WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. and CME Group Inc. v. YinZheZhu
Case No. D2015-2183
1. The Parties
Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, United States of America (“U.S.”), represented by Norvell IP llc, U.S.
Respondent is YinZheZhu of JiLin, China.
2. The Domain Names and Registrar
The disputed domain names <cmehanalo.com>, <hanalo-cme.com>, <hanalocme.com>, <hanalo-cme.net>, <hanalocme.net>, <hanarocme.com>, <seven-cme.com>, <sevencme.com> and <sevencme.net> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2015. On December 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 3, 2015, 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 Disputed 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 Respondent of the Complaint, and the proceeding commenced on December 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2016.
The Center appointed Moonchul Chang as the sole panelist in this matter on January 15, 2016. 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
Complainants are Chicago Mercantile Exchange Inc. (“Complainant CME”) and CME Group Inc. (“Complainant CME Group”) and both of them are Delaware corporations having their principal places of business located in Chicago, Illinois, U.S. Complainant CME is one of the world’s leading financial institutions and Complainant CME Group is the parent company of Complainant CME.
Complainant CME began using the CME name in 1919. Complainant CME Group has been using the name CME Group since 2007. Complainant CME owns multiple U.S., Chinese, and South Korean trademark registrations for the CME marks. The Complaint notes that “the use of the CME name by Complainant CME Group is authorized by Complainant CME through a written trademark license agreement.” 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, Complainant CME owns registrations of CME (registered on February 27, 2007), and CME GROUP (registered on July 31, 2012).
According to the publicly available WhoIs information and confirmed by the Registrar, the disputed domain names were registered as follows:
<sevencme.com> and <seven-cme.com> were registered on July 24, 2015;
<sevencme.net> was registered on September 15, 2015;
<hanalo-cme.com>, <hanalo-cme.net> and <hanalocme.net> were registered on June 11, 2015;
<hanalocme.com> and <hanarocme.com> were registered on June 30, 2015; and
<cmehanalo.com> was registered on June 27, 2015.
5. Parties’ Contentions
Complainants contend that:
(i) The disputed domain names are confusingly similar to Complainants’ trademark CME. They combine Complainants’ CME mark with the addition of either: (i) “seven” alone or with a hyphen, (ii) “hanalo” either alone or with a hyphen, or (iii) “hanaro”. The addition of the terms “seven”, “hanalo”, and “hanaro” is not sufficient to avoid confusion of the disputed domain names with Complainants’ trademark CME.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainants have not authorized Respondent to use the CME mark for registration of any domain name incorporating the mark. There is no conceivable legitimate interest in the use of the disputed domain names by Respondent;
(iii) The disputed domain names were registered and are being used by Respondent in bad faith. Firstly, Respondent knew or should have known of Complainants’ rights in the CME mark prior to registration of the disputed domain names. Secondly, Respondent registered multiple domain names incorporating Complainants’ CME mark. Thirdly, Respondent registered and used the disputed domain names to perpetrate a fraudulent phishing scheme. Fourthly, Respondent registered and used the disputed domain names for commercial gain by creating a likelihood of confusion with CME mark as to the sources, sponsorship, affiliation or endorsement of Respondent’s services. Finally, Respondent provided false contact information in the WhoIs record for the disputed domain names.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from Respondent’s failure to submit a reply as it considers appropriate (see paragraph 14(b) of the Rules).
Under paragraph 4(a) of the Policy, Complainants must prove each of the following:
(i) the disputed domain names are identical or confusingly similar to Complainants’ trademark or service mark; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names incorporate Complainants’ CME mark in its entirety with the addition of either (i) “seven” alone or with a hyphen, (ii) “hanalo” either alone or with a hyphen, or (iii) “hanaro”. The dominant feature of the disputed domain names is “cme” which is identical to the CME trademark and the word “seven”, “hanalo”, or “hanaro” is a generic term or only a descriptive suffix. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to find the domain name “confusingly similar” within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678). The generic Top-Level Domain (gTLD) suffix “.com”, or “.net” can be generally disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by Complainants.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on Complainants. However, once Complainants present a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, the burden of production shifts to Respondent to show it rights or legitimate interests. If Respondent fails to come forth asserting any right or legitimate interest, Complainant is considered to have satisfied its burden (see Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, Complainants have never licensed or authorized Respondent to use the CME trademark or to register any domain names incorporating the CME mark. Respondent has used Complainants’ widely known registered CME marks without permission from Complainants.
Secondly, Complainants contend that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. In this present case, Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain names to rebut Complainant’s prima facie case.
Thirdly, there is no evidence presented to the Panel that Respondent has used, or has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain names. In addition, there is no evidence to suggest that Respondent has been commonly known by the disputed domain names.
Accordingly, the Panel concludes that Complainants have satisfied the second element under paragraph 4(a) of the Policy in the present case.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. As this requirement is conjunctive, the complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since Complainants’ trademark CME is widely known and the disputed domain names entirely incorporate the CME mark, in this Panel’s view it is highly unlikely that Respondent was unaware of Complainants’ trademark at the time of the registration of the disputed domain names.
Secondly, Respondent’s disputed domain names are associated with websites that promote online trading and include the English statements “the Global Leader in Online Trading”, “CME Solid Trading”, “Global Derivatives Market” with Complainants’ registered CME Group logo. It is considered that Respondent deliberately chose to register and use the disputed domain names to create a false impression of association with Complainants’ CME’s trading service.
Thirdly, having considered Respondent’s registration of multiple confusingly similar disputed domain names incorporating Complainants’ widely known trademark CME, the Panel finds that these registrations constitute a typical pattern of cybersquatting in bad faith.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been established with respect to the disputed domain names in accordance with paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainants have satisfied the third element under paragraph 4(a) of the Policy in the present case.
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 names <cmehanalo.com>, <hanalo-cme.com>, <hanalocme.com>, <hanalo-cme.net>, <hanalocme.net>, <hanarocme.com>, <seven-cme.com>, <sevencme.com> and <sevencme.net> be transferred to Complainants.
Date: February 8, 2016