WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. and CME Group Inc. v. Herman Gretch and CME Commodity Traders
Case No. D2014-1578
1. The Parties
The Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, United States of America ("USA") represented by Norvell IP llc, USA.
The Respondents are Herman Gretch of Bonn, Germany and CME Commodity Traders of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <cmecommoditytraders.com> is registered with DNC Holdings Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with WIPO Arbitration and Mediation Center (the "Center") on September 13, 2014. On September 15, 2014, the Center transmitted by email to the Registrar, a request for Registrar verification in connection with the disputed domain name. On September 15, 2014, the Registrar transmitted by email to the Center, its verification response confirming that the Respondent is listed at 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 Supplement 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 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 13, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 16, 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.
4. Factual Background
According to the Complainants, they and their predecessors began using the name CME well before January 2014, the registration date of the disputed domain name.
The Complainant CME Group is the world's largest and most diverse financial exchange, with a history dating back to 1848. CME Group offers futures and options in all major asset classes, such as metals, commodities, foreign exchange, energy and other products through five exchanges.
The Complainant CME Group is the parent company of the Complainant CME and has been using the name CME Group since its formation in 2007. More importantly, use of the CME name by the Complainant CME Group is authorised by the Complainant CME through a written Trademark Licence Agreement. Use of the CME Group name began well before January 2014, the registration date of the domain name in dispute.
The Complainant, CME, is one of the world's leading financial institutions, and part of the Complainant, CME Group. Originally founded in 1898, the Complainant CME began using the CME name in 1919. For more than 100 years traders, financial institutions, investors, corporations and governments have come to rely upon and trust the Complainant, CME, for their financial and risk management services related to the trading of commodities. Exhibited at Annex D to the Complaint are excerpts from the Complainants' websites and public filings regarding their history.
The Complainants provide an international marketplace for the exchange and clearing of financial derivative products, including futures and options contracts on commodities and other products. After leading the industry in open-outcry trading, the Complainants champion 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 the Complainants' exchanges include interest rates, equity indexes, weather, forex or foreign exchange, cattle, pork and cheese.
The Complainants' operations now extend globally with offices in the USA, Canada, Brazil, United Kingdom of Great Britain and Northern Ireland ("UK"), Ireland, Singapore, Hong Kong, China, Republic of Korea and Japan.
The Complainants' customers are located around the globe and the CME Globex Electronic Trading Platform can be accessed from more than 150 countries. The Complainants' services have a very wide reach as can be seen from Annex F to the Complaint.
The Complainants also maintain strong relationships with international financial centres. For example, the Complainants have strategic relationships in Brazil, Malaysia, United Arab Emirates, South Africa, Republic of Korea, Mexico, India, Japan and Singapore.
The Complainants also maintain an active Internet presence and own domain names incorporating the CME trademark. The domain name <www.cme.com> was originally registered in 1994 and is still active and redirects users to the Complainants' homepage at "www.cmegroup.com", the CME website. The Complainants own more than 200 domain names that include the CME trademarks, some of which are identified at Annex G to the Complaint.
The CME website serves as a primary marketing tool for the Complainants and as a primary point of communication between the Complainants and their customers. For example, customers rely upon the CME website to obtain key information and access the Complainants' systems and applications through a log-in process.
The Complainant CME owns multiple USA trademark applications and registrations for the CME marks. The Complainant CME has exclusively and continuously used the CME marks since at least as early as 1919. Set out in the Complaint are examples of the USA trademark registrations for the CME marks. In particular, the Panel notes USA trademark registration for the mark CME, registration number 1085681, registered on February 14, 1978, for "conducting a security, mercantile, commodity and monetary exchange and providing services connected therewith"; and CME registration number 3084640, registered on April 25, 2006 for "computer hardware and software for use in providing financial exchange services; providing temporary use of non-downloadable software for use in providing financial exchange services". All of the registrations referred to in the Complaint are valid and subsisting. In addition, according to Complainants, these registrations have attained incontestable status and are conclusive evidence of the Complainant, CME's, ownership and exclusive right to use the CME mark.
The Complainants point out that they own registrations for CME trademarks in multiple foreign jurisdictions, including but not limited to Australia, Brazil, Canada, China, the European Union countries, Hong Kong, China, India, Japan, Mexico, Singapore, Switzerland and the UK. These registrations are also valid and subsisting as set out in the table attached at Annex I to the Complaint.
The success of the Complainants' financial clearing and related services is due, in part, to the extensive promotion and advertising they have undertaken using the CME marks, as a result, the CME marks have come to be associated by members of the relevant consuming public worldwide, with the services of only highest quality. The Complainants consistently devote millions of dollars annually to advertising and promoting their services under the CME marks set out at Annex J to the Complaint. As a result, the CME mark is distinctive, famous and widely recognised around the world.
Early in 2014, the Complainants were alerted to the registration of the disputed domain name. Accordingly, by way of a letter and email from their lawyers, they notified the Respondents of the registered trademark rights in the CME marks. A copy of the demand letter is set out at Annex B to the Complaint. The demand letter clearly advised the Respondents that they had no right to use the trademarks, sought identification of all the domain names owned by the Respondents that included trademarks of the Complainants and demanded that the Respondents cease the infringing conduct and transfer of ownership of such domain names to the Complainants. There was no reply to the demand letter.
In the absence of a Response and any evidence from the Respondents, the Panel accepts the evidence adduced by the Complainants and proceeds to determine the Complaint on the basis of the Complainants' evidence alone.
5. Parties' Contentions
1. The Complainants own trademark rights in the CME marks.
2. The disputed domain name is confusingly similar to the Complainants' registered trademarks.
3. The Respondents are not affiliated or connected with the Complainants in any way. The Complainants have never licensed or authorised the Respondents to use the CME marks or names. The Respondents did not make use of the CME marks prior to the Complainants' adoption and use of the trademarks. There is no evidence that the Respondents have been commonly known by the disputed domain name nor that they have any rights that might predate those of the Complainants'.
4. The Respondents acted in bad faith because:
-(i) the Respondents knew or should have known of the Complainants' trademark rights;
-(ii) the Respondents registered and are using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainants' marks; and
-(iii) the Respondents failed to respond to the Complainants' demand letter.
B. The Respondents
The Respondents did not reply to the Complainants' contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds, based on the evidence referred to above, that the Complainants have both registered and unregistered trademark rights in the marks CME. The Complainants assert that the marks are "famous". However, it is not necessary for the Panel to consider whether or not the marks are famous.
The dominant part of the disputed domain name is the use of the mark CME in conjunction with a generic term, i.e., "commodity traders", which is one of the activities of the Complainants.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainants' CME marks and that the Complainants succeed in relation to this element.
B. Rights or Legitimate Interests
There is no evidence that the Respondents are affiliated or connected with the Complainants in any way. There is no evidence that the Complainants have licensed or authorised the Respondents to use the CME marks or names or, indeed, any of the Complainants' trademarks. Moreover, there is no evidence that the Respondents have been commonly known by the disputed domain name or that they have any rights that may predate those of the Complainants'.
The Complainants point out that by the time of the Respondents' registration of the disputed domain name, the Complainants had already enjoyed "tremendous success" in connection with the use of the CME marks and names.
In these circumstances, the Panel is satisfied that the Complainants have shown that the Respondents have no rights to or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondents knew or should have known of the Complainants' rights in the CME marks and names prior to registration of the disputed domain name. The Complainants registered the marks in jurisdictions across the globe. The Respondents would have been aware of the Complainants' trademark rights and as put by the Complainants "clearly had constructive notice or knowledge of the Complainants' registered trademark rights".
Secondly, the Panel finds that the Respondents intentionally attempted to attract for commercial gain, Internet users to the Respondents' website by creating a likelihood of confusion with the Complainants' marks and corresponding services.
Thirdly, the failure on the part of the Respondents to respond to the demand letter is additional evidence of bad faith. Indeed, the Respondents failed to cease using the disputed domain name despite having received the demand letter from the representatives of the Complainants.
Accordingly, the Panel finds for the Complainants in respect of this element.
For all 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 <cmecommoditytraders.com> be transferred to the Complainants.
Clive Duncan Thorne
Date: November 3, 2014