WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc., CME Group Inc., New York Mercantile Exchange, Inc., Board of Trade of the City of Chicago, Inc. v. Domains By Proxy, LLC / Carole Goldberg, Goldberg Enterprises, LLC
Case No. D2016-2329
1. The Parties
The Complainants are Chicago Mercantile Exchange Inc. of Chicago, Illinois, United States of America ("United States"); CME Group Inc. of Chicago, Illinois, United States; New York Mercantile Exchange, Inc. of New York, New York, United States; and Board of Trade of the City of Chicago, Inc. of Chicago, Illinois, United States, represented by Norvell IP llc, United States (collectively, the "Complainants").
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carole Goldberg, Goldberg Enterprises, LLC of Louisville, Kentucky, United States (collectively, the "Respondents").
2. The Domain Names and Registrar
The disputed domain names <cbot.exchange>, <cme.exchange>, <cmegroup.exchange>, and <nymex.exchange> (the "Disputed Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 15, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 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 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 16, 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 Complainants are Chicago Mercantile Exchange Inc. (the "CME" Complainant), CME Group Inc. (the "CME Group" Complainant), New York Mercantile Exchange, Inc. (the "NYMEX" Complainant), and the Board of Trade of the City of Chicago, Inc. (the "CBOT" Complainant).1 The CME Group Complainant is one of the world's largest and most diverse financial exchanges, with a history dating back to 1848. The CME Group Complainant offers futures and options in major asset classes, such as metals, commodities, foreign exchange, energy, and other products through four exchanges. All of the Complainants are well-known financial institutions.
The NYMEX Complainant owns United States trademark registrations for NYMEX, including United States Registration No. 1731593 in International Class 36, registered on November 10, 1992, and United States Registration No. 2656475 in International Class 36, registered on December 3, 2002. The CBOT Complainant owns United States trademark registrations for CBOT, including United States Registration No. 1716422 in International Class 36, registered on September 15, 1992. The CME and CME Group Complainants own United States trademark registrations for CME and CME GROUP, including United States Registration No. 1085681 for CME in International Class 36, registered on February 14, 1978, and United States Registration No. 3367684 for CME GROUP in International Class 36, registered on January 15, 2008. In addition, the CME and CME GROUP Complainants own trademark registrations in many countries worldwide. All of the above-referenced trademark registrations will hereafter be referred to as the "Complainants' Marks".
The Complainants also own hundreds of domain names that include the Complainants' Marks, including <cmegroup.com>, which resolves to the Complainant's official website, "www.cmegroup.com". The official website has been owned by the Complainants since 2007 and serves as a primary tool for Complainants' customers, acting as a primary point of communication regarding the operation of the CME, CBOT and NYMEX exchanges.
The Disputed Domain Names <cme.exchange>, <nymex.exchange> and <cbot.exchange> were registered on August 30, 2014. The Disputed Domain Name <cmegroup.exchange> was registered on December 30, 2014. The Disputed Domain Names resolve to parking pages that display pay-per-click sponsored links to third-party websites in the financial services industry, which links contain competing services to those provided by the Complainants.
The Complainants sent a cease-and-desist letter to the Respondents on October 31, 2016, requesting the transfer of the Disputed Domain Names to the Complainants. The Respondents refused to transfer the Disputed Domain Names, despite the Complainants' offer to reimburse them for out-of-pocket registration fees for the Disputed Domain Names.
5. Parties' Contentions
The following are the Complainants' contentions:
- The Disputed Domain Names are identical to the Complainants' trademarks.
- The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
- The Disputed Domain Names were registered and are being used in bad faith.
- The Complainants seek the transfer of the Disputed Domain Names from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondents did not reply to the Complainants' contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainants prove all of the following three elements in order to be successful in these proceedings:
(i) The Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, do the Complainants have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainants have established rights in the Complainants' Marks based on both longstanding use as well as the Complainants' ownership of multiple incontestable federally registered trademarks. The Disputed Domain Names <cbot.exchange>, <cme.exchange>, <cmegroup.exchange> and <nymex.exchange> consist of the Complainants' Marks followed by the generic Top-Level Domain ("gTLD") ".exchange". The gTLD ".exchange" may refer to an exchange in which people trade financial securities, commodities, and other items of value at transaction costs, precisely the nature of the Complainants' business. The Respondents' registration of the Complainants' Marks in their entirety followed by the gTLD ".exchange" and used with financial exchange-related services does not reduce the confusion between the Disputed Domain Names and the Complainants' Marks. See Deutsche Börse Aktiengesellschaft (Deutsche Börse AG) v. Jerry Amuno, J.Skylimit Publishing / WhoisGuard Protected, WhoisGuard, Inc., WIPO Case No. D2015-0605 (<eurex.exchange> found to be identical to the Complainant's registered EUREX mark; panel ordered transfer of the domain name to the Complainant).
Moreover, the addition of a gTLD such as ".exchange" in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Names are identical to the Complainants' Marks.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied 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.
The Complainants have not authorized, licensed, or otherwise permitted the Respondents to use the Complainants' Marks. The Complainants do not have any type of business relationship with the Respondents, nor are the Respondents making a legitimate noncommercial or fair use of the Disputed Domain Names. Instead, the Panel finds that the Respondents were improperly using the Disputed Domain Names for commercial gain.
Moreover, the Respondents' registration and use of the Disputed Domain Names to resolve to websites with commercial links to third-party advertisements for services that compete with those of the Complainants' competitors, does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name when resulting in a connection to goods or services competitive with those of the trademark holder).
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not submitted any substantive arguments or evidence to rebut the Complainants' prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.
C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainants have demonstrated the Respondents' bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondents knew or should have known of the registration and use of the Complainants' Marks prior to registering the Disputed Domain Names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondents registered the Disputed Domain Names long after the Complainants first registered and used the Complainants' Marks.
The longstanding and public use of the Complainants' Marks would make it disingenuous for the Respondents to claim that they were unaware that the registration of the Disputed Domain Names would violate the Complainants' rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondents' registration and use of the Disputed Domain Names indicates that it was made in bad faith.
Second, the Panel finds that the Respondents used the Disputed Domain Names in bad faith by attempting to attract for commercial gain Internet users to the Respondents' websites or other online locations by creating a likelihood of confusion with the Complainants' Marks as to the source, sponsorship, affiliation, or endorsement of the Respondents' websites. The Respondents' registration and use of the Disputed Domain Names indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainants and the Complainants' Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law".).
Third, the Respondents' bad faith is further illustrated by the Disputed Domain Names' resolution to pay-per-click parking pages with links to websites that offer services competing with those of the Complainants. It is now well-established that the use of parking pages in this manner is strong evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondents registered and used the Disputed Domain Names in bad faith in an attempt to create a likelihood of confusion with the Complainants' Marks.
Finally, it appears that the Respondents registered the Disputed Domain Names for the purpose of selling them for valuable consideration in excess of the out-of-pocket costs directly related to registration of the Disputed Domain Names. Such conduct supports a finding of bad faith under paragraph 4(b) of the Policy. See Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (finding bad faith when the respondent offered to sell the disputed domain name for an amount in excess of the costs of registration).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.
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 <cbot.exchange>, <cme.exchange>, <cmegroup.exchange>, and <nymex.exchange> be transferred to the Complainants.
Lynda M. Braun
Date: December 28, 2016
1 The Panel concludes that the Complainants have appropriate standing to bring this Complaint and that consolidation is appropriate. The CME, NYMEX, and CBOT Complainants are owned by the CME Group Complainant, they are related corporate entities, and have a common legal interest sufficient to justify the submission of one Complaint against the Respondents. Moreover, use of the CME name by the Complainant CME Group is authorized by the Complainant CME through a trademark license agreement. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985 (finding separate entities that own trademark rights to have sufficient common interest for handling multiple complaints in a single proceeding).