WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Mercantile Exchange Inc., CME Group Inc. v. Lun Ai

Case No. D2013-0350

1. The Parties

The Complainants are Chicago Mercantile Exchange Inc. (“CME”) and CME Group Inc. (“CME Group”) of Chicago, Illinois, United States of America (“the Complainants”), represented by Norvell IP llc, Illinois, United States of America (“the U.S.”).

The Respondent is Lun Ai of New York, the U.S.

2. The Domain Name and Registrar

The disputed domain dame <cmegcroup.com> (“the Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2013. On February 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 25, 2013, the Center transmitted an email communication to the parties in Chinese and English regarding the language of the proceeding. On February 26, 2013, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the 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 proceeding commenced on March 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 2, 2013. 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 CME Group is a financial exchange offering futures and options trading in all major asset classes, such as metals, foreign exchange, and other products through five exchanges, including the Complainant CME. The Complainant CME Group is the parent company to the Complainant CME.

The Complainants provide an international marketplace for the exchange of financial derivative products through the CME Globex electronic trading platform, which allows futures and options to be traded around the world.

The Complainant CME provides a list of more than 70 trademark registrations for the trademarks CME and CME GROUP and claims rights to them. The Complaint limits documentary evidence of trademark and service mark registrations to production of certain copies of the U.S. Certificates of Registrations for CME and CME GROUP marks in Annex J to the Complaint.

According to WhoIs data, the Respondent is Lun Ai. The Disputed Domain Name, <cmegcroup.com>, was registered on January 1, 2013. The Registrar confirmed, in its email of February 25, 2013, that the Registration Agreement for the Disputed Domain Name is in Chinese.

On February 13, 2013, the Complainant CME submitted notifications for copyright infringement to the internet service providers for the web site under the Disputed Domain Name, Rackspace, who later disabled the web site under the Disputed Domain Name. The Complaint provides a printout from the web site under the Disputed Domain Name created on February 14, 2013 in Annex P to the Complaint.

5. Parties’ Contentions

A. Complainants

The Complainants’ contentions could be summarized as follows:

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

The Disputed Domain Name contains as a dominant element the term “cme” which is identical to the Complainant CME’s CME trademarks and service marks. The Disputed Domain Name is confusingly similar to the Complainant CME’s CME GROUP marks, as it sounds the same as and looks similar to the CME GROUP marks. The deliberate misspelling of the Disputed Domain Name is not sufficient to distinguish it from the Complainant CME’s marks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent is not affiliated or connected with the Complainants in any way. The Complainants also have never licensed or authorized the Respondent to use the CME or CME GROUP trademarks or names, or any of the Complainants’ trademarks, or to register any domain name incorporating the CME or CME GROUP trademarks or names. The Disputed Domain Name was used to perpetrate a fraud, namely, a phishing or other illegitimate scheme. No evidence indicates that the Respondent has been commonly known by the Disputed Domain Name or the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The record shows that the Respondent has acted in bad faith because:

(1) The Complainants registered the CME and CME GROUP trademarks in many jurisdictions and well before the registration of the Disputed Domain Name. The Respondent knew or should have known of the Complainants’ rights in CME and CME GROUP trademarks and names prior to registration of the Disputed Domain Name.

(2) The Respondent registered and used the Disputed Domain Name to perpetrate a fraud or illegitimate scheme.

(3) The Respondent engaged in typosquatting, which is per se bad faith.

(4) The Respondent registered and used the Disputed Domain Name for commercial gain by creating a likelihood of confusion with the Complainants’ marks and names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s services.

(5) The Respondent used the Complainants’ copyrighted materials without authorization.

(6) The Respondent used false contact information in the Respondent's initial registration and the WhoIs record for the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainants’ 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 requested that the language of the proceeding be English. Despite of the fact that the language of the Registration Agreement for the Disputed Domain Name is Chinese, the Panel notes the following facts:

(i) The address of the Respondent is in the U.S.

(ii) The web site to which the Disputed Domain Name resolved was in English and used extensive English.

(iii) The web site was designed to attract Internet users around the world rather than only Chinese-language Internet users.

(iv) The Center has sent an email communication to the parties, in both Chinese and English, regarding the language of the proceeding of the Disputed Domain Name.

(v) The Respondent did not respond to the foregoing bilingual email communication or object the language request of the Complainants.

Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has 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 “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules” (Paragraph 10(e) of the Rules).

The consensus view of UDRP panels on the consolidation of multiple complainants is summarized in paragraph 4.16 of 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.”

The Complainants have requested a consolidation of multiple complaints and state that the Complainant CME is owned by the Complainant CME Group and have a common legal interest sufficient to justify a unitary complaint against the Respondent. The Complainants also argue that there is no reason to require each Complainant to submit an almost identical complaint against the Respondent with nearly identical facts, legal arguments and requested relief.

The Panel notes the following facts that are relevant to the determination of the request of the consolidation:

(i) The Complainants produce excerpts from the Complainants’ public filings regarding their history in Annex E to the Complaint, which shows that the Complainant CME Group is the holding company of the Complainant CME.

(ii) The Complainants submit printouts and materials regarding the Complainants’ financial information and market data services, in which the Panel finds that the Complainants provide their services and products collectively under the CME GROUP trademark (Annex G to the Complaint).

(iii) The web site to which the Disputed Domain Name resolved was highly similar to the web site of the Complainants as printouts of the web sites in Annex M and N to the Complaint.

(iv) The Respondent did not object to the Complainants’ request of the consolidation.

Given to the above facts, the Complainants have established that they have a common legal interest and grievance against the Respondent. It is equitable and procedurally efficient not to require the Complainants to submit respective complaints with nearly identical arguments. There is no evidence showing the Complainants’ request of the consolidation would affect the Respondent’s 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.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “…[the Disputed 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 summarize the consensus view of UDRP panels regarding whether a related company to a trademark holder have rights in a trademark for the purpose of file a UDRP case, whereby: “In 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. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants”.

The Complainant CME establishes that it is the owner of CME and CME GROUP trademarks and service marks with the U.S. Certificates of Registrations attached as Annex J to the Complaint. The Complainants also produce evidence indicating that the Complainant CME Group is the parent company of the Complainant CME. The services and products are both provided by both the Complainants under the CME GROUP trademark. It is a fair inference that the Complainant CME Group is authorized to utilize the CME GROUP trademark. Therefore, the Panel finds that the Complainants have rights in the CME and CME GROUP trademarks and service marks.

The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).

The Disputed Domain Name, <cmegcroup.com>, contains the Complainants’ CME mark in its entirety and the Complainants’ CME GROUP trademark with a letter “c” including as a typographical error. The deliberate typo of the Disputed Domain Name is not sufficient to distinguish the Disputed Domain Name from the Complainants’ marks (Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). The Panel finds that the distinctive part of the Disputed Domain Name remains the CME and CME GROUP trademarks.

As for the applicable top-level suffix such as “.com” in the Disputed Domain Name, it is a consensus view that it could usually be disregarded under the confusing similarity test (paragraph 1.2 of WIPO Overview 2.0).

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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 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 Complainants establish that the Complainant CME is the owner of CME and CME GROUP trademarks and service marks, and that the Complainants have rights in these marks. The Complainants use the CME GROUP mark on their web site, “www.cmegroup.com”, to provide their products and services around the world. The Complainants declare that they have not authorized the Respondent to use the above marks, to register the Disputed Domain Name or any other variations, and that the Respondent is in no way connected or affiliated with the Complainants.

The Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent does not provide any allegation or evidence indicating that before any notice of the dispute at issue it used or demonstrably prepared to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. No evidence indicates that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name or is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. From the evidence submitted it is clear that the Respondent is using the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to a web site at the Disputed Domain Name, which cannot be considered a legitimate noncommercial or fair use.

Having considered the above, the Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and in the absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and 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.”

According to the evidence submitted by the Complainants, the Complainant CME has registered the CME and CME GROUP marks in many countries in the world, including the U.S., where the Respondent resides. The Complainants provide products and services on their web site, “www.cmegroup.com”, to customers around the world. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected “cme” and “cme group” strings with a typo as used in the Disputed Domain Name for any reason other than to create a likelihood of confusion with the Complainants’ marks as to source, sponsorship, affiliation or endorsement. The Panel finds that the Disputed Domain Name has been registered in bad faith.

The Respondent uses the CME GROUP trademark on the front page of the web site to which the Disputed Domain Name resolves. The web site also claims that the copyright of the web site belongs to the Complainants and uses images of the Complainants’ web site, www.cmegroup.com, which makes the web site under the Disputed Domain Name look very similar to that of the Complainants. There is also a login hyperlink on the upper right to the web site. It is obvious that the Respondent’s web site is designed to confuse Internet users to consider it as the Complainants’ web site and obtain personal data from the confused users, which is a form of commercial gain (CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251). The Respondent has intentionally attracted Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainants’ trademark as to the source of the Respondent’s web site.

The similarity between the Respondent’s and the Complainants’ web site and the login hyperlink show the Respondent’s fraudulent scheme in an attempt to phish Internet users’ personal data. This fraudulent use of the Disputed Domain Name is obviously in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is 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 Name, <cmegcroup.com>, be transferred to the Complainants.

Peter J. Dernbach
Sole Panelist
Date: April 15, 2013