WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc., CME Group Inc. v. Chris Willia or Chris Williams
Case No. D2014-0402
1. The Parties
Complainants are Chicago Mercantile Exchange Inc. of Chicago, Illinois, United States of America and CME Group Inc. of Chicago, Illinois, United States of America, represented by Norvell IP llc, United States of America.
Respondent is Chris Willia or Chris Williams of Stanley, North Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cmeeuropeanclearinghouse.org> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2014. On March 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on March 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2014.
The Center appointed Gary J. Nelson as the sole panelist in this matter on May 2, 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.
Complainant Chicago Mercantile Exchange Inc. is the listed owner of numerous trademark registrations containing the letters “CME”, while Complainant CME Group Inc. is alleged to be authorized to use the CME based trademarks through a written trademark license agreement. Because the allegation of authorization to use the CME based trademarks has not been contested by Respondent, the Panel accepts this allegation as true. Accordingly, both listed Complainants appear to have a trademark interest in CME.
Therefore, the Panel finds that consolidation of these two Complainants into one proceeding is appropriate. See Media West-CPI, Inc. Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336 (consolidation is appropriate when related entities seek redress against a single respondent based on similar facts and law); Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220 (finding it appropriate to have a parent and its subsidiaries as multiple complainants in the proceeding).
4. Factual Background
Complainant Chicago Mercantile Exchange Inc. is the owner of at least numerous United States trademark registrations incorporating the letters “CME”. Specifically, Complainant Chicago Mercantile Exchange Inc. owns at least the following trademark registrations in the United States:
Dates of Registration
February 14, 1978
April 25, 2006
Complainant CME Group Inc. has secured authorization to use the “CME” name from Complainant Chicago Mercantile Exchange Inc. through a written trademark license agreement. Complainant Chicago Mercantile Exchange Inc. and Complainant CME Group Inc., collectively, are referred herein as “Complainants”.
The disputed domain name was registered on January 16, 2014. The website at the disputed domain name <cmeeuropeanclearinghouse.org> is not operational.
5. Parties’ Contentions
Complainants and their predecessors began using the “CME” name well before January 2014, the registration date of the disputed domain name.
Complainant CME Group Inc. is the world’s largest and most diverse financial exchange with a history dating back to 1848. Complainant CME Group Inc. offers futures and options in all major asset classes, such as metals, commodities, foreign exchange, energy, and other products through five exchanges.
Complainant CME Group Inc. is the parent company to Complainant Chicago Mercantile Exchange Inc. and has been using the name CME GROUP since its formation in 2007.
Complainant Chicago Mercantile Exchange is one of the world’s leading financial institutions. Originally founded in 1898, it began using the “CME” name in 1919. For more than one hundred years, traders, financial institutions, investors, corporations and governments have come to rely upon and trust Complainant Chicago Mercantile Exchange for their financial and risk management services.
Complainants provide an international marketplace for the exchange and clearing of financial derivative products, namely futures and options contracts. After leading the industry in open-outcry trading, Complainants championed the idea of electronic trading of futures and options through the “CME GLOBEX®” trading platform, which allows futures and options to be traded around the world and almost around the clock. Some products traded through Complainants’ exchanges include interest rates, equity indexes, weather, foreign exchange (foreign currency), cattle, pork and cheese, to name a few.
Complainants’ operations now extend globally with offices in the United States, Canada, Brazil, United Kingdom, Ireland, Singapore, Hong Kong, China, Republic of Korea and Japan.
Complainants offer clearing house services, including transaction processing, post trade management functions, financial management of members’ collateral deposits, final settlement of outstanding obligations through financial payment or physical delivery, risk management of market participants, and the financial guarantee of performance of its contracts. Complainants’ “CME” clearing services are critical to financial trading and include over-the-counter products and products traded on financial exchanges.
Complainants’ customers are located around the globe and the “CME GLOBEX®” electronic trading platform can be accessed from more than 150 countries.
Complainants also maintain strong relationships with international financial centers.
Complainants also maintain an active Internet presence and maintain Internet websites at numerous domain names incorporating the CME brand.
Complainant Chicago Mercantile Exchange Inc. owns numerous trademark registrations incorporating the letters “CME” in the United States and around the world.
In 2012, Complainants and their related entities generated revenues in excess of USD 2.9 billion dollars. In 2012, more than 2.8 billion contracts were traded through Complainants with a value of over USD 800 trillion.
Complainants consistently devote millions of dollars annually to advertising and promoting their services under the CME mark.
The disputed domain name is identical or confusingly similar to trademarks and services marks in which Complainants have rights.
Respondent has not rights or legitimate interests in respect of the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainants' contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainants have established prior rights in the CME mark and the disputed domain name is confusingly similar to the CME mark.
Complainant Chicago Mercantile Exchange Inc. owns at least two CME trademark registrations in the United States and Complainant CME Group Inc. is licensed to use the CME trademark. One of these registrations is for United States Trademark Registration No. 1,085,681. The registration date for this trademark (i.e., February 14, 1978) preceeds the date upon which the disputed domain name was registered (i.e., January 16, 2014).
Accordingly, Complainants have established rights in CME mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, <cmeeuropeanclearinghouse.org>, is confusingly similar to the CME trademark because the disputed domain name incorporates the entirety of the CME trademark and merely adds a geographic descriptor (i.e., “european”) and a generic descriptive term (i.e., “clearinghouse”) and a generic Top-Level Domain (“gTLD”) “.org” suffix. Neither the addition of a purely geographic/descriptive/generic term to a well-known mark or the addition of a gTLD suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (finding that the addition of the geographic country descriptor "china" to form <cellularonechina.com> was confusingly similar to the CELLULAR ONE trademark).
The addition of the words “european” and “clearinghouse" directly behind the CME trademark is insufficient to avoid a finding of confusing similarity.
Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., “clearinghouse”), simply describes the type of services provided by Complainants. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
Complainants have proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “cme”, “european”, “clearinghouse” or any combination of these words/letters. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of the CME trademark or that its registration of the disputed domain name predates the establishment of Complainants’ rights in the CME trademark.
Complainants have provided unrebutted evidence showing that Respondent has used the disputed domain name to perpetrate a fraud, namely, an illegitimate scheme designed to trick customers into paying fake invoices. Such use by Respondent is not a legitimate bona fide use or a legitimate noncommercial or fair use of the disputed domain name. See Endemol Netherland B.V. v. David Williams, WIPO Case No. D2010-1728 (no legitimate rights where domain name used to send out fraudulent “scam” emails).
The Panel therefore finds that Complainants have proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainants’ rights in the CME trademark. Complainants have alleged, and Respondent has not rebutted, that Respondent was aware of Complainants’ rights in the CME trademark when Respondent registered the disputed domain name. The Panel finds this unrebutted allegation to be convincing and sufficient to establish bad faith registration of the disputed domain name.
Respondent’s awareness of the rights Complainants’ have in the CME trademark may also be inferred because the CME trademark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name and since the CME trademark is well-known. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainants have established that Respondent registered and used the disputed domain name in connection with a fraudulent scheme. This is activity is strong evidence of bad faith use and registration. See Endemol Netherland B.V. v. David Williams, WIPO Case No. D2010-1728 (finding bad faith use where domain name was used to send out fraudulent "scam" emails).
The Panel therefore finds that Complainants have proven the requirement of Policy, paragraph 4(a)(iii).
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 <cmeeuropeanclearinghouse.org> be transferred to Complainants.
Gary J. Nelson
Date: May 6, 2014