WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Mercantile Exchange Inc. and CME Group Inc. v. kimhyeri

Case No. D2021-2497

1. The Parties

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

The Respondent is kimhyeri, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <cmekorea.com> and <cmekorea.net> are registered with Whois Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 4, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On August 13, 2021, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On August 13, 2021, the Complainant confirmed that it had requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 the Respondent of the Complaint, and the proceedings commenced on August 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on November 5, 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 CME Group has a history dating back to 1848 and is one of the world’s largest financial exchanges, offering futures and options in metals, commodities, foreign exchange, energy, and other products through several exchanges: Chicago Mercantile Exchange Inc. (“CME”), Chicago Board of Trade, Commodity Exchange, and New York Mercantile Exchange. The Complainant CME is one of the world’s leading financial institutions and part of the Complainant CME Group. The Complainant CME was founded in 1898 and began using the name CME in 1919.

The Complainants have offices around the world including in the United States, Canada, Ireland, Singapore, Hong Kong, China, and in the Republic of Korea, and maintain strong relationships with international financial centers including Korea Exchange. The Complainants own registrations for or consisting of the CME mark in a number of jurisdictions including the trademark registration no. 1085681 in the United States which dates back to February 14, 1978 for CME, and the trademark registration no. 450019122 in the Republic of Korea registered on February 27, 2007 for CME CHICAGO MERCANTILE EXCHANGE featuring the Complainant’s globe design logo. The Complainants own more than 200 domain names incorporating the CME mark including <cme.com> registered in 1994 and <cmegroup.com> registered in 2007. In 2019, the Complainants and their related entities generated revenues in excess of USD 4.9 billion, and more than 4.5 billion contracts were traded through the Complainants’ exchanges with a notional value of one quadrillion dollars.

The disputed domain names were registered on March 31, 2021, and at the time of filing of the complaint, resolved to identical websites advertising various financial trading and investment services and displaying the Complainants’ trademarks and globe design logo.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the disputed domain names are confusingly similar to the Complainants’ CME trademark since they consist of CME in which the Complainants have trademark rights, combined with the term “Korea” which is geographically descriptive and only increases confusion given that the Complainants maintain offices in Korea.

The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names, and confirm that they have not authorized or licensed rights to the Respondent in any respect.

Finally, the Complainants contend that the disputed domain names were registered and used in bad faith. The Complainants explain that that they have used the CME mark for over one hundred years and have trademark registrations to the mark which precede the registration of the disputed domain names, and are well known in the financial industry. Given the fame of the Complainants and their longstanding and continuous use of the CME mark, the Complainants argue that the Respondent was well aware of the Complainants’ rights to the CME mark and name. This is evidenced by the fact that the websites linked to the disputed domain names display the Complainants’ CME mark and globe design logo, have an overall look and feel similar to the Complainants’ CME Group website, and offers financial trading services which are the very services of the Complainants. The Complainants argue that the Respondent registered and used the disputed domain names for commercial gain by intentionally creating a likelihood of confusion with the Complainants’ CME mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s services, and to perpetuate a fraud, illegitimate scheme, or scam. Further, the Complainants argue that the Respondent’s lack of response to their demand letter and history of domain name registrations that incorporate well-known third party trademarks including ROLEX, PATEK, SAAB, and SAMSUNG are also indicative of bad faith. Lastly, the Complainants assert that the Respondent’s continued ownership of the disputed domain names represents a threat of infringing use of the disputed domain names and fraudulent activities at the websites connected to the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Language

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their positions on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a Response.

Given the fact that both parties were given the opportunity to submit arguments in the language of their preference, and the Respondent neither raised an objection as to the language of proceeding nor submitted any arguments whatsoever in these proceedings, the Panel finds it proper and fair to render this decision in English.

B. Identical or Confusingly Similar

The Complainants have demonstrated with supporting evidence that they hold trademark registrations for CME and CME family of marks in numerous jurisdictions around the world including the United States and the Republic of Korea, which well precede the registration date of the disputed domain names.

The disputed domain names include the CME mark with the addition of the term “korea” and the CME mark is therefore clearly recognizable in the disputed domain names. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

For the reasons mentioned above, the Panel finds that the first element has been established.

C. Rights or Legitimate Interests

On the basis of the present records, the Panel finds that the Complainants have made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen not to file any Response to these assertions by the Complainants, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.

Furthermore, the use of confusingly similar disputed domain names to offer services in direct competition to the Complainant is not a bona fide offering of goods or services. The disputed domain names themselves are such to risk an implied affiliation to the Complainant, which is reinforced by the presence of the Complainant’s CME mark and globe design logo on the websites. See section 2.5.1, WIPO Overview 3.0.

For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.

D. Registered and Used in Bad Faith

The Panel finds that there are more than sufficient reasons to find bad faith in this case.

The websites at the disputed domain names display the Complainants’ registered CME mark and globe design logo, and advertise financial services for which the Complainants are famous. Not only that, the font and color scheme used on the websites are extremely alike those on the Complainants’ website, contributing to a very similar overall look and feel. Based on this, the Panel can reach no conclusion other than that the Respondent was well aware of the Complainants and their marks and services and intentionally registered the disputed domain names in order to confuse Internet users as to its affiliation with the Complainants and defraud them in some type of a scheme for commercial gain. This is further exacerbated by the fact that the disputed domain names include the geographical term “korea”, which wrongfully suggests that the websites linked to the disputed domain names are for the Complainants’ offices in the Republic of Korea, especially considering that the Complainants do have offices in the Republic of Korea.

For the reasons given above, the Panel finds that the third and final element has been sufficiently established.

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 names, <cmekorea.com> and <cmekorea.net>, be transferred to the Complainant.

Ik-Hyun Seo
Sole Panelist
Date: December 3, 2021