WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. and CME Group Inc. v. Johnson Atru
Case No. D2015-1941
1. The Parties
The Complainants are Chicago Mercantile Exchange Inc. ("CME") and CME Group Inc. ("CME Group") (collectively, the "Complainants"), both of Chicago, Illinois, United States of America ("United States" or "U.S."), represented by Norvell IP llc, United States.
The Respondent is Johnson Atru of Hallway, Louisiana, United States.
2. The Domain Name and Registrar
The disputed domain name <cmeclearing-eu.com> is registered with CV. Jogjacamp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2015. On October 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 14, 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 following facts, relevant to the Panel's determination, are set forth in the Complaint and the Respondent does not refute them.
The Complainants are financial institutions. CME Group asserts that it is the world's largest and most diverse financial exchange, and CME provides financial and risk management services. CME Group and CME are parent and subsidiary, respectively, and each claim trademark rights in variations of the mark "CME" through longstanding use by themselves, their predecessors, and their affiliates. Of note, CME owns U.S. registrations for the following marks (the "CME Marks"):
- CME CLEARING EUROPE, Reg. No. 4,035,463;
- CME GROUP & Globe Design, Reg. No. 4,544,077;
- HOW THE WORLD ADVANCES, Reg. No. 4,292,870.
The Complainants' operations extend globally with offices in the U.S., Canada, Brazil, United Kingdom of Great Britain and Northern Ireland, Singapore, China, Republic of Korea, India, and Japan. CME enjoys the protection of registrations in many of those countries.
The disputed domain name was registered on July 14, 2015. The Respondent used the disputed domain name to set up – without the Complainants' authorization – a website that featured certain CME Marks, and otherwise was designed to lure visitors to disclose personal information (the "Infringing Website").
5. Parties' Contentions
The Complainants assert that (i) the disputed domain name is confusingly similar to the distinctive and well-known CME Marks, in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in the disputed domain name because, among other things, the Respondent is not affiliated or connected with the Complainants in any way, nor is the Respondent using or preparing to use the disputed domain name in connection with any bona fide offering of goods or services; and (iii) bad faith registration and use is clear from, among other things, the Respondent's fraudulent phishing scheme.
The Respondent did not reply to the Complainants' contentions.
6. Preliminary Issues
A. Multiple Complainants
The Complainants request the Panel hear the present dispute – brought by two complainants against one respondent – as a consolidated, "unitary" complaint. The Panel grants the request.
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(c) of the Rules provides, in relevant part, that "the [p]anel shall ensure that the administrative proceeding takes place with due expedition."
Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") summarizes the consensus view of UDRP panels on the consolidation of multiple complainants as follows:
UDRP panels have articulated principles governing the question of whether a complaint filed with the Center 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 assert they are related corporate entities and have a common legal interest sufficient to justify consolidation. The Complainants also assert there is no reason to require each of them to submit an almost identical complaint against the Respondent with nearly identical facts, legal arguments and requested relief. Moreover, according to the Complainants, the Respondent will not suffer any prejudice, and consolidation will not affect the Respondent's rights, in responding to the Complaint.
The Panel accepts these arguments in favor of consolidation and – joining a previous panel that was tasked to answer essentially the same question in Chicago Mercantile Exchange Inc., CME Group Inc. v. Lun Ai, WIPO Case No. D2013-0350 – grants the request to consolidate.
B. Identity of Respondent
The Complainants have brought to light their reasonable belief, based upon investigation, that someone other than the Respondent was the owner of the Infringing Website. In light of this concern, the Complainants request that if it later comes to light that some individual or entity other than the Respondent is the actual owner of the disputed domain name, they be granted leave to file an Amended Complaint.
Paragraph 10(b) of the Rules requires the Panel to ensure that each party is given a fair opportunity to present its case. This requirement arises in the context of the Panel's related obligation (under paragraph 10(a) of the Rules) to "conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules."
In this case, there is no indication that the Complainants wrongly ascertained the WhoIs information for the disputed domain name. In response to a request from the Center for registrant verification, the Registrar did not disclose an underlying registrant of the disputed domain name that differs from the named Respondent. Although the Complainants did uncover a different name apparently associated with the hosting of the Infringing Website, nothing in the record indicates the Respondent, as named, is not the proper responsible party in this dispute.
Absent any indication that the Complainants might have more appropriately filed against another party, the Panel is satisfied that the Complainant properly named the Respondent in this case.
7. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have shown that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainants have provided ample evidence of their ownership or rights (including trademark registrations) in the mark CME in connection with a range of services related to the financial industry. Additionally, and of importance to this decision, Complainant CME is the owner of the registered mark CME CLEARING EUROPE, which resembles the disputed domain name very closely. (The Panel interprets the "-eu" portion of the disputed domain name to represent the European Union, which, for these purposes, is the semantic equivalent of the word "EUROPE" appearing in the mark CME CLEARING EUROPE.)
"The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark." See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainants' trademark CME in its entirety, as a dominant element, with the addition of the other words "clearing" and "eu", which, far from distinguishing or differentiating the disputed domain name from the Complainants' well-known CME trademark, make confusing similarity even more likely due to the way the addition of those words makes the disputed domain name more closely resemble CME's mark CME CLEARING EUROPE.
Similarly, the addition of the generic Top-Level Domain ("gTLD") ".com" to a disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the domain name, and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
For these reasons, the Panel finds that the Complainants have satisfied this first element of the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainants make that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview 2.0, paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, setting up the Infringing Website cuts against any finding of rights or legitimate interests. Moreover, the Respondent is not known to the Complainants. The Complainants have never authorized or permitted the Respondent to use their mark CME or any variation thereof, to act in the name of the Complainants, or to register and use the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location."
In this case, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainants put forward a number of creditable arguments to support a finding of bad faith registration and use. This Panel finds sufficient, however, the registration and use of the disputed domain name to set up a fraudulent, phishing website. Establishing a website of this nature using a domain name that incorporates the Complainants' marks is a strong example of bad faith under the Policy.
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 <cmeclearing-eu.com> be transferred to the Complainants.
Evan D. Brown
Date: December 28, 2015