WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Mercantile Exchange Inc. and CME Group Inc. v. jiang wang

Case No. D2020-3427

1. The Parties

The Complainants are Chicago Mercantile Exchange Inc. (the “First Complainant”) and CME Group Inc. (the “Second Complainant”), United States of America (“United States”), represented by Norvell IP LLC, United States.

The Respondent is jiang wang, China.

2. The Domain Name and Registrar

The disputed domain name <cmegroup-inc.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 December 15, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2020, 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 December 22, 2020 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 December 28, 2020.

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 January 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 23, 2021. 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 financial institutions. The First Complainant is owned by the Second Complainant. The First Complainant is the owner of multiple trademark registrations for CME and CME GROUP, including United States trademark registration number 1,085,681 for CME, registered on February 14, 1978, specifying services in class 36; United States trademark registration number 3,084,640 for CME, registered on April 25, 2006, specifying goods and services in classes 9 and 42; United States trademark registration number 3,367,684 for CME GROUP, registered on January 15, 2008, specifying services in class 36; and United States trademark registration number 4,544,078 for CME GROUP, registered on June 3, 2014, specifying goods and services in classes 9, 36 and 42. The Second Complainant is also the owner of trademark registrations, including Chinese trademark registration number 16735726 for a semi-figurative mark featuring the initials and word CME GROUP, registered on August 28, 2017, specifying services in class 36. Those trademark registrations remain current. The Complainants have also registered multiple domain names, including <cmegroup.com>, registered in 2007, that they use in connection with a website to provide information about themselves and their services, which is available in several language versions, including Chinese.

The Respondent is an individual resident in China.

The disputed domain name was registered on September 13, 2019. It resolves to a webpage in Chinese displaying advertising and hyperlinks to gambling and pornography websites.

The Registrar confirmed that the language of the Registration Agreement is English.

5. Parties’ Contentions

A. Complainants

The disputed domain name wholly incorporates, and is thus confusingly similar to, the Complainants’ CME and CME GROUP marks.

The Respondent has no rights or legitimate interests in respect of 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 any of the Complainants’ trademarks, or to register any domain name incorporating those marks. Moreover, the Respondent cannot show any facts that establish any rights to, or legitimate interests in, the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent registered and is using the disputed domain name in bad faith because (i) the Respondent had constructive notice and actual knowledge of the Complainants’ rights in the CME and CME GROUP marks prior to registration of the disputed domain name; and (ii) the Respondent registered and is using the disputed domain name with pornography.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Multiple Complainants

The Complaint was filed by two complainants against a single respondent. The First Complainant is owned by the Second Complainant. Both Complainants own trademark registrations consisting of, or containing, CME GROUP. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the CME GROUP marks.

The disputed domain name incorporates the CME GROUP word mark as its initial element (omitting the space between “cme” and “group” for technical reasons). It also incorporates the non-figurative elements of the Complainant’s semi-figurative CME GROUP mark. For technical reasons, the disputed domain name cannot include the figurative element of that trademark, hence that other element can be disregarded in the comparison between the disputed domain name and this mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10.

The disputed domain name also includes a hyphen and the abbreviation “inc” which, in the United States, indicates that a company has been incorporated. This element does not dispel the confusing similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name also includes a generic Top-Level Domain (“gTLD”) (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name resolves to a webpage displaying advertising and hyperlinks to gambling and pornography websites. The disputed domain name incorporates the Complainant’s CME GROUP mark as its initial element. The Complainant submits that the Respondent is not affiliated with it in any way and that at no time has the Complainant licensed or otherwise endorsed, sponsored, or authorized the Respondent to use any of the Complainant’s trademarks, or to register any domain name incorporating those marks. Nothing in the content of the website suggests any reason for the choice of the disputed domain name besides attracting Internet users searching for the Complainant or its services. Accordingly, the Panel does not consider the Respondent’s use of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor does the Panel consider this to be a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database, as “jiang wang”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2019, after the Complainant obtained its trademark registrations for CME GROUP, including its semi-figurative CME GROUP mark in China, where the Respondent is resident. The Complainant has made long-standing use of its CME GROUP trademark and acquired a considerable reputation in the financial sector, including through its Chinese website. The disputed domain name wholly incorporates the CME GROUP mark and combines it only with “-inc” which, but for the hyphen, makes it identical to the Second Complainant’s corporate name. The Respondent offers no explanation for his choice of the disputed domain name. In view of these circumstances, the Panel considers it more likely than not that the Respondent knew of the Complainant’s CME GROUP trademark at the time that he registered the disputed domain name and targeted it in bad faith.

The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s CME GROUP mark, in connection with a webpage advertising and displaying hyperlinks to gambling and pornography websites. This use is for the commercial gain of the Respondent, or the operators of the linked websites, or both. Given the Panel’s findings in section 6.2B above, the Panel considers that, on the balance of probabilities, the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s CME GROUP trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <cmegroup-inc.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: March 9, 2021