in, the disputed domain name.
In the circumstances, the Panel is satisfied that the second element is present.
C. Registered and Used in Bad Faith
Though it does not fall within any of the circumstances listed in paragraph 4(b) of the Policy, the Panel has no hesitation in finding that the use of a domain name to impersonate the President of the Complainant is use in bad faith. Since that appears to be the only use of the domain name to date it is reasonable to infer that the disputed domain name was registered for that purpose. The Panel therefore finds that the third element is present.
In reaching that decision the Panel has applied the two-prong test mentioned in the following passage from Intesa Sanpaolo S.p.A. v. George Papadakos , WIPO Case No. D2008-1531:
“The term “bad faith” is defined neither by the Policy nor the Rules. However the term occurs in legislation in various contexts in both common law and civil law systems.
Probably the most relevant of those contexts for construing the Policy is European Community trademark law. Art 3.2.(d) of the Trade Marks Directive (DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of October 22, 2008 to approximate the laws of the Member States relating to trade marks) requires EC member states not to register or, if registered to declare invalid, a trademark “where and to the extent that the application for registration of the trade mark was made in bad faith by the applicant.” Similarly, Art 51(1)(b) of the Council Regulation (EC) No 40/94 (Community Trade Mark Regulation) provides that a Community trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings “where the applicant was acting in bad faith when he filed the application for the trade mark.” In neither the Directive nor the Regulation are the words “bad faith” defined.
Cases have come before the courts of the member states and at OHIM (the EC trademarks registry) where those provisions have had to be applied. There appears to be a consensus that “bad faith” connotes not just dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” (per paragraph  of Mr. Justice Arnold's recent decision in Hotel Cipriani SRL and Others v. Cipriani (Grosvenor Street) Ltd and Others  EWHC 3032 (Ch) (December 9, 2008).
In determining whether or not there has been bad faith, both the English courts and OHIM have applied a two-prong test. First, the tribunal ascertains what the person who is alleged to have acted in bad faith knew about the transaction or other matter in question. Next it decides whether in the light of that knowledge, that person's conduct is dishonest judged by ordinary standard of honest people (see Professor Ruth Annand's analysis in Ajit Weekly Trade Mark  R.P.C. 25 at paragraph  which was cited with approval by Mr. Justice Arnold in Cipriani at paragraph ).
This approach is entirely consistent with paragraph 4(b) of the Policy which provides a number of circumstances which may evidence registration and use of a domain name in bad faith. These include, but are not limited to:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his or her 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.
Each of the above circumstances requires a finding as to
- the Respondents’ state of mind (namely his or her purpose in paragraphs (i) to (iii) or intention in paragraph (iv)) in registering and using the domain name and
- a determination as to whether such purpose or intention is dishonest or otherwise below what Mr. Justice Arnold called ‘the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined’”.
The Panel finds that in the overall circumstances of this case, and in the absence of a rebuttal, it is more likely than not that the disputed domain name was registered and is being used in bad faith.
Accordingly, the third element of the Policy has been established.
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 name <cmegroups.net> be transferred to the Complainant.
Dated: October 18, 2012