The Complainants are Chicago Mercantile Exchange Inc., CME Group Inc., United States of America (“United States”), represented by Norvell IP llc, United States.
The Respondents are WhoisGuard, Inc., Panama / loving kkon, Thailand / Domain Administrator, See PrivacyGuardian.org, United States / no1, changhe piao, China.
The disputed domain names <cme-exchange.com> (“the first disputed domain name”) and <cme-korea.com> (“the second disputed domain name”) are registered with NameCheap, Inc.
The disputed domain names <cme-koreaiso.com> (“the third disputed domain name”), <cme-korealaw.com> (“the fourth disputed domain name”), <cme-option.com> (“the fifth disputed domain name”), and <cme-stock.com> (“the sixth disputed domain name”) are registered with NameSilo, LLC (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2021. On January 7, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On January 7, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on January 15, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 19, 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 Respondents of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 25, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on March 3, 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.
The Complainant CME Group is a financial exchange which offers futures and options in a number of assets, including metals, commodities, foreign exchange and energy. The Complainant Chicago Mercantile Exchange is a company within the CME Group and provides financial and risk management services. The Complainants operate in multiple countries, including in the United States, Hong Kong, China, South Korea, and Japan. In 2019, the Complainants’ combined annual revenues were in excess of USD 4.9 billion.
The Complainants’ services are supplied under the trading style CME, which has been protected by the Complainants via numerous trade mark registrations worldwide. These include, by way of example only, United States Service Mark, registration number 1,085,681, for CME in class 36, registered on February 14, 1978. The Complainants also maintain an active Internet presence and have registered a large number of domain names, including <cmegroup.com> and <cme.com>, both of which resolve to active websites.
The disputed domain names were registered between January 4, 2020 and August 2, 2020. The Respondent loving kkon is the registrant of the first and second disputed domain names. The Respondent no1, changhe piao, is the Registrant of the third to sixth disputed domain names. Each of the disputed domain names is considered further in the following section.
The Complainants assert they are entitled to bring a single Complaint against both Respondents because all the disputed domain names are subject to common control or ownership and the websites to which they resolve are substantially identical and are offering the same financial services. Moreover, they say, each of the disputed domain names uses the Complainants’ CME trade mark and all the Respondents’ websites are primarily in the Korean language. The Complainants say that consolidation promotes the shared interests of the parties in avoiding unnecessary duplication of time and expense.
Before considering the Complainants’ assertions, it is necessary to provide a little more detail about each of the disputed domain names.
The first disputed domain name was registered on August 2, 2020. The Complainants assert that the first and second disputed domain names resolve to essentially the same website. However, the screen prints provided by the Complainants do not clearly identify the webpages which are said to relate to the first disputed domain name.
The second disputed domain name was registered on May 14, 2020. The Complainants have provided screen prints of the website to which, it says, this disputed domain name resolves, which are dated May 18, 2020. The content of this website is partly in Korean script but it prominently uses throughout, in Latin script, the words “CME Trading” as well as the Complainants’ distinctive logo which takes the form of a segmented blue globe. This website purports to be owned and/or operated by the Complainants and primarily promotes a smartphone app on which trading activities can be conducted.
The third disputed domain name was registered on July 9, 2020 and the fifth disputed domain name was registered on January 4, 2020. The Complainants make no specific assertions in respect of these disputed domain names, nor is it clear whether any of the screen prints provided by the Complainants relate to websites to which either of these disputed domain names have resolved.
The fourth disputed domain name was registered on June 25, 2020 and the sixth disputed domain name was registered on June 2, 2020. The Complainants say that these disputed domain names previously resolved to websites identical to those to which the first and second disputed domain names resolve. It is unclear which, if any, of the screen prints provided by the Complainants relate to any website to which the fourth disputed domain name resolved. The screen prints of the website to which the sixth disputed domain name has resolved are identifiable and are dated June 25, 2020. This website is mainly in Korean script but contains liberal references throughout, in Latin script, to “CME KOREA Law” (and in places “CME KOREA”) as well as the Complainants’ globe logo. This website includes tables showing details of the prices at which various shares have been traded and promotes the expertise of “CME KOREA Law” in financial markets.
Section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”. As, in some cases, the screen prints of the Respondents’ websites provided by the Complainants did not clearly set out to which website they related, the Panel has attempted to visit any website to which each of the disputed domain names might link and established that, in fact, none of the disputed domain names presently resolves to an active website.
Whilst neither the Policy nor the Rules expressly provides for the consolidation of claims against multiple respondents into a single administrative proceeding, the principles applied by panels considering requests for consolidation are set out at paragraph 4.11.2 of the WIPO Overview 3.0. This explains that “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. See also Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
Among the factors considered by panels in determining whether consolidation is appropriate, are similarities in or relevant aspects of (i) the registrants’ contact information (ii) the content or layout of websites corresponding to the disputed domain names, (iii) whether the registrants are targeting a specific sector, (iv) the relevant language/scripts of the disputed domain names.
Notwithstanding the glitches with the screen prints provided and the fact that none of the disputed domain names are presently active, there are strong indications that all the disputed domain names are under common control. First, each disputed domain name is essentially similar in character, comprising the Complainants’ CME mark followed by a hyphen and then a word closely associated with the Complainants’ activities. Second, whilst the websites to which the second disputed domain name (registered by the same Respondent who registered the first disputed domain name) and sixth disputed domain name (registered by the same Respondent who registered the third to fifth disputed domain names) previously resolved are not identical in content, their style, layout and form are very similar, not least in their unequivocal claims to be websites owned and/or operated by the Complainants. Moreover, both websites purportedly relate to the Complainants’ activities in Korea and use mainly Korean script. Third, both Respondents have sought to hide their identities behind privacy services. Fourth, all the disputed domain names are now inactive. The Panel notes also that neither Respondent has challenged the Complainants’ assertions.
The Panel is satisfied that the overall evidence points to all the disputed domain names being under common control and that it is procedurally efficient, as well as fair and equitable to all parties, for the Complainants’ case in respect of all the disputed domain names to be dealt with within a single Complaint.
The Complainants assert that the disputed domain names are confusingly similar to trade marks in which it has rights. Each of the disputed domain names incorporates the Complainants’ CME mark in full and it comprises their dominant element. The only differences are the addition of a hyphen and the additional words included in each of the disputed domain names. These words do not diminish the confusing similarity between the disputed domain names and the Complainants’ marks.
The Complainants assert also that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated or connected with the Complainants. The Complainants have never licensed or authorized the Respondents to use their CME marks in any way, nor to register any domain names incorporating them. There is no evidence that the Respondents have been commonly known by disputed domain names nor that they may have any rights which predate those of the Complainants. Each of the disputed domain names was registered well after the Complainants’ first use of its CME marks in 1919. Moreover, the Respondents have not used, nor are they preparing to use, the disputed domain names in connection with a bona fide offering of goods and services. Instead, the Respondents’ websites are designed to deceive the Complainants’ customers by creating the false impression that their services are associated with the Complainants.
The Complainants having satisfied their burden in relation to the second element, it is for the Respondents to come forth with evidence refuting their assertions and establishing their rights or interests in the disputed domain names.
Finally the Complainants say that the disputed domain names have been registered and are being used in bad faith. The Respondents will have known of the Complainants’ rights in their CME marks, which they had accrued well before the dates of registration of the disputed domain names. The Respondents registered and are using the disputed domain names to perpetrate a fraud, illegitimate scheme, or scam. The Respondents have registered and are using the disputed domain names for commercial gain by intentionally creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship or endorsement of the Respondents’ services. The Respondents’ use of privacy services further establishes their bad faith intent.
The Respondents did not reply to the Complainants’ contentions.
Dealing, first, with the Respondents’ failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order to succeed in their Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and is being used in bad faith.
The information provided by the Complainants in relation to their trade mark registrations for CME, including the mark in respect of which full details are provided above, establish their rights in this service mark.
For the purpose of determining whether the disputed domain names are identical or confusingly similar to its mark, the generic Top-Level Domain (“gTLD”), that is “.com”, is disregarded as this is a technical requirement of registration.
The disputed domain names comprise the Complainants’ CME service mark in full, followed by a hyphen and then an additional word for each respective disputed domain name, namely; “exchange”, “korea”, “koreaiso”, “korealaw”, “option”, and “stock. The hyphen is of negligible significance when assessing confusing similarity and none of the additional words impacts on an assessment of whether the disputed domain names are confusingly similar to the Complainants’ trade mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainants’ CME mark is clearly recognizable within each of the disputed domain names and the Panel accordingly finds that they are confusingly similar to a service mark in which the Complainants have rights.
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarized briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Having regard to the fact that all the disputed domain names are presently inactive, the Panel considers the second and third elements of the Policy primarily by reference to their current status. However, as it is possible that any of the disputed domain names might in future resolve again to an active website, the Panel additionally considers the position by reference to the websites to which the second and sixth disputed domain names have previously resolved.
The inactive status of the disputed domain names self-evidently does not comprise use in connection with a bona fide offering of goods and services. Moreover there is no evidence that either of the Respondents has been commonly known by any of the disputed domain names. Nor are the Respondents making a legitimate noncommercial or fair use of the disputed domain names, not least when their composition is such that Internet users will be prone to assume that they are closely connected with the Complainants and their activities. Where a domain name consists of a trade mark used in combination with an additional term this would not generally be considered capable of amounting to fair use if the combination (as here) effectively impersonates or suggests sponsorship or endorsement by the trade mark owner. See, by way of example, The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings, WIPO Case No. D2016-2290.
Turning now to the position were the Respondents to reactivate any of the websites to which the disputed domain names have previously resolved, the websites described above, used the Complainants’ mark and logo throughout and clearly masqueraded as those of the Complainants. As discussed below, this comprises bad faith registration and use of the disputed domain names and therefore does not comprise use in connection with a bona fide offering of goods and services; see Cartier International, N.V. , Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758.
There is nothing in the evidence available to the Panel to suggest that the Respondents might be able to establish rights or legitimate interests on any basis and, indeed, they have not attempted to do so. The Panel accordingly finds that the Respondents have no rights or legitimate interests with respect to the disputed domain names.
The disputed domain names contain the Complainants’ CME service mark in full and each disputed domain name adds to it a word which is apt to be associated with the Complainants’ services. This points both to an awareness by the Respondents of the Complainants and their CME service mark as at the date of registration of the disputed domain names and an intention on their part to profit unfairly in some manner from those registrations. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.
The fact that each of the disputed domain names is presently inactive does not preclude a finding of bad faith use under the doctrine of passive holding. As first considered in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.
All of these factors are applicable to the current circumstances. First, the Complainants’ mark is distinctive. Second, the Respondents have not submitted a response or provided any evidence of good faith use. Third, the Respondents have sought to conceal their identity through use of privacy services. Fourth, having regard to the characteristics of each of the disputed domain names, as outlined earlier, it is impossible to think of any good faith use to which they could be put. The passive holding by the Respondents therefore comprises bad faith use of the disputed domain names.
Finally, the Panel considers the position in the event that one or more of the Respondents’ websites were to be reactivated. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The composition of each of the disputed domain names will suggest to Internet users that any website to which it resolves is likely to be owned and/or operated by the Complainants. The Respondents’ websites, as described earlier, are clearly intended to further mislead Internet users into believing that the products and services offered on them are those of the Complainants. As the Complainants have indicated, the Respondents may have fraudulent intent but, in fact, it is not necessary for the Complainants to establish that this is the case. It is sufficient that the Respondents have used the disputed domain names and the websites to which they have resolved in order to create the false impression of a connection with the Complainants’ business. Moreover, the Respondents have not made any attempt to justify their conduct or to rebut the Complainants’ assertions. See, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
The Panel therefore finds that the disputed domain names were both registered and are being used in bad faith.
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 <cme-exchange.com>, <cme-korea.com>, <cme-koreaiso.com>, <cme-korealaw.com>, <cme-option.com>, and <cme-stock.com> be transferred to the Complainants.
Antony Gold
Sole Panelist
Date: March 17, 2021