WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Mercantile Exchange Inc. and CME Group Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / segsea segun

Case No. D2021-0182

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / segsea segun, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <cmefbank.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, 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 Complainant on January 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 28, 2021.

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 February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. The Respondent sent an email communication on February 4, 2021. The Center notified the Commencement of Panel Appointment Process on March 1, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on March 8, 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 Chicago Mercantile Exchange Inc., (“Complainant Chicago Mercantile”) and CME Group Inc., (“Complainant CME Group”) (collectively, “Complainants”).

The Complainants claim Complainant CME Group is the world’s largest and most diverse financial exchange, with history dating back in 1848. The Complainant CME Group offers future and options in all major asset classes, such as metals, commodities, foreign exchange, energy and other products through five 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 Chicago Mercantile is one of the world’s leading financial institutions, and part of the Complainant CME Group. Originally founded in 1898, Complainant Chicago Mercantile began using the CME name in 1919.

In 2019, the Complainants and their related entities generated revenues in excess of USD 4,9 billion dollars.

The Complainants hold numerous trademark registrations for CME mark, such as the following:

- the United States Registration No. 1085681 filed on July 20, 1977 and registered on February 14, 1978 for CME (word), covering services in class 36;

- the Australian Registration No. 1020670 filed on September 15, 2004 and registered on November 8, 2005 for CME (word), covering goods and services in classes 9, 36 and 42; and

- the Hong Kongese Trademark Registration No. 300287839 filed on September 17, 2004 and registered on September 17, 2004 for CME (word), covering goods and services in classes 9, 36 and 42.

Previous UDRP panels have found the Complainants’ mark to be distinctive and widely recognized around the world particularly in the financial field. See also Chicago Mercantile Exchange Inc., CME Group Inc. v. leemungjin, WIPO Case No. D2015-0672; Chicago Mercantile Exchange Inc. and CME Group Inc. v. Domain Administrator, PrivacyGuardian.org / Domain Administrator, QHoster.com, WIPO Case No. D2016-0973; or Chicago Mercantile Exchange Inc. and CME Group Inc. v. Romeo Bato Jr. and Cocoo Restaurant, WIPO Case No. D2012-1619.

The Complainants own more than 200 domain names that include the mark CME, such as <cmegroup.com> (the main website) and <cme.com>.

The disputed domain name <cmefbank.com> was registered on September 27, 2020 and, at the time of filing the Complaint, it was used in association with a website that displays the Complainants’ CME marks. Also, the website corresponding to the disputed domain name provides the address of the Complainant Chicago Mercantile on its “contact us” page, stating on the home page that “you are welcome to Chicago Mercantile Exchange Foreign Bank (CMEF)” and requests the customers to create a personal and business account to conduct transactions.

A communication from the Respondent was received by the Center on February 4, 2021 stating “The web is taken down already and will be blocked soon”. Currently, the disputed domain name resolves to an index page.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the disputed domain name is identical to their famous CME trademark, company and domain names, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainants request the transfer of the disputed domain name to them.

B. Respondent

The Respondent did not formally reply to the Complainants’ contentions.

6. Discussion and Findings

In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaints and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

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

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainants hold rights in the CME trademark.

The disputed domain name <cmefbank.com> incorporates the trademark CME with an additional letter, “f” and the term, “bank”. However, such additions do not prevent a finding of confusing similarity as the Complainants’ trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark CME, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainants assert that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark CME, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not replied to the Complainants’ contentions and has not come forward with relevant evidence to rebut the Complainants’ prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.

In fact, at the time of filing the Complaint the disputed domain name resolved to a commercial website featuring the Complainants’ trademarks, business address and commercial name without any approval from the Complainants, and was inviting Internet visitors to register accounts on such website. The Respondent has used the disputed domain name in an attempt to obtain valuable customer information for its own fraudulent purposes. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainants use the CME name for over a hundred years and hold trademark rights for CME since at least 1977.

The disputed domain name was registered in 2020 and reproduces the Complainants’ well-known mark together with the letter “f” that can derive from “foreing” and the term “bank”, both closely associated with the Complainants’ financial services industry.

From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, knowing the Complainants and targeting their trademark.

The Respondent is using without permission the Complainants’ trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainants. This impression is created particularly by the incorporation of the CME trademark in the disputed domain name, the content on the website provided thereunder which includes the Complainants’ trademarks, genuine address and commercial name, and the lack of any disclaimer on this website.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “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] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name incorporates the Complainants’ trademark and the website operated under the disputed domain name displays the Complainants’ trademarks and offers identical services, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainants, for its commercial gain.

Furthermore, according to the evidence provided in the Complaint and unrefuted by the Respondent, the Respondent was using the disputed domain name to request Internet visitors to create accounts on such website, in an attempt to obtain confidential information from third parties. This is a classic phishing scheme and establishes bad faith use and registration.

The Respondent registered the disputed domain name under a privacy service and did not put forward any arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <cmefbank.com> be transferred to the Complainants.

Marilena Comanescu
Sole Panelist
Date: March 12, 2021