WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chicago Mercantile Exchange Inc. v. Fortune Trading
Case No. D2020-3132
1. The Parties
Complainant is Chicago Mercantile Exchange Inc., United States of America (“United States”), represented by Norvell IP llc, United States.
Respondent is Fortune Trading, United States.
2. The Domain Names and Registrar
The disputed domain names <cmegroupmalaysia.com> (the “First Domain Name”) and <cmegroup-my.com> (the “Second Domain Name”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Domain Name <cmegroupmalaysia.com>. On November 23, 2020, Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 12, 2020, the Center received an email communication from Complainant submitting an Amended Complaint requesting the addition of the Second Domain Name <cmegroup-my.com> to the Complaint.
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 Respondent of the Complaint, and the proceedings commenced on November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on December 21, 2020.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 31, 2020. 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.
On January 14, 2021, the Panel requested the Center to obtain Registrar verification in respect of the Second Domain Name. On January 15, 2021, the Registrar confirmed that Respondent is the registrant of the Second Domain Name. On January 26, 2021, the Panel issued Procedural Order No. 1 informing the Parties of the inclusion of the Second Domain Name in the proceedings and inviting Respondent to submit a Response by January 31, 2021. Respondent did not submit a Response.
4. Factual Background
Complainant is a financial institution established in the United States offering financial and risk management services related to the trading of commodities with operations in numerous countries worldwide. Complainant operates the FOREX regulated marketplace for foreign exchange trading and offers an electronic marketplace for foreign exchange trading. Complainant operates a primary website at “www.cmegroup.com”, and has registered numerous domain names incorporating its CME and CME GROUP marks.
Complainant is the proprietor of numerous registrations for the CME and CME GROUP marks in jurisdictions worldwide, including the following:
- United States Trademark No. 1085681 for CME (word mark) registered on February 14, 1978 for services in class 36;
- United States Trademark No. 3367684 for CME GROUP (word mark) registered on January 15, 2008 for services in class 36;
- Malaysian Trademark No. 4013847 for CME (word mark), registered on September 15, 2004 for goods in class 9;
- Malaysian Trademark No. 2013001151 for CME GROUP (word mark), registered on January 18, 2013 for services in class 36.
The First Domain Name, <cmegroupmalaysia.com>, was registered on November 10, 2020. According to the material in the case file, it previously resolved to a website mimicking Complainant’s own website. The Second Domain Name, <cmegroup-my.com>, was registered on November 27, 2020 and resolved to a similar website.
5. Parties’ Contentions
Complainant requested the addition of the Second Domain Name <cmegroup-my.com> to the Complaint. Complainant states the following reasons for consolidation: the additional domain name is registered to Respondent, it is comprised of Complainant’s CME and CME GROUP trademarks, and it resolves to a website that is an exact copy of the infringing material previously displayed at “www.cmegroupmalaysia.com”. Complainant states that the Second Domain Name was registered by Respondent the day after Complainant was notified that the website to which the First Domain Name had been disabled by the Registrar. The request has been made prior to appointment of the Panel, before Respondent has filed a Response, and well before issuance of a decision. Consolidating the actions would be in the interest of efficiency.
Complainant’s other contentions may be summarized as follows:
Under the first element, Complainant states that it is one of the world’s leading financial institutions. Originally founded in 1898, Complainant began using the “CME” name in 1919. Complainant’s operations extend globally, and it maintains partnerships with 12 leading exchanges worldwide. In 2019, Complainant ant its related entities generated revenue in excess of USD 4.9 billion, and 4.5 billion contracts were traded through Complainant’s exchanges. Complainant devotes considerable resources to popularizing its marks and is active on the Internet. Previous panels have recognized that CME is a famous mark, and that the CME and CME GROUP marks enjoy widespread fame in the financial industry.
The disputed domain names were registered well after the time that Complainant established rights in these marks. Complainant owns prior registered rights to the CME and CME GROUP trademarks in Malaysia, where the disputed domain names are being used. The disputed domain names contain Complainant’s marks in their entirety with the addition of geographic terms “malaysia” and “my”, an abbreviation for Malaysia. The addition of a geographic term to an identical mark does not avoid confusion between a disputed domain names and Complainant’s trademark.
Under the second element, Complainant states that Respondent is not affiliated with or connected to Complainant, nor has Complainant ever authorized Respondent to use its marks, or to register any domain name incorporating the CME or CME GROUP marks or names. Respondent did not make use of the CME or CME GROUP marks prior to Complainant’s adoption and use of the marks. Respondent has knowingly adopted the well-known marks of a third party. Respondent has not used, and is not using or preparing to use, the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names and the websites copy Complainant’s name and website, and are designed to deceive Internet users. There is no evidence that Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
Under the third element, Complainant states that Respondent registered and has been using the disputed domain names in bad faith because Respondent knew of Complainant’s rights in the CME and CME GROUP marks prior to registration of the disputed domain names; Respondent registered and is using the disputed domain names to perpetuate a fraud, illegitimate scheme or scam; Respondent registered the disputed domain names for commercial gain; and Respondent registered the disputed domain names using fake registrant and contact details.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Issue - Consolidation of Complaint
Pursuant to parragraph 10 of the UDRP Rules:
(a) the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The principles to assess a request to add an additional domain name after the Complaint is notified to Respondent are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.12.
This Panel finds that it is appropriate to permit consolidation of the proceedings. Such consolidation is congruent with previous Panel decisions (see, for example, De Beers Intangibles Limited v. Romano Mudano, WIPO Case No. D2017-0323). Complainant holds relevant trademark rights and the proposed additional domain name is prima facie registered by the same Respondent. The Second Domain Name was registered shortly after suspension of the website to which the First Domain Name had resolved, subsequent to complaint notification, clearly indicating that Respondent has attempted to frustrate the proceedings by registering an additional domain name. Such a scenario is envisioned in WIPO Overview as an example of circumstances under which consolidation would be permitted. See WIPO Overview 3.0, paragraph 4.12.2 and cases cited thereunder. Respondent has made no Response nor any other communication in connection with this Complaint. The content of the websites to which both disputed domain names resolve or resolved is identical. The Panel considers that consolidation would be fair and equitable to the interests of both parties, and the below discussion will therefore consider both disputed domain names.
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.
B. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the CME and CME GROUP marks through registrations in numerous jurisdictions including in Malaysia, which is referenced in both disputed domain names. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s CME and CME GROUP marks with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar with Complainant’s marks. Both disputed domain names contain Complainant’s marks in their entirety. The addition of the geographic terms “malaysia” and “my” (the two-letter abbreviation for Malaysia) does not prevent a finding of confusing similarity with Complainant’s marks.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain names, Respondent had no rights or legitimate interests in the disputed domain names. The nature of the disputed domain names, which contain Complainant’s long-established marks together with the geographic terms “malaysia” and “my”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. Such an impression is reinforced by the content of the fraudulent websites to which the disputed domain names resolved. See WIPO Overview 3.0, section 2.5.2.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the CME or CME GROUP marks with the permission of Complainant. The evidence in the record indicates the disputed domain names were used for websites that closely mirrored that of Complainant. Through these fraudulent websites, Respondent appears to be phishing for login information and passwords of Complainant’s customers. The Panel finds that Respondent is deliberately impersonating Complainant and attempting to deceive Internet users. Such fraudulent activities can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case do not permit the inference of any rights nor legitimate interests on the part of Respondent.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration and use under the Policy, paragraph 4(b)(iv). The Panel agrees with previous UDRP panels that the CME and CME GROUP marks are widely known (see, for example, Chicago Mercantile Exchange Inc. and CME Group Inc. v. Romeo Bato Jr. and Cocoo Restaurant, WIPO Case No. D2012-1619). Complainant’s rights in the CME and CME GROUP marks significantly predate the registration of the disputed domain names. It is not credible that Respondent was unaware of Complainant’s well-established marks when it registered the disputed domain names. The record supports a finding that Respondent registered the disputed domain names specifically with the intention of attracting Internet users searching for Complainant’s goods and services.
Considering all these circumstances, the Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
The Panel finds that Respondent has demonstrated bad faith in using the disputed domain names for a website mimicking Complainant’s website and incorporating Complainant’s marks, images and layout. The websites invited users to enter personal information and passwords, which is a form of phishing. Moreover, once the First Domain Name was disabled, Respondent promptly registered the Second Domain Name and created a website that was identical to the website to which the First Domain Name had resolved. Finally, the email address associated with Respondent has been used to register numerous other domain names reproducing the trademark of other financial entities.
The Panel therefore finds that Complainant has established the third element under 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 names <cmegroupmalaysia.com> and <cmegroup-my.com> be transferred to Complainant.
Date: February 5, 2021