WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc., CME Group Inc. v. leemungjin
Case No. D2015-0672
1. The Parties
The Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc., both of Chicago, Illinois, United States of America, represented by Norvell IP llc, United States.
The Respondent is leemungjin of Daejeon, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <ironcme.com> is registered with Whois Networks Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2015. On April 15, 2015, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2015, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 20, 2015, the Center notified the Parties, in both English and Korean, that the language of the registration agreement for the disputed domain name is Korean. In this transmission, the Center requested the Complainants “to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into Korean; or …. 3) submit a request for English to be the language of the administrative proceedings.” To the Respondent, the Center instructed, in relevant part: “In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by April 25, 2015. Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials (in light of the considerations enumerated in paragraph 3) above) as to why the proceedings should not be conducted in English.”
On April 21, 2015, the Complainants replied, requesting that English be the language of the proceeding and reiterating its arguments relating to the language question contained in the Complaint. The Respondent did not reply to the Complainants’ request, nor did the Respondent submit any request or material to the Center relating to the language of the proceeding.
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, in both English and Korean, formally notified the Respondent of the Complaint and the proceeding commenced on April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 17, 2015. The Respondent did not submit any response. Accordingly, on May 19, 2015, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on June 1, 2015. 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 Inc. describes itself as a financial exchange that offers futures and options in all major asset classes; the Complainant Chicago Mercantile Exchange Inc. provides financial and risk management services relating to the trading of commodities. CME Group Inc., the parent company, owns Chicago Mercantile Exchange Inc. The Complaint notes that “the use of the CME name by Complainant CME Group is authorized by Complainant [Chicago Mercantile Exchange Inc.] through a written trademark license agreement.”
The Complainant Chicago Mercantile Exchange Inc. has registered various marks comprising, or consisting, of CME GROUP or CME, in a number of countries. In the United States Patent and Trademark Office, CME was registered on February 14, 1978, and CME GROUP on January 15, 2008. The Complaint states that in the Republic of Korea, Chicago Mercantile Exchange Inc. owns registrations of CME (registered on February 27, 2007), and CME GROUP (on July 31, 2012).
The Respondent registered the disputed domain name <ironcme.com> on August 29, 2014.
5. Parties’ Contentions
The Complainants contend principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainants have rights; (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.
In addition, the Complaint states, inter alia:
“Complainant CME Group is the world’s largest and most diverse financial exchange with a history dating back to 1848.”
“Complainant [Chicago Mercantile Exchange Inc.] is one of the world’s leading financial institutions …. Complainant … began using the CME name in 1919.”
“Complainants’ operations now extend globally with offices in the U.S., Canada, Brazil, United Kingdom, Ireland, Singapore, Hong Kong, China, South Korea, and Japan.”
“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. For example, Complainants have strategic relationships with: Korea Exchange in South Korea ….”
“[T]he [CME] brand is distinctive, famous and widely recognized around the world. Accordingly, it is entitled to a broad scope of protection.”
“As part of Complainants’ enforcement program, Complainants’ domain name watch service uncovered registration for the Domain Name <ironcme.com> that incorporated Complainants’ [CME] mark. The Domain Name was associated with the active website www.ironcme.com (hereinafter ‘Infringing Website’)….”
“The Infringing Website claimed to be operated by IronCME Solid Trading (‘IronCME’) located at … Seoul, South Korea …. IronCME claimed to offer financial trading services in the field of futures, options, FX products, and other derivatives.”
“Respondent is not affiliated with Complainants in any way. At no time have Complainants licensed or otherwise endorsed, sponsored, or authorized Respondent to use Complainants’ registered [CME] Marks or the name CME.”
The Respondent did not reply to the Complainants’ contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Per paragraph 14(b), the Panel may also draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding.
Under paragraph 11(a) of the Rules, the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. But the rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the registration agreement is Korean. Nevertheless, the Complainants request that English be the language of the proceeding; the Panel agrees.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in the English language. The Respondent did not respond to the Center’s notification, and has defaulted. Under these circumstances, the Panel determines that English is the language of the proceeding.
Turning to the merits, in order to prevail, the Complainants must satisfy each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <ironcme.com> is confusingly similar to a mark in which the Complainant has rights, namely, CME.
The disputed domain name incorporates the Complainants’ mark in full, preceded by the generic term, “iron”. The Panel notes the Complainants’ argument that the generic term here “identifies a particular type of commodities and derivatives products traded on Complainants’ financial exchanges – iron ore and iron futures, options and swaps, etc.”
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants have met their initial burden of making a prima facie showing. The Respondent then has the burden to demonstrate any such rights or legitimate interests, but has declined to take part in this mandatory proceeding. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainants must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
At the time of the Complaint, the disputed domain name resolved to a site whose content was mostly in Korean, but also in English. There were references to “CME Group”, “Global Derivatives Market”, and “The Global Leader in Online Trading”, among others. Viewing the site as a whole, the attempt at a connection to the Complainants’ products and services was plain.
The Panel concludes that by using the disputed domain name, the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site … by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site”, as set forth in paragraph 4(b)(iv).
The third element is also satisfied.
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 <ironcme.com> be transferred to the Complainants.
Date: June 15, 2015