WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. v. Nexperian Holding Limited / Xiaoju Zhang, Zhangxiaoju
Case No. D2017-1141
1. The Parties
The Complainant is Chicago Mercantile Exchange Inc. of Chicago, Illinois, United States of America ("U.S."), represented by Norvell IP llc, U.S..
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Xiaoju Zhang, Zhangxiaoju of Tianjin, China.
2. The Domain Name and Registrar
The disputed domain name <xdcme.com> (the "Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2017. On June 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication in English and Chinese to the Complainant on June 15, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on June 18, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
On June 15, 2017, a third party sent an email communication in Chinese to the Center enquiring the method to unlock the Domain Name. On June 15, 2017, the Center sent an email communication to the third party to request it to clarify its relationship (if any) to the Respondent. The third party did not reply.
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 in Chinese and English of the Complaint, and the proceedings commenced on June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on July 19, 2017. 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 Complainant is part of CME Group, which, according to the Complaint, is the world's largest and most diverse financial exchange with a history dating back to 1848. CME Group offers futures and options in all major asset classes, such as metals, commodities, foreign exchange, energy, and other products through four exchanges: CME or Chicago Mercantile Exchange, CBOT or Chicago Board of Trade, COMEX or Commodity Exchange, and NYMEX or New York Mercantile Exchange.
The Complainant is one of the world's leading financial institutions. Originally founded in 1898, the Complainant began using the CME name in 1919. Traders, financial institutions, investors, corporations and governments use the Complainant for its financial and risk management services related to the trading of commodities. The Complainant's operations extend globally with offices in the U.S., China (including in Hong Kong), Canada, Brazil, United Kingdom of Great Britain and Northern Ireland, Ireland, Singapore, Japan, the Republic of Korea, and India. In particular, the Complainant has had a presence in China since 2005.
The Complainant has an active Internet presence and owns and maintains more than 200 domain names with their accompanying websites incorporating the CME brand. The domain name <cme.com> was originally registered in 1994 and is still active and redirects users to the Complainant's homepage at "www.cmegroup.com" ("CME Website"). The CME Website has been owned by the Complainant since 2007. The Complainant also maintains a website in Simplified Chinese, which is specifically directed towards both customers in China and those in other territories who read Chinese at- "www.cmegroup.com/cn-s/" (the "CME Chinese Website"). The CME Chinese Website serves as a primary marketing tool for the Complainant and as a primary point of communication between the Complainant and its Chinese-reading customers.
The Complainant owns numerous trade mark registrations for the CME trade mark. These include CME, CME GROUP, CME CLEARPORT, CME GLOBEX, and CME EUROPE. The Complainant has exclusively and continuously used the CME trade mark since at least 1919, the CME GROUP trade mark since 2007, the CME CLEARPORT trade mark since at least 2009, the CME GLOBEX trade mark since at least 2006, and the CME EUROPE trade mark since at least 2014.
The earliest CME trade mark registration submitted in evidence dates back to 1978. The CME trade mark registered in China under trade mark registration No. 4162022 in class 36 was registered on December 7, 2007. The Complainant also owns valid, copyrightable subject matter in the CME Website.
In 2016, the Complainant and its related entities generated revenues in excess of USD 3.3 billion dollars. In 2015, more than 3.5 billion contracts were traded through the Complainant and its affiliated exchanges with a notional value of one quadrillion dollars (USD 1,000,000,000,000,000). The Complainant spends millions of U.S. dollars annually to advertising and promoting their services under the CME trade mark.
The Domain Name was registered on January 15, 2017. It is connected to a website (the "Website") which closely resembles the CME Chinese Website. The Website uses images and information that were previously on the CME Chinese Website including financial charts and graphs. The Website states that one of the company's development goals is "to develop into China's CME".
5. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
5.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email of June 18, 2017, that the language of the proceeding should be English. The Complainant contends that the Domain Name consist of English characters. Also, the Website does have English words and characters demonstrating that the Respondent has proficiency and is able to communicate in the English language. The cost of translation services and the inconvenience of having to conduct the proceeding in Chinese impose a disproportionate burden on the Complainant. It would also cause undue delay.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the nature of the proceeding. The Respondent chose not to respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
5.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the CME trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant's CME trade mark in its entirety with the addition of random letters of the alphabet as a prefix, "xd". The addition of these two random letters does nothing to minimize the confusing similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly smilar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not affiliated or connected to the Complainant in any way nor has it been authorised or licencsed by the Complainant to register and use the Domain Name which incorporates the Complainant's CME trade mark. It does not appear to have any independent right to the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. The Domain Name is connected to a website which is being made to closely resemble the CME Chinese Website. This includes copying images, charts, graphs and information taken from the CME Chinese Website. Making unauthorized use of the website content of a third party and creating a misleading impression of a website as belonging to the third party cannot be considered to be a bona fide offering of goods and services. Further, the Respondent has also not shown that it is making legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known CME trade mark when it registered the Domain Name. The CME trade mark registrations predate the registration date of the Domain Name substantially. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The Complainant is well-known throughout the world including in China where the Respondent is based. Further, the Respondent copied the CME Chinese Website on the Website which makes it clear that it was aware of the CME trade mark. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Website purports to mimic and copy substantially the CME Chinese Website. This misrepresentation by purporting to be a well-known financial institution is likely to be for nefarious purposes. Even if no fraudulent activities can be shown, it is clear that the Respondent is seeking to lure users to the Website by capitalising on the Complainant's fame and reputation with the intent to cause confusion on the part of Internet users by creating the false impression that the Website is that of the Complainant or authorised by it. The Panel is of the view that the use of the CME trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's goods and services. Whether there was actual provision of financial services by the Respondent or if it was being used as a phishing site, the use of the Domain Name shows a clear intention on the part of the Respondent to mislead Internet users into believing that the Respondent's website is authorised or endorsed by the Complainant. The Respondent has chosen not to challenge these allegations. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith.
Accordingly, the Complainant has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <xdcme.com> be transferred to the Complainant.
Date: July 21, 2017