WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. and CME Group Inc. v. Domain Administrator, PrivacyGuardian.org / Domain Administrator, QHoster.com
Case No. D2016-0973
1. The Parties
The Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, United States of America ("United States"), represented by Norvell IP llc, United States.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Domain Administrator, QHoster.com of Montevideo, Uruguay.
2. The Domain Name and Registrar
The disputed domain name <cmemarkets.net> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 May 23, 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 May 28, 2016.
The Center verified that the Complaint together with the amended 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 June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2016.
The Center appointed Petter Rindforth as the sole panelist in this matter on June 29, 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.
The Panel noted that the Complainants had requested the Panel to issue a decision transferring the disputed domain name to the Complainants. In order to clarify which of the two Complainants the Complainants referred to, the Panel issued a Request for Clarification (Transfer Request) on July 4, 2016. The Complainants replied on July 5, 2016, confirming that Chicago Mercantile Exchange Inc. should be identified as the Complainant in this respect.
The Panel shall issue its Decision based on the Complaint, the Amended Complaint, the Clarification, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant Chicago Mercantile Exchange Inc. ("CME") is the owner of a number of registered trademarks including the word/letters "CME", such as the following registrations issued by the United States Patent and Trademark Office ("USPTO"):
- CME (word), Registration No. 1,085,681, registered on February 14, 1978 for services in Class 36;
- CME (word), Registration No. 3,084,640 registered on April 25, 2006 for goods and services in Classes 9 and 42;
- CME GROUP (word), Registration No. 3,367,684 registered on January 15, 2008 for services in Class 36;
- CME GROUP (word), Registration No. 4,544,078 registered on June 3, 2014 for goods and services in Classes 9, 36 and 42;
- CME CLEARING EUROPE (word), Registration No. 4,035,463 registered on October 4, 2011 for services in Class 36.
The disputed domain name <cmemarkets.net> was registered on April 13, 2016. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainants.
5. Parties' Contentions
The Complainants are leading financial institutions. The Complainant CME Group Inc. is self-described as the world's largest and most diverse financial exchange, with a history dating back to 1848. CME Group is the parent company to the Complainant CME and has been using the name CME GROUP since its formation in 2007, well before the registration of the disputed domain name <cmemarkets.net>. The Complainant CME began using the CME name in 1919.
The Complainants operate globally with offices in the United States, Canada, Brazil, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), Ireland, China, Singapore, Hong Kong, China, the Republic of Korea, and Japan, and strategic relationships with companies in a number of other countries.
The Complainants maintain an active Internet presence, using more than 200 domain names that include the CME or CME GROUP trademarks. The trademarks are registered in United States, as well as in multiple foreign jurisdictions, including but not limited to Australia, Brazil, Canada, China, European Community, Hong Kong, China, India, Japan, Mexico, Singapore, Switzerland, and the United Kingdom.
The Complainant CME also owns valid, copyrightable subject matter in the CME Website, protected by U.S. copyright laws.
The CME and CME GROUP trademarks have come to be associated by members of the relevant consuming public worldwide with services of only the highest quality. In short, the CME and CME GROUP trademarks are assets of immeasurable value. The goodwill symbolized by the trademarks in connection with financial related products and services belongs exclusively to the Complainants.
In 2015, the Complainants and their related entities generated revenues in excess of USD 3.3 billion. In 2015, more than 3.5 billion contracts were traded through the Complainants' exchanges with a notional value of one quadrillion dollars ($1,000,000,000,000,000). The Complainants consistently devote millions of dollars annually to advertising and promoting their services under the trademarks.
The disputed domain name <cmemarkets.net> is confusingly similar to the Complainants' famous and registered CME trademarks, as it contains the identical name of the Complainants – CME – combined with the generic term "markets", which refers to a market in which people trade financial securities, commodities, and other fungible items of value at transaction costs and at prices that reflect supply and demand. The term "market" has little or no trademark significance, and serves no function to distinguish the domain name from the Complainants' registered CME trademarks.
The Complainants state that the Respondent has no rights to or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainants in any way. At no time have the Complainants licensed or otherwise endorsed, sponsored, or authorized the Respondent to use the Complainants' registered trademarks.
The Respondent has not used <cmemarkets.net> in connection with a bona fide offering of goods or services. Instead, the website associated with the disputed domain name is a mirrored copy of the Complainants' genuine CME website. There is no legitimate need to create such a copy, other than to perpetrate a fraud, namely, a phishing or other illegitimate scheme.
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.
Finally, the Complainants argue that the Respondent registered and is using the disputed domain name in bad faith, as the Respondent had knowledge of the Complainants' rights in CME trademarks and names prior to registration of the domain name; the Respondent registered and is using <cmemarkets.net> for a fraud or illegitimate scheme, for commercial gain by intentionally creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's services; the Respondent used the Complainants' copyrighted materials without authorization and engaged in willful copyright infringement; and the Respondent employed a privacy protection service in the registration of the disputed domain name.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have obtained multiple trademark registrations for CME (e.g., Registration No. 1,085,681, of February 14, 1978) with the USPTO, as well as in other countries.
The Panel finds that the Complainants have established rights in the CME trademark for purposes of the Policy through its trademark registrations with the USPTO. SeeJanus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002‑0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive).
The relevant part of the disputed domain name is "cmemarkets". The addition of the generic Top-Level Domain ".net" is insufficient to distinguish the disputed domain name from the Complainants' trademark.
The Panel concludes that the disputed domain name consists of the Complainants' trademark CME, with the addition of the generic word "markets". As stated in many UDRP decisions, the addition of a generic term does not necessarily distinguish a domain name from a trademark.
In fact, a prior panel has concluded that the addition of the generic term "markets" after the CME trademark did not diminish the likelihood of confusion. See Chicago Mercantile Exchange Inc. v. Whois Privacy Protection Service Inc./Nguyen Thanh Cong, WIPO Case No. D2010-1766 (finding the domain name <cmemarkets.com> to be confusingly similar to the CME trademark). See also Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447 (noting "market" as generic and finding <swarovskimarket.net> to be confusingly similar to the registered trademark SWAROVSKI).
The Panel therefore concludes that <cmemarkets.net> is confusingly similar to the Complainants' trademark CME.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainants' prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainants' trademarks and is not an authorized agent or licensee of the Complainants' products, services or trademarks. There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in <cmemarkets.net>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent's use of the disputed domain name for a website that is close to identical to the Complainants' own website was an obvious attempt to mislead customers seeking the Complainants' services and website and to collect information on Complainants' customers. "Phishing" is commonly regarded as "the attempt to acquire sensitive information such as usernames, passwords, and credit card details (and sometimes, indirectly, money), often for malicious reasons, by masquerading as a trustworthy entity in an electronic communication".
Such use cannot create rights or legitimate interests as such. See National Westminister Bank Plc v. World Connection Web Works, WIPO Case No. D2012-2097 (finding that "[t]o the extent that Respondent had been using the disputed domain name to engage in phishing as alleged by Complainant (and unrefuted by Respondent) this demonstrates Respondent's lack of any legitimate rights in or to the disputed domain name.").
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As concluded above, the Complainants' trademark CME (in different versions) is well protected and well known in numerous countries in the world. According to the Registrar, the Respondent QHoster.com is based in Montevideo, Uruguay.
It is obvious that the Respondent has registered and used <cmemarkets.net> with full knowledge of the Complainants' prior rights. The addition of the generic word "markets" was not made in order to make a difference, but rather to add a word that could well be connected to the business of the Complainants.
The disputed domain name is used for a website which is more or less a copy of the Complainants' real website. In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainants, thus enabling the Respondent to earn revenues by attracting users to its website or even to collect private and/or financial information on the Complainants' customers. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant's website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364("the incorporation of Complainant's trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant's…domain names").
The Panel also notes that the Respondent is using a privacy service to avoid disclosing the Respondent's real identity. Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.
In this case, the Respondent has used the disputed domain name to create a fake copy of the Complainants' website, which is indeed unfair use under the Policy. Therefore, the Panel concludes that the Respondent has used the privacy registration service to increase the difficulties for the Complainants in identifying the Respondent. This is further indication of the Respondent's registration and use in bad faith.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainants have succeeded in proving the three elements within paragraph 4(a) of 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 <cmemarkets.net> be transferred to the Complainant, Chicago Mercantile Exchange Inc.
Date: July 11, 2016