The Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, United States of America (“U.S.”), represented by Norvell IP llc, U.S.
The Respondents are Romeo Bato Jr. and Cocoo Restaurant of Metro Manila, Philippines, internally represented.
The disputed domain name <cmegroup-international.com> is registered with Cloud Group Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 10, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2012, 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 Complainants on August 15, 2012 providing the registrants’ names and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on August 15, 2012.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 7, 2012. On September 5, 2012, the Respondents sent an email to the Center requesting for an extension of 15 days until September 21, 2012, to file the Respondents’ Response to the Complaint. On September 5, 2012 the Center sent an email to the Respondents informing that there was no explicit provision under the Rules for late filing of the Response. However, if the Respondents filed the Response at a later date, the Response would be brought to the Panel’s attention and it would be at the discretion of the Panel to consider the acceptance of the late Response. On September 13, 2012, the Respondents filed a late Response by email with the Center. On September 15, 2012, the Complainants filed with the Center a supplemental filing of the Complainants’ reply to the Respondents’ late Response of September 13, 2012.
The Center appointed Hariram Jayaram as the sole panelist in this matter on September 21, 2012. 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.
Chicago Mercantile Exchange Inc. is a Delaware corporation having its principal place of business in Chicago, Illinois, U.S. (hereinafter referred to as “CME”) and CME Group Inc. is a Delaware corporation having its principal place of business in Chicago, Illinois, U.S. (hereinafter referred to as “CME Group”).
The Complainants have registered the CME and CME GROUP trade marks in many countries.
The disputed domain name was registered on March 19, 2012.
The Complainant, CME Group, is the world’s largest and most diverse financial exchange with a history dating back to 1848. The CME Group offers futures and options in all major asset classes, such as metals, commodities, foreign exchange, energy and other products through four 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, CME Group, is the parent company of the Complainant, CME and has been using the name CME Group since its formation in 2007. Use of the CME Group name began prior to March 2012, the registration date of the disputed domain name. The Complainant, CME, is one of the world’s leading financial institutions and part of the Complainant, CME Group. Originally founded in 1898, the Complainant, CME, began using the CME name in 1919. For more than one hundred years, traders, financial institutions, investors, corporations and governments have come to rely upon and trust the Complainants for their financial and risk management services. The Complainants provide an international marketplace for the exchange of financial derivative products, namely futures and options contracts. After leading the industry in open-outcry trading, the Complainants championed the idea of electronic trading of futures and options through the CME GLOBEX trading platform, which allows futures and options to be traded around the world and almost around the clock. Some products traded through the Complainants’ exchanges include interest rates, equity indexes, weather, foreign exchange (foreign currency), cattle, pork and cheese, to name a few. The Complainants’ operations now extend globally with offices in the U.S., Canada, Brazil, the United Kingdom of Great Britain and Northern Ireland, Singapore and Japan. The Complainants offer financial market data services, ranging from live and delayed quotes to market reports and historical data. Such market data is often critical to the trading activities of users of the Complainants’ exchanges regarding the variety of individual products traded on the exchanges. For example, the Complainants offer delayed and live quotes and charts on trading volumes, prices, etc. This includes historical trading data. The Complainants’ customers are located around the globe and the CME GLOBEX electronic trading platform can be accessed from more than 150 countries. The Complainants’ services have an incredible reach. The Complainants also maintain strong relationships with international financial centers. For example, the Complainants have strategic relationships with: BM&FBOVESPA in Brazil, Bursa Malaysia Derivatives Blend in Malaysia, Dubai Mercantile Exchange in United Arab Emirates, Johannesburg Stock 10 Exchange in South Africa, Korea Exchange in South Korea, MexDer in Mexico, National Stock Exchange of India Ltd. in India, Osaka Securities Exchange in Japan and Singapore Exchange Limited in Singapore. The Complainants also maintain an active Internet presence and maintain Internet websites at domain names incorporating the CME and CME GROUP brands. The domain name <cme.com> was originally registered in 1994 and is still active and redirects users to CME Group’s homepage at “www.cmegroup.com” which has been owned by the Complainants since 2007. The Complainants own more than 200 domain names which include the CME or CME GROUP Marks. The success of the Complainants’ financial and related services is due, in part, to the extensive promotion and advertising they have undertaken for the CME and CME GROUP Marks. As a result, the CME and CME GROUP Marks have come to be associated by members of the relevant consuming public worldwide with services of only the highest quality. The CME and CME GROUP Marks are an asset of immeasurable value. The goodwill symbolized by the CME and CME GROUP Marks in connection with financial related products and services belongs exclusively to the Complainants. In 2011, the Complainants and their related entities generated revenues in excess of USD 3.3 billion dollars. In 2011, more than 3.4 billion contracts were traded through the Complainants with a notional value of one quadrillion USD (USD 1,000,000,000,000,000). These astounding numbers reflect the importance of the Complainants to the world financial markets. The Complainants consistently devote tens of million dollars in advertising and promoting services under the CME and CME GROUP Marks. As a result, the CME and CME GROUP brands are distinctive, famous and widely recognized around the world. The Complainants own strong trade mark rights in the CME and CME GROUP Marks. The disputed domain name is confusingly similar to the Complainants’ registered trade marks CME and CME GROUP. The disputed domain name is identical to the names of the Complainants CME and CME Group, and the Respondents registered the disputed domain name well after the Complainants acquired their fame. The disputed domain name includes as a dominant element the terms “CME” and “CME Group” which are identical to the Complainants’ CME and CME GROUP Marks in appearance, sound and connotation. Even when viewed in their entireties, it is appropriate to give greater weight to the important or dominant parts of a composite mark, for it is that part of the mark that will make the greatest impression. A de minimis difference between a domain name and a trade mark is insufficient to overcome a finding of confusing similarity. Generally, the first part of the mark is the dominant portion. The disputed domain name combines the Complainants’ registered CME and CME GROUP Marks with a generic geographical term. The term “international” refers to the international nature of services offered by the Complainants. The mere addition of this generic geographical term does not change the fact that the disputed domain name is confusingly similar to the Complainants’ Marks. The term “international” has little or no trade mark significance and serves no function to distinguish the disputed domain name from the Complainants’ registered CME and CME GROUP Marks. The Complainants’ names and the CME and CME GROUP Marks are well known in the international financial community, which intensifies the confusing similarity of the disputed domain name to the Complainants’ trade marks.
The Respondents are not affiliated or connected with the Complainants in any way. The Complainants also have never licensed or authorized the Respondents to use the CME or CME GROUP Marks or names, or any of the Complainants’ trade marks, or to register any disputed domain name incorporating the CME or CME GROUP Marks or names. The Respondents cannot show any facts that establish any rights to or legitimate interests in the disputed domain name. The Respondents did not make use of the marks CME or CME GROUP prior to the Complainants’ adoption and use of these trade marks and their registration of the domain names <cme.com> and <cmegroup.com>. The Complainants’ first use of the CME name dates back to 1919, over ninety years ago, which is well before the registration of the disputed domain name in March 2012. The Respondents did not make use of the name CME GROUP prior to the Complainants’ adoption and use of this name in 2007. The Respondents are not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was used to perpetrate a fraudulent financial scheme and the email address associated with the disputed domain name, […]@cmegroup-international.com, was likely set up to lure individuals into the scheme. There is no website currently set up in connection with the disputed domain name. The Respondents are not engaged in the bona fide offering of goods or services. There is no evidence that the Respondents have been commonly known by the disputed domain name or that they have any rights, which might predate those of the Complainants. The Respondents only recently registered the disputed domain name in March 2012, long after the Complainants first started using the CME and CME GROUP Marks and names. By the time of the Respondents’ registration of the disputed domain name, the Complainants had already enjoyed tremendous success in connection with the use of the CME and CME GROUP Marks and names. Given this long prior use by the Complainants, it is “exceedingly unlikely” that the Respondents were commonly known by the CME or CME GROUP Marks or names. There is no evidence that the Respondents are making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name is currently used as a part of the email address […]@cmegroup-international.com, which was set up to lure individuals into an investment scheme. There is no website currently set up in connection with the disputed domain name. Instead, the disputed domain name was being used in connection with a for profit fraudulent investment scheme whereby the Respondents seek to earn illicit profits from the fraudulent and unauthorized use of the Complainants’ Marks and names. There can be no fair use when there is no legitimate connection between the Respondents’ use of the disputed domain name and the Complainants’ Marks.
The Respondents registered the disputed domain name in clear bad faith and disregard for the Complainants’ rights and with intent to cause consumer confusion as to source, sponsorship or affiliation of its services. The Respondents are making no legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainants were recently alerted to an investment scheme involving several entities, including but not limited to CME Global Corporation, Global Growth Acquisition Corp., Golden Futures Incorporated and Global Ridge Fields Corporation. These entities claim to be affiliated with the Complainants in an attempt to lure potential investors into depositing money into the scheme. In support of this scheme, the entities fabricated bank documents that bear the CME and CME GROUP Marks and distributed these documents to unsuspecting individuals in furtherance of their financial investment scheme. These bank documents promote the disputed domain name by highlighting the email address, […]@cmegroup-international.com. The exact relationship between the entities involved in the investment scheme and the Respondents is unclear except that all these entities use the email address associated with the disputed domain name, […]@cmegroup-international.com. The Complainants, via a letter from counsel for the Complainants dated August 1, 2012, notified the Respondents of their registered trade mark rights in the Complainants’ Marks and their objection to the disputed domain name (the “Demand Letter”). The Demand Letter clearly advised the Respondents that they had no right to use the trade marks, sought identification of all domain names owned by the Respondents that included trade marks of the Complainants and demanded transfer of ownership of such domain names to the Complainants. The Respondents did not reply to the Demand Letter. The Complainants only received a response from PrivacyProtect.org advising that it would not release any information regarding the registrant, whose name was unknown at the time the Demand Letter was sent, unless the Complainants filed a UDRP case with any of ICANN’s UDRP Service Providers. The Respondents have acted in bad faith because: the Respondents knew or should have known of the Complainants’ rights in the CME and CME GROUP Marks and names prior to registration of the disputed domain name; the Respondents registered and used the disputed domain name to perpetrate a fraud; the Respondents registered and used the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainants’ Marks and names as to the source, sponsorship, affiliation, or endorsement of the Respondents’ services; the Respondents are passively holding the disputed domain name; and the Respondents failed to respond to the Complainants’ demand letter. The Respondents knew or should have known of the Complainants’ rights in the CME and CME GROUP Marks and names prior to registration of the disputed domain name. The Complainants registered the CME and CME GROUP Marks in jurisdictions across the globe, well before the Respondents registered the disputed domain name. In light of the well-known character of the CME and CME GROUP Marks, it is obvious that the Respondents should have been aware of these marks. Instead, the Respondents purposefully chose these marks to perpetrate their fraudulent investment scheme. The Respondents clearly had constructive notice or actual knowledge of the Complainants’ registered trade mark rights. By virtue of these registrations, the public at large is provided with notice of the Complainants’ rights. A simple trade mark search by the Respondents would have revealed the Complainants CME and CME GROUP trade mark registrations in the U.S. and foreign jurisdictions. Considering the fame associated with CME and CME Group names, it is fair to assume that the Respondents had constructive knowledge of the Complainants’ common law rights in their names. The disputed domain name has been registered and used in connection with a fraudulent scheme, which is strong evidence of bad faith use. The Respondents are involved in an investment scheme during the course of which they claim to be affiliated with the Complainants in an attempt to lure investors. In support of this scheme, the Respondents and other fabricated bank documents that bear the CME and CME GROUP Marks and include references to the disputed domain name. The fact that the disputed domain name has been used to perpetrate a fraud heavily weighs in favor of a finding of bad faith. The CME and CME GROUP Marks enjoy widespread fame in the financial industry, both domestically and internationally. The facts demonstrated herein clearly indicated that the Respondents were aware of the Complainants’ rights in registering and using the disputed domain name. The only logical conclusion is that the Respondents registered the disputed domain name in bad faith with the intent to capitalize on the Complainants’ fame and reputation. The Respondents registered and used the disputed domain name for their commercial gain to attract investors to the email address associated with the disputed domain name in furtherance of the fraudulent investment scheme. The Respondents have chosen to use the Complainants’ well-known and internationally famous CME and CME GROUP brands, without authorization from the Complainants, in clear bad faith and disregard for the Complainants’ rights and in attempt to create a likelihood of confusion with the Complainants’ Marks as to the source, sponsorship, or endorsement of their investment services. There is no active website currently associated with the disputed domain name. Instead, the website merely displays an “under construction” image and the wording “We're currently working on our website. Check back regularly for updates!” Such use constitutes passive holding of the website, which amounts to use in bad faith. The failure to respond to a demand letter is further evidence of bad faith. The Complainants previously sent a demand letter to the Respondents but have received no response from the Respondents. In fact, there is no reason to believe that the Respondents ceased any of the objectionable conduct. Such conduct is further evidence of bad faith.
The Respondents vigorously deny having used CME trade marks and deny the infringement of the said trade marks. The Respondents contend that prior to receiving the Center’s notification of the proceedings, the Respondents did not even know such a firm called CME Group, Inc. or that any of its affiliates existed. The Respondents vehemently deny any participation, involvement or interaction on this claimed fraudulent scheme to use the CME trade marks for personal, professional or economic gains. The Respondents contend that though the Respondents’ restaurant business is relatively small, the Respondents’ restaurant has been in business for the past two (2) years and have maintained the integrity and reputation that the father of the Respondent, R. F. Bato, before his death on April 18, 2009, had inculcated in the Respondents. The Respondents contend that the Respondents have never engaged in any kind of illegal and/or immoral activity which is described by the Complainants. The Respondents contend that the demand of Mr. Kucala of Norvell IP llc and the Notice of the Center about the Respondents’ alleged involvement in what is claimed to be a “fraud investment scheme” as illegal use of the disputed domain name is a total and complete shock to the Respondents at Cocoo Restaurant, Inc. In fact, the Respondents have never engaged in any investment schemes in any manner, shape or form. The Respondents have never engaged in any fraudulent investment scheme, much less used and/or registered the disputed domain name. The Respondents contend that the Respondents cannot stop something that the Respondents never even started, much less understand. The Respondent, Romeo F. Bato is the President of Cocoo Restaurant, Inc., which is engaged in the operation of a young and small restaurant business. It was organized and exists under Philippine laws. It was duly registered in April 2010 with the Securities and Exchange Commission (the “SEC”) in the Philippines. The Respondents contend that the Respondents are not authorized to engage in any investment schemes, something that is totally foreign to them. The Respondents contend that some time in February 2012, a friend suggested to the Respondents to establish a website where the Respondents can advertise the Respondents’ menu and catering services. The Respondents searched the Internet at “ww.sulit.com.ph” and found a certain A. Salvacion who represented himself to be a freelance website designer. He gave his address and phone numbers to the Respondents. The Respondents met him and he agreed to create a website for the Respondents for a fee of Php7,000.00 (roughly the equivalent of about USD 160.00). The Respondents initially paid him Php3,000.00 to create the website. The Respondents contend that the purpose of this website was merely to make the Respondents’ small business known to local patrons interested in Cantonese cuisine. Since the Respondents are also in the catering business, the Respondents merely intended to seek possible clientele within Metro Manila. The Respondents contend that the Respondents had no intention of undertaking wide-scale business operations outside Metro Manila, much less in any part of the country, or even abroad. Since the Respondents were able to sustain the Respondents’ operations with enough customers at present, the Respondents did not give much attention to completing the transaction with A. Salvacion. The Respondents contend that this was why the Respondents did not earnestly prepare the other documents and pictures A. Salvacion was asking from the Respondents about Cocoo Restaurant which he wanted to include in the subject website. The Respondents did not give him the materials he asked for. The Respondents did not complete the payment of the remaining balance. The Respondents contend that the Respondents shall initiate, cooperate and participate in any investigation that may be conducted in this regard. The Respondents intend to file proper charges that may be warranted against the person(s) responsible for this alleged fraudulent scheme which was perpetuated at the Respondents’ expense and legitimate and reputable business. The Respondents further contended that considering that the Respondents were victims themselves, the Respondents will file in due time a complaint before the proper regulatory and/or investigative body(s) in order to stop this illegal operator from further victimizing the Respondents. The Respondents argued that it will be the height of injustice if innocent victims like the Respondents who rely in good faith to hire services of people who offer their services for the Respondents simple business requirement will be allowed to destroy the Respondents and the restaurant business.
The Complainants contend that the Complainants seek transfer of the disputed domain name. In support of this request, the Complainants submitted an original Complaint and First Amended Complaint and supporting Annexes that detail the factual and legal bases for the transfer of the disputed domain name. After the deadline passed, the Respondents filed a Response that largely ignored the Complainants’ arguments and evidence and raised factual issues that are unsupported by evidence. The Complainants contend that the Respondents’ response should be disregarded because it was late, failed to respond to Complainants’ claims and made allegations unsupported by any evidence. The Complainants’ investigation revealed that the Respondents are also the registrants of the domain name <cocoocatering.com>. It is understandable why the domain name <cocoocatering.com> is registered in the Respondents’ name because it incorporates their business name. However, there is no plausible explanation for why the Respondents needed to register the disputed domain name for their catering business. There is no need for registration and use of this disputed domain name in connection with any catering business. The Respondents did not address this issue in their Response. The simple fact is that the Respondents are currently listed as the registrant, administrative, technical and billing contacts for the disputed domain name. The Respondents’ allegations do not appear to be plausible. The Complainants further submit that the Respondents did not address any of the allegations made in the Complainants’ Complaint and First Amended Complaint. The Complainants established a prima facie case that the disputed domain name should be transferred because the Respondents failed to deny the following:
- The disputed domain name is identical or confusingly similar to trade marks and service marks in which the Complainants have rights;
- The Respondents have no rights or legitimate interests in respect of the disputed domain name;
- The disputed domain name was registered and is being used in bad faith.
In response to the Respondents’ Response of September 13, 2012, the Complainants offered to suspend these proceedings for settlement discussions pending transfer of the disputed domain name. The Complainants did not receive any response and the Respondents did not offer to transfer the disputed domain name.
The Panel wishes to address three preliminary procedural issues: 1) the Respondents’ filing of a deficient Response on September 13, 2012; and 2) the acceptance of the Complainants’ supplemental filing of September 15, 2012.
The Panel notes, in particular, that the Respondents’ Response of September 13, 2012 does not conform to the requirements of Rule 5(b) of the Rules in particular Rule 5(b)(i), (viii) and (ix).
However, under paragraph 10(a) of the Rules, the Panel is given general powers inter alia to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules [and to] ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” In accordance with the said general powers, the Panel admits the deficient Response in this proceeding.
The Complainants have filed a supplemental brief in reply to the Respondents’ Response of September 13, 2012. The Panel has considered the issue of accepting the Complainants’ supplemental filing of September 15, 2012 and the Panel finds that the circumstances of the current case permits the acceptance of the supplemental filing by the Complainants because the Respondents in the Response have raised issues which the Complainants could not have been expected to address in the Complaint. Therefore the Panel, exercising its powers under paragraph 10(a) of the Rules, admits the Complainants’ supplemental filing.
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following elements to obtain an order for the disputed domain name to be transferred to the Complainants:
- The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
- The Respondents have no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
The Complainants are the registered owners of the CME and CME GROUP trade marks. The trade marks have been used in a number of countries for the services of the Complainants. The Complainants provide financial and risk management services and are globally recognized. Apart from the “.com” gTLD, the disputed domain name incorporates the Complainants’ CME GROUP trade mark in its entirety, followed by a dash and the suffix “international”. The term “international” is a generic geographical term which refers to the global nature of the services offered by the Complainants and its worldwide recognition.
In Allianz SE v. Acorn Consulting, WIPO Case No. D2011-0171, the panel held:
“…the addition of the term ‘international’ as a suffix to the ALLIANZ mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the ALLIANZ Marks because the term “international” is descriptive. The addition of a descriptive term does not negate the confusing similarity between the ALLIANZ Marks and the Disputed Domain Name.”
The Panel agrees with the findings in the above decision and also agrees with the Complainants that the use of the Complainants’ trade mark in its entirety with the generic term “international” is not sufficient to distinguish the disputed domain name from the Complainants’ trade marks. The use of the term “international” does not diminish the confusing similarity of the mark but instead aggravates it. The Panel concludes that the disputed domain name is confusingly similar to the Complainants CME and CME GROUP trade marks.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainants have alleged that the Respondents have not been given any license or authorization by the Complainants to use the Complainants’ trade marks or to register any domain name incorporating the Complainants’ trade marks; the Respondents are not affiliated or connected to the Complainants; the Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services; the Respondents have not been commonly known by the disputed domain name; and the Respondents do not have any rights, which might predate those of the Complainants.
The Complainants have submitted evidence to show that the Respondents were involved in a fraudulent financial scheme and the email address associated with the disputed domain name, i.e., […]@cmegroup-international.com, was likely set up to lure individuals into the scheme. The Complainants also submitted evidence to show that there is no active website associated with the disputed domain name currently.
The Respondent, in its Response, submitted that the Respondents commissioned a web designer to set up a website connected to the disputed domain name for the promotion of the Respondents’ restaurant, Cocoo Restaurant and the Respondents’ catering services. The Respondents also admitted that the promotion of the Respondents’ services was aimed at “local patrons interested in Cantonese cuisine” and seeking “possible clientele within Metro Manila”. The Respondents contended that the Respondents had “no intention of undertaking wide-scale business operations outside [Metro Manila], much less in any part of the country, or even abroad.” The Respondents contended that the transaction with the web designer did not go through and the website was left incomplete. The Respondents also denied participation, involvement or interaction on the fraudulent scheme using the Complainants’ trade marks as alleged by the Complainants.
The Complainants further submitted in the Complainants’ reply that the Respondents are also the registrants of the domain name <cocoocatering.com> which incorporates the Respondents’ business name. The Complainants contended that the Respondents did not give any plausible explanation for registering the disputed domain name <cmegroup-international.com> for the Respondent’s catering business.
The Panel agrees with the Complainants on all the reasons given by the Complainants for proving that the Respondents have no rights to or legitimate interests in the disputed domain name. The Respondents have merely submitted facts which are not substantiated with evidence. The facts given by the Respondents are merely to show that the Respondents were not responsible for the registration of the disputed domain name and that there are cogent reasons for the incompletion of the website. The Respondents have not given any evidence to show that the Respondents are commonly known by the disputed domain name or have acquired trade mark or service mark rights connected to it. The Panel notes that the Respondents have registered the domain name <cocoocatering.com> associated to a website which appears to be the Respondents’ official website for the services provided by the Respondents; the disputed domain name does not refer to the Respondents’ business or services in any way; and the Respondents have admitted that the Respondents’ business is aimed at locals in Manila and that the Respondents do not have any intentions of business operations abroad yet the Respondents have chosen to incorporate the word “international” in the disputed domain name.
On the basis of the Complainants’ submissions and evidence at hand, the choice of words in the disputed domain name, and the inadequate justification and evidence in support given by the Respondents, the Panel finds that the Respondents are not making use of the disputed domain name for a bona fide offering of goods and services and are not making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Complainants have alleged that the Respondents have registered and used the disputed domain name in bad faith because the Respondents knew or should have known of the Complainants’ rights in the Complainants’ CME and CME GROUP Marks and names prior to registration of the disputed domain name; the Respondents registered and used the disputed domain name to perpetrate a fraud; the Respondents registered and used the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainants’ Marks and names as to the source, sponsorship, affiliation, or endorsement of the Respondents’ services; the Respondents are passively holding the disputed domain name; and the Respondents failed to respond to the Complainants’ demand letter.
In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel stated:
“…the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”.
In the present proceeding, the Respondents have used the Complainants’ trade marks in the disputed domain name without giving any reasonable justification for such use. The Panel finds it is implausible that the Respondents were unaware of the Complainants’ trade marks, considering the fact that the Respondents incorporated the Complainants’ trade marks with the generic term “international” in the disputed domain name. Further the Respondents have admitted that the Respondents’ services are not international in nature. Thus, it is apparent that the Respondents have registered and used the disputed domain name in bad faith.
The Panel prefers not to make a finding on the fraudulent activity of the Respondents as alleged by the Complainants since the Respondents have flatly denied involvement in any fraudulent investment scheme, which, according to the Respondents, is not conceived by them. The Panel has merely the allegation of the Complainants to rely on to make a finding of fraud, a matter of a serious nature.
Nevertheless, the Panel finds that the Complainants have adduced enough facts and evidence to show registration and use of the disputed domain name in bad faith and satisfy the requirements of the paragraph 4(a)(iii) of the Policy.
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, <cmegroup-international.com> be transferred to the Complainants.
Hariram Jayaram
Sole Panelist
Dated: October 5, 2012