WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CME Group Inc. v. Mathieu Da Cruz

Case No. D2021-1067

1. The Parties

The Complainant is CME Group Inc., United States of America (“United States”), represented by Norvell IP LLC, United States.

The Respondent is Mathieu Da Cruz, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <abide-financiel.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 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 April 14, 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 April 20, 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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was on May 10, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 25, 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 Complainant is CME Group Inc., a company dedicated to financial exchange operations, offering futures and options in all major asset classes through five exchanges, with global operations, and offices in the United States, Canada, Brazil, United Kingdom, Ireland, Singapore, Hong Kong, China, Republic of Korea, India, and Japan.

In 2019, the Complainant acquired Abide Financial, Ltd., which is a leading regulatory reporting provider.

The Complainant owns, among others, the following trademark registrations in the United Kingdom:

The Complainant is the owner of several domain names, among them, <abide-financial.com>.

The disputed domain name was registered on October 12, 2020. The disputed domain name does not resolve to an active website and it was used to send fraudulent emails containing links to malwares and trojan worms while impersonating one of the Complainant’s employees.

5. Parties’ Contentions

A. Complainant

The Complainant asserted the following:

That it is a company that dates back to 1848, dedicated to financial exchange operations, offering futures and options in major asset classes through five exchanges, with global operations.

That in 2019 the Complainant acquired Abide Financial, Ltd., which is a leading regulatory reporting provider.

That it owns the domain name <abide-financial.com>, as well as trademark registrations for ABIDE FINANCIAL in the United Kingdom.

That it has used the ABIDE FINANCIAL trademark well before the date when the disputed domain name was registered.

That it has become associated by members of the relevant consuming public with goods and services of the highest quality, as a result of the extensive promotion and advertising of the ABIDE FINANCIAL mark.

That the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s trademark ABIDE FINANCIAL, and that the Respondent has engaged in typosquatting.

That the only differences between the disputed domain name and the ABIDE FINANCIAL trademark are that the disputed domain name switches an “A” for an “E” in the term “financiel”, and that the terms “abide” and “financiel” are separated by a hyphen, which does not change the fact that the disputed domain name is confusingly similar to the Complainant’s trademark.

That the Respondent is not affiliated or connected to the Complainant in any way, and that the Complainant has not authorized the Respondent to use the ABIDE FINANCIAL trademark, or to register the disputed domain name.

That the Respondent cannot prove that he has legitimate interests in the disputed domain name.

That there is no evidence that the Respondent has been commonly known by the disputed domain name or that he has any rights that predate the Complainant’s use and registration of the ABIDE FINANCIAL trademark, because the Complainant started to use said trademark well before the Respondent registered the disputed domain name on October 12, 2020.

That the Respondent was aware of the Complainant’s well-known trademark, and knowingly adopted the disputed domain name in order to create a false impression that the Respondent is associated with the Complainant.

That there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

That the Respondent registered the disputed domain name with a misspelling of the Complainant’s trademarks to confuse customers into believing that they are dealing with the Complainant, for the Respondent’s commercial gain, which does not constitute a bona fide use.

That the Respondent registered the disputed domain name in bad faith since he had constructive and actual knowledge of the Complainant’s rights to the ABIDE FINANCIAL trademarks before registering the disputed domain name, since such trademarks were registered long prior to the date of registration of the disputed domain name.

That the Respondent’s use of the services of Contact Privacy Inc., in order to conceal his identity, constitutes evidence of bad faith.

That the Respondent has used the disputed domain name to distribute malicious emails containing links to malware and trojan worms while impersonating an employee of the Complainant by claiming that there was an important document to view. That after clicking on the link, Internet users gained access to the Complainant’s employee’s email inbox. That the Complainant has evidence that various employees’ email accounts have been accessed by an unauthorized party.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

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

In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules Rules (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant has filed evidence showing that it owns registrations for the trademark ABIDE FINANCIAL in the United Kingdom, where the Respondent appears to have his domicile.

The Panel finds that the disputed domain name <abide-financiel.com> is confusingly similar to the Complainant’s trademark ABIDE FINANCIAL, as it incorporates said trademark in its entirety, with two differences that do not eliminate or even reduce the risk of confusion: i) the substitution of a letter “a” for a letter “e” in the term “financiel”, and ii) the addition of a hyphen between the terms “abide” and “financiel” (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The term “financiel” is a common misspelling of the word “financial”. The incorporation of such misspelling into the disputed domain name, plus the addition of a hyphen makes this a typical case of typosquatting (see section 1.9 of the WIPO Overview 3.0; see also Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; Rolls-Royce plc v. John Holt., WIPO Case No. D2017-1842; Mastercard Prepaid Management Services Limited v. Cash SDSD., WIPO Case No. D2020-1938; and ZB, N.A., a national banking association, dba Zions First National Bank v. Sharon White, WIPO Case No. D2017-1769).

The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO, WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

In light of the above, the first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire 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 trademark or service mark at issue.

The Complainant has asserted that it is not related to the Respondent, and that no license or authorization have been granted to the said Respondent, to use the trademark ABIDE FINANCIAL. The Complainant has also argued that the Respondent has not been commonly known by the disputed domain name. These allegations have not been contested by the Respondent (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272).

The disputed domain name, which consists of a typosquatted version of the Complainant’s trademark ABIDE FINANCIAL, shows that the Respondent has targeted the Complainant and its employees. Therefore, the Respondent’s conduct cannot be considered as a legitimate noncommercial or fair use of the disputed domain name (see Wachovia Corporation v. Peter Carrington, WIPOCase No. D2002-0775; and Edmunds.com, Inc. v. Digi Real Estate Foundation WIPO Case No. D2006-1043).

The Complainant has argued that the Respondent has used the disputed domain name to impersonate employees of the Complainant, to distribute malicious emails containing links to malwares and trojan worms, with the intention to defraud other employees of the Complainant. According to the evidence filed by the Complainant, the disputed domain name was used in an email, which read: “[…] I have shared an important document with you. Use the web link below to view/print […]”. This fraudulent conduct cannot be deemed to have taken place in good faith (see Instagram, LLC v. Temp Name Temp Last Name, Temp Organization, WIPO Case No. D2019-0249; TRAVELGENIO, S.L. v. Rosabel Maduro, WIPO Case No. D2017-1392; Olayan Investments Company Establishment v. Namesco Limited d/b/a Globaldomainprivacy.net / Jeffrey Nicholson, WIPO Case No. D2012-1303). On the contrary, the acts of impersonation, malware distribution and phishing perpetrated by the Complainant are illegal, and thus cannot confer to him rights to or legitimate interests in the disputed domain name (see section 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283).

Accordingly, the Complainant has satisfied the requirements of the second element of the Policy.

C. Registered and Used in Bad Faith

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

The Complainant has ascertained its rights over the ABIDE FINANCIAL trademark in the United Kingdom, where the Respondent appears to have his domicile. The dates of registration of the Complainant’s trademark significantly precede the date of registration of the disputed domain name.

Taking the above into consideration, as well as the fact that the Respondent has targeted the Complainant and its employees, it is clear that the Respondent knew about the Complainant when the disputed domain name was registered, which amounts to bad faith registration under the Policy (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur WIPO Case No. D2019-0208).

The disputed domain name is a typosquatted version of the Complainant’s trademark, which in itself constitutes bad faith registration under the Policy (see Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043; MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com, WIPO Case No. D2004-1034; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Martin Hughes <boehringer-ingalheim.com>, WIPO Case No. D2016-1546).

According to the evidence filed the Complainant, the disputed domain name has been used to impersonate employees of the said Complainant, and to distribute malicious emails incorporating a links to malware sent to other Complainant’s employees. Impersonation, malware distribution, and phishing constitute bad faith use under the Policy (see section 3.4 of the WIPO Overview 3.0; see also BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; National Westminster Bank plc v. Sites / Michael Vetter, WIPO Case No. D2013-0870; Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov / Privacy Protect, LLC (privacy Protect.org), supra; Télévision Française 1 v. Kenechi Arene, WIPO Case No. D2019-1578

In light of the above, the third element of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15 of the Rules, the Panel orders that the disputed domain name <abide-financiel.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: June 8, 2021