WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov
Case No. D2016-0654
1. The Parties
The Complainants are Chicago Mercantile Exchange Inc. (the "first Complainant") and CME Group Inc. (the "second Complainant") of Chicago, Illinois, United States of America ("United States"), represented by Norvell IP llc, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States, and Nikolay Korobeynikov of Moscow, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <cmestock.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2016. On April 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on April 6, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on April 7, 2016.
The Center verified that the Complaint together with the amended Complaint (both hereinafter referred as 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 April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2016.
The Center appointed Andrew F. Christie as the sole panelist in this matter on May 6, 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
The second Complainant, CME Group Inc., is the parent company to the first Complainant, Chicago Mercantile Exchange Inc., and has been using the name "CME Group" since its formation in 2007. The first Complainant is one of the world's leading financial institutions, originally founded in 1898. For more than 100 years, the first Complainant has provided financial and risk management services related to the trading of commodities to financial institutions, investors, corporations and governments. The Complainants' operations now extend globally, with offices in many countries within the Americas, Europe and Asia. In 2014 the Complainants and their related entities generated revenues in excess of USD 3.1 billion.
The first Complainant owns multiple trademark registrations in the United States for the trademark CME and the trademark CME GROUP, the earliest of which date from 1978 and 2008, respectively. The first Complainant also owns trademark registrations for the trademark CME and the trademark CME GROUP in multiple foreign jurisdictions, including, but not limited to, Europe, Asia, Canada and Australia, dating from at least as early as 1985. The second Complainant is authorized by the first Complainant to use these trademarks.
The disputed domain name was registered on December 26, 2015. The Complainant has provided screenshots from March 31, 2016, and April 1, 2016, showing pages of a website resolving from the disputed domain name, which mirrored, and purported to be, the website of "CME Group" and which provided information relating to the trading of futures and options. Currently, it appears that the disputed domain name does not resolve to a website.
5. Parties' Contentions
The Complainants contend that the disputed domain name is confusingly similar to the Complainants' CME trademark because it includes as a dominant element the term "cme", which is identical to the Complainants' CME trademark, and combines this with the term "stock", which refers to a financial instrument commonly traded on a financial exchange, thereby adding to the confusing similarity because the Complainants are well-known in the international financial community.
The Complainants contend that the Respondent has no rights or legitimate in interests in the disputed domain name because: (i) the Respondent is not affiliated or connected with the Complainants in any way, and has never been licensed or authorized to use the CME and CME GROUP trademarks or any of the Complainants' other trademarks; (ii) the Respondent cannot show any facts that establish any rights to, or legitimate interests in, the disputed domain name; (iii) the Respondent did not make use of the CME and CME GROUP trademarks prior to the Complainants' adoption and use of these trademarks; (iv) the Respondent has not used, and is not using or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services, as the website resolving from it was a mirrored copy of the Complainants' genuine website and was established for the purposes of phishing or some other illegitimate scheme; (v) there is no evidence that the Respondent has been commonly known by the disputed domain name or that it has any rights that might predate those of the Complainants; and (vi) there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent: (i) knew of the Complainants' rights in the CME and CME GROUP trademarks and names prior to the registration of the disputed domain name; (ii) registered and is using the disputed domain name to perpetrate a fraud or illegitimate scheme; (iii) registered and used the disputed domain name for commercial gain by intentionally creating a likelihood of confusion with the Complainants' trademarks and names as to the source, sponsorship, affiliation, or endorsement of the Respondent's services; (iv) used the Complainants' copyrighted materials on the website to which the disputed domain name resolved without authorization and engaged in willful copyright infringement; and (v) employed a privacy protection service in the registration of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the first Complainant's registered trademark CME, with the addition of the non-distinctive and descriptive term "stock" and the generic Top-Level Domain (gTLD) identifier ".com". The distinctive component of the disputed domain name is "cme", which is identical to the first Complainant's CME trademark. The Panel finds the addition of the term "stock" does not lessen the inevitable confusion of the disputed domain name with the first Complainant's CME trademark. This is because "stock" is a commonly used term in the Complainants' area of business, the financial industry, and is descriptive of the products and services provided by the Complainants under the CME trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not been authorized by the Complainants to use the CME trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainants shows that the disputed domain name was used to resolve to a website which mirrored the Complainants' genuine website. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the first Complainant first registered its CME trademark. The evidence on the record provided by the Complainants with respect to their use of the CME trademark and the content of the website to which the disputed domain name resolved, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the first Complainant's CME trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainants with respect to the Respondent's use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the first Complainant's CME trademark as to the affiliation of that website. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
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 <cmestock.com> be transferred to one of the Complainants1.
Andrew F. Christie
Date: May 19, 2016
1 To the extent necessary for any implementation purposes, the identity of the Complainant to whom the disputed domain name is to be transferred should be notified by the Complainants to the concerned registrar.