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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chicago Mercantile Exchange Inc., CME Group Inc. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Dantata Ighodo

Case No. D2021-3285

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” or “US”), represented by Norvell IP llc, United States.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Dantata Ighodo, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <access-cmegroup.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 October 4, 2021. On October 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 6, 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 October 11, 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 October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 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 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 the following trademarks:

- 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 disputed domain name was registered on March 1, 2021. At the time of this decision the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

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

The Respondent first registered and used the disputed domain name <access-cmegroup.com>, to effectuate a fraudulent scheme. The Respondent utilized the names of actual employees of the Complainants to email the Complainants’ customers. Due to the Respondent’s use of the Complainants’ trademarks, the Complainants’ customers were tricked into responding, interacting with, and providing identifying information to the Respondent under the impression they were providing this information to the Complainants, when in fact, they were not.

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 for a fraudulent scheme as described above.

B. Respondent

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

6. Discussion and Findings

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 <access-cmegroup.com> incorporates the CME GROUP word mark in its entirety. The only differences between the disputed domain name and the Complainants’ CME trademarks is the addition of the word “access” and use of a hyphen, which do not prevent a finding of confusing similarity.

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 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 was used for a fraudulent scheme as describe and proved in the complaint. 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. The use of a disputed domain name for illegal activity such as fraud can never confer rights or legitimate interests on a respondent.

As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database, as “Dantata Ighodo”, and has not been commonly known by 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.

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 Complainants state that they were alerted to the registration and use of the disputed domain name by the Complainants’ customers who communicated with the Respondent under the pretenses that they were interacting with the Complainants. The Complainants have evidence that the Respondent attempted to fraudulently impersonate employees of the Complainants through its fraudulent email scheme facilitated through the disputed domain name. The Complaint includes screenshots of emails sent by the Respondent. The Respondent has not denied this statement or the evidence. In light of this, the Panel is of the view that Respondent registered and used the disputed domain name with knowledge of the Complainants’ trademarks and to send fraudulent emails.

This is evidence of bad faith registration and use of the disputed domain name. The Panel therefore holds that the Complaint fulfils the third condition of 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 <access-cmegroup.com> be transferred to the Complainants.

Pablo A. Palazzi
Sole Panelist
Date: November 22, 2021

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