The Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, United States of America ("United States"), represented by Norvell IP LLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Srgglobex LTD of Victoria, Seychelles.
The disputed domain name, <srgglobex.com>, is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 15, 2016. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 19, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 21, 2016.
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 July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 26, 2016. 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.
On August 26, 2016, after appointment of the Panel, the Respondent sent an unsolicited communication to the Center, which was later forwarded to the Panel.
The first Complainant, CME Group, is a financial exchange that offers futures and options in classes including metals, commodities, foreign exchange and energy. It operates through the second Complainant, Chicago Mercantile Exchange (CME), and other exchanges. Hereafter it will be practical to refer to the Complainants, Chicago Mercantile Exchange Inc. and CME Group Inc., jointly. The scale of the Complainants' operations is that they and their related entities generated revenues in excess of USD 3.3 billion in 2015.
The trademarked name GLOBEX refers to the Complainants' electronic trading platform launched in 1992, which provides connectivity to exchanges in other countries. The Complainants hold some 35 registrations for the trademark GLOBEX in various countries or jurisdictions. A representative trademark registered in the name of Chicago Mercantile Exchange is for GLOBEX, registered January 9, 1990, at the United States Patent and Trademark Office, registration number 1576888, in class 41, which has achieved incontestable status.
The Complainants also use principally the domain name <globex.com>, registered in 1994, and own 64 other domain names incorporating "globex".
Nothing is known about the Respondent except for the contact information provided for the purpose of registration of the disputed domain name on December 21, 2015.
The Complainants assert rights in the trademark GLOBEX and say that the disputed domain name is identical in appearance, sound and connotation, except for a non-distinctive, three-letter addition of the random letters "s", "r" and "g" that does not overcome confusing similarity.
The Complainants contend that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has never been licensed or authorised to use the Complainants' trademark, or to register a domain name containing the trademark. The Respondent would not be able to establish any rights or legitimate interests in the disputed domain name under the provisions of paragraph 4(c) of the Policy. The registration of the disputed domain name post-dates the Complainants' first use of their trademark. The adoption by the Respondent of the Complainants' trademark would negate any claim to bona fide use of the disputed domain name. There is no evidence the Respondent has been commonly known by the disputed domain name. There is no evidence of legitimate noncommercial or fair use of the disputed domain name by the Respondent.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. The Complainants say the Respondent clearly ought to have known of the GLOBEX trademark, which is used internationally, and has traded off the goodwill embodied in the trademark.
The Complainants express the view that the disputed domain name has been registered and used in connection with a fraudulent scheme. The Complainants say an address on the corresponding website is associated with entities named in the Panama Papers. Downloadable forms on the website request customers to disclose their bank account and wire transfer information.
The Complainants contend that the Respondent has attempted to attract, for commercial gain, Internet users to the website of the disputed domain name, by confusion with the Complainants' trademark. The website offers foreign exchange trading facilities through a platform named "SRG GLOBEX Meta Trader 4", which incorporates the Complainants' trademark.
The Complainants say the Respondent has used a privacy protection service for the registration of the disputed domain name. This action made it difficult to ascertain the Respondent's pattern of conduct in the registration of domain names. The use of a privacy service should be considered as further evidence of bad faith when in conjunction with other acts including the use of the disputed domain name for illicit commercial gain.
The Complainants have cited a number of previous decisions under the Policy that they consider to be supportive of their position under the Complaint.
The Complainants request the transfer of the disputed domain name.
The Respondent did not reply formally to the Complainants' contentions.
Paragraph 4(a) of the Policy states that the respondent is required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainants have made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
An unsolicited communication from the Respondent, dated August 26, 2016, was forwarded by the Center to the Panel. In the exercise of its discretion with reference to paragraphs 10 and 12 of the Rules, the Panel decided that the unsolicited communication stating, "I don't have any interest in this domain name if you want i can transfer this domain to people who are complaining against this kindly tell me contact me to transfer the domain name", was in any event of insufficient consequence to be admitted as a supplemental filing.
The Complainants have produced evidence satisfactory to the Panel of their ownership of the trademark GLOBEX. The disputed domain name is <srgglobex.com>, of which the generic Top-Level Domain ".com" may be disregarded in the determination of confusing similarity. What remains, "srgglobex", comprises the Complainants' internationally known trademark GLOBEX preceded by the letters "srg". The Panel finds the entity "globex" to be easily recognisable in the disputed domain name as the Complainants' trademark GLOBEX, and that the prefix "srg" does not have distinguishing properties. The Panel finds the disputed domain name to be confusingly similar to the Complainants' trademark under paragraph 4(a)(i) of the Policy.
The Complainants have asserted prima facie that the Respondent is not a licensee of the Complainants and has not been authorised to use the Complainants' trademark in any way.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainants' prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent has not offered any evidence under paragraph 4(c) of the Policy. In particular there is no evidence that any use of the disputed domain name incorporating the Complainants' trademark has been bona fide, or that the Respondent has been known by the disputed domain name, or that its use has been fair or noncommercial. The Complainants have succeeded on balance in proving that the Respondent does not have rights or legitimate interests in the disputed domain name and accordingly the Panel finds for the Complainants under paragraph 4(a)(ii) of the Policy.
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b)(iv) of the Policy provides that a finding of bad faith by a respondent may be made where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
Screen captures produced in evidence by the Complainants show various pages of the website to which the disputed domain name has resolved. The website may be described as initially convincing except for some awkward language. Under the logo "SRG GLOBEX" subscripted "TRADE YOUR OWN WAY", incorporating a considerably stylised "SRG", is a prominent invitation to visitors to open a foreign exchange trading account. The website promotes certain purported virtues of foreign exchange trading and a caution: "High risk warning: Remember that trading forex & CFDs contains high risk it may not be suitable for all investors. Losses may exceed your deposits." There are brief summaries of different aspects of foreign exchange trading and a facility to download a computer program related to foreign exchange trading. Application forms for becoming a trader or "Introducing Broker" require the provision of considerable personal and financial information including bank account details.
On the evidence it is clear to the Panel that the disputed domain name, <srgglobex.com>, is in use in connection with a purported foreign exchange trading facility under the business name "SRG GLOBEX". Based on the evidence in the case file, notably the Complainant's activities under its mark for over two decades, it may reasonably be inferred that the proprietor of a newly launched foreign exchange trading platform would have known, or ought to have known, of the existence of another having essentially the same name that has operated internationally since 1992. On the evidence and on the balance of probabilities the Panel finds the disputed domain name to be in use for commercial gain and to rely on the incorporation of the Complainants' trademark GLOBEX as a means of attracting Internet users by intentional confusion with the Complainants' trademark. Use of the disputed domain name in bad faith is found in the terms of paragraph 4(b)(iv) of the Policy.
On the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been registered for the bad faith purpose for which it has been used. Accordingly registration and use in bad faith of the disputed domain name by the Respondent are found under paragraph 4(a)(iii) of the Policy.
The Complainants say that the Respondent's use of a privacy service is further evidence of registration and use of the disputed domain name in bad faith. There may be many legitimate potential reasons for the use of a privacy service by a registrant. In the present case the use of a privacy service in combination with a failure to respond to the Complaint and an adverse finding against the Respondent are found to amount to supporting evidence of registration and use of the disputed domain name 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 name, <srgglobex.com>, be transferred to the Complainants.
Dr. Clive N.A. Trotman
Sole Panelist
Date: August 30, 2016