WIPO Domain Name Decision D2003-0743 for e-globex.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Chicago Mercantile Exchange Inc. v. e-globex/Abidin H.

Case No. D2003-0743

 

1. The Parties

1.1 The Complainant is Chicago Mercantile Exchange Inc., Chicago, Illinois, United States of America, represented by Brinks Hofer Gilson & Lione, United States of America.

1.2 The Respondent is e-globex/Abidin H., Bandung 40183, Indonesia.

 

2. The Domain Name and Registrar

2.1 The disputed domain name (the "Domain Name") is registered with R (the "Registrar").

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2003. On September 23, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On September 23, 2003, 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 for the administrative, billing, and technical contacts.

3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2003.

3.4 The Respondent responded to the Center and to the Complainant by email and a brief exchange of emails, summarised in more detail at paragraphs 4.10 and 4.11 below, was entered into between the Respondent and the Complainant.

3.5 However, the Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on October 17, 2003.

3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 24, 2003. 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

4.1 The Complainant is a corporation organised and existing under the laws of the State of Delaware, U.S.A. It provides financial services and, in particular, provides an international marketplace for the exchange of financial derivative products, namely futures and options contracts.

4.2 In 1987, the Complainant announced plans to develop the first worldwide after-hours electronic trading system, to be launched under the mark GLOBEX. The Complainant�s GLOBEX electronic trading system was launched in 1992.

4.3 The Complainant states that between 1995 and 2001, its revenues under its GLOBEX electronic trading system were nearly $140,000,000 and that between 1995 and 2002, it devoted over $15,000,000 in advertising and promoting services under the name "GLOBEX".

4.4 The Complainant states that its GLOBEX electronic trading system has been the subject of hundreds of news articles since the system�s launch in 1992. Extracts from a large number of such articles have been provided by the Complainant.

4.5 The Complainant is the owner of the following trademarks in respect of the name "GLOBEX" (the "Trademarks"):

- "GLOBEX" in respect of "Conducting courses, seminars and computerized training in trading contracts for securities, commodities, and monetary and financial instruments on a futures exchange", Registration Date January 9, 1990, No. 1,576,888 (USA);

- "GLOBEX" in respect of "Conducting commodities, securities, monetary and financial instruments futures and options exchange services", Registration Date May 8, 2001, No. 2,448,961 (USA);

- "GLOBEX" in international class 36, Registration Date September 29, 1999, No. 1754926 (Argentina);

- "GLOBEX" in international class 36, Registration Date November 16, 1989, No. 10534 (South Korea);

- "GLOBEX" in international class 36, Registration Date May 19, 1994, No. P410170 (Switzerland);

- "GLOBEX" in international class 36, Registration Date September 1, 1991, No. 52676 (Taiwan);

- "GLOBEX" in class 3, Registration Date September 1, 2001, No. 52676 (China); and

- "GLOBEX" in international class 36, Registration Date September 11, 1992, No. VR 1992 08298 (Denmark).

The applications for the Trademarks were filed between July 15, 1988, and January 1, 2000.

4.6 The Complainant has also provided a copy of a registration agreement showing it to be the registrant of several domain names which are similar to the Trademarks, as follows:

These domain names were all registered on May 11, 1999.

4.7 The Respondent registered the Domain Name on December 2, 1999.

4.8 The Complainant has put forward uncontested evidence in the form of three screen prints dated September 17, 2003, that the Domain Name addressed a website describing itself as a "cyber community to investors" and which appears to have been a financial and investment portal, providing information on financial indices and what appear to have been links to the websites of organisations involved in this area (including the Complainant). The screen prints of the website show that it contained banner advertisements in respect of third party products.

4.9 On June 17, 2003, the Complainant, through its lawyers, Brinks Hofer Gilson & Lione, wrote by email to the Respondent at the address provided in the WHOIS database. The email was returned "undelivered".

4.10 On September 29, 2003, in response to the Notification of this Complaint, sent by the Center to the Respondent by FedEx, the Respondent wrote to the Center and the Complainant�s lawyers by email, stating that:

a) the Respondent did not intend to use the Domain Name in bad faith and regarded the word "Globex" as simply an abbreviation of the words "global" and "exchange" and stating "I think everyone could use [the name Globex]. I don;t know if there is a company which use this term/acronim as its name" (sic);

b) the Respondent would sell the Domain Name to the Complainant;

c) the Respondent was no longer able to access emails sent to the address listed for the Respondent on the WHOIS database in respect of the Domain Name and could not update the WHOIS register without having access to that email address.

4.11 The Complainant�s lawyers replied to the Respondent by email on October 2, 2003, giving the Respondent 48 hours to accept an offer to transfer the Domain Name to the Complainant without any payment from the Complainant. The Respondent did not accept this offer, but instead stated in an email of October 3, 2003, that although the Respondent agreed with the request, it did not believe that it had the right to transfer the Domain Name to the Complainant and preferred instead to allow its registration of the Domain Name to expire and to not renew its registration.

4.12 After receipt of the Center�s Notification of Respondent Default, the Respondent forwarded to the Center a copy of wording which the Respondent alleged that it had sent to the Complainant�s lawyers on October 4, 2003, stating that it acknowledged that it did in fact have the rights to transfer the Domain Name to the Complainant, but that it did not know whether it had the right to re-direct the Domain Name to address the Complainant�s website. The Respondent re-stated its offer to allow its registration of the Domain Name to expire and not to renew it, and stated that the Respondent had closed the site to which the Domain Name resolved and had replaced it with a blank page.

4.13 As at the date of this decision, the Domain Name, when accessed, resolves to a blank white web page.

 

5. Parties� Contentions

A. Complainant

Complainant�s Trademark

5.1 The Complainant asserts that:

a) it is the owner of the Trademarks; and

b) as a result of the Complainant�s continuous and extensive use of the GLOBEX mark since as early as 1988, the Complainant�s GLOBEX mark has become well-known and famous among consumers of financial services.

Confusingly similar

5.2 The Complainant asserts that the Domain Name is confusingly similar to the Complainant�s GLOBEX mark for the purposes of Policy 4(a)(i) in that the mere addition of the prefix "e-" to the GLOBEX mark is not likely to eliminate confusion between the two.

5.3 In support of this contention, the Complainant relies upon the decisions in Crédit Lyonnais v. Association Etre Ensemble, (WIPO Case No. D2000-1426), Canadian Tire Corporation, Limited v. 849075 Alberta Ltd., carrying on business as Par5Systems, (WIPO Case No. D2000-0985), Bloomberg L.P. v FBS UK Ltd (NAF Case No. FA0105000097187) and International Data Group, Inc. v. Maruyama & Co., Ltd., (WIPO Case No. D2000-0420).

No Rights or Legitimate Interests

5.4 The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. In particular, the Complainant asserts that:

a) the Respondent is neither affiliated with nor authorised by the Complainant to use the GLOBEX mark nor to register domain names incorporating the mark;

b) the Respondent�s activities are causing a likelihood of confusion for the Respondent�s commercial gain in that the Respondent uses the Domain Name in order to attract Internet users to a website that features financial information and banner advertisements, and that advertises the Respondent�s financial services. The Complainant asserts that Internet users are likely to be confused as to the source, sponsorship and affiliation of the Domain Name;

c) the Respondent�s activities are not in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). It relies upon the decisions in Big Dog Holdings, Inc. v. Day, (NAF Case No. FA93554), Ticketmaster Corp. v. DiscoverNet, Inc,. (WIPO Case No. D2001-0252), HouseHold Int�l Inc v. Household Fin., (NAF Case No. FA0210000128673), Winmark Corp. v. In the Zone, (NAF Case No. FA0210000128652), America Online, Inc. v. Xianfeng Fu, (WIPO Case No. D2000-1374) and American Express Co. v. Bung Ran, (NAF Case No. 02090000126638).

d) the Respondent has not been "commonly known" by the Domain Name for purposes of showing legitimate interests in the domain name under Policy 4(c)(ii) because:

(i) the Complainant asserts that GLOBEX was specifically coined by the Complainant for use in connection with its financial services and it is extremely unlikely that anyone other than the Complainant could claim to be "commonly known by " the domain name in the financial sector. It relies upon the decisions in G.D. Searle & Co. v. Vioxx & Celebrex Arthritis Help (NAF Case No. FA0210000126831); and

(ii) based on the well-known status of the Complainant�s GLOBEX mark within the worldwide financial industry, it is unlikely that the Respondent can be commonly known by a similar mark. It relies upon the decision in American Int�l Group, Inc v. Lobsag Marques (NAF Case No. 0210000126832).

Registered and Used in Bad Faith

5.5. The Complainant asserts that the Respondent has registered and is using the Domain Name in bad faith for the purposes of Policy 4(b). In particular, it asserts that:

a) the Respondent had actual or constructive notice of the Complainant�s rights in the GLOBEX mark by virtue of the Complainant�s U.S. registration for the mark and that the Respondent�s registration of a domain name that is identical or confusingly similar to Complainant�s registered GLOBEX mark is in and of itself registration in bad faith. The Complainant relies upon the decisions in PerkinElmer Life Sciences Inc. v. Compana, LLC (NAF Case No. FA0209000124752) and Samsonite Corp. v. Colony Holding (NAF Case No. FA 94313);

b) the Respondent "was aware of and had knowledge of" the Complainant�s GLOBEX mark when registering the Domain Name because the Complainant�s mark is a coined arbitrary term with no meaning apart from the Complainant�s financial services. In support of this contention the Complainant relies upon the decisions in Pfizer, Inc. v. Internet Gambiano Productions LLC, (WIPO Case No. D2002-0325).

c) the registration of an infringing domain name, despite actual knowledge of the Complainant�s rights, is evidence of bad faith registration. The Complainant relies upon Broadcom Corp. v. Nelson (NAF Case No. FA 0210000128232).

d) the Respondent�s registration and use of a domain name that infringes on Complainant�s GLOBEX mark and use of that Domain Name to gain commercial profit through redirection of Internet users to Respondent�s website is in bad faith pursuant to Policy 4(b)(iv). The Complainant relies upon the decisions in Bank of Am. Corp. v. Tong (NAF Case No. 0210000128074) and Kmart v. Kahn, (NAF Case No. FA 127708).

e) the Respondent is diverting Internet users from the Domain Name to a website offering financial services that compete with, or are at least related to, Complainant�s financial services. This diversionary use of the disputed domain name is disrupting Complainant�s business and is evidence of bad faith registration and use pursuant to Policy 4(b)(iii). In support of this position, the Complainant relies upon the decisions in S. Exposure v. S. Exposure, Inc. (NAF Case No. FA 94864), Surface Protection Industries, Inc. v.The Webposters a/k/a Mark�s Paint Store, Inc., (WIPO Case No. D2000-1613), G.D. Searle & Co. v. DMG Online (NAF Case No. FA 02090000126654 (NAF November 19, 2002) and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, (WIPO Case No. D2003-0103).

f) the Respondent�s website associated with the Domain Name contains the word GLOBEX within its meta-tags. The Complainant asserts that such use helps support the conclusion that by using the Domain Name, the Respondent has intentionally attracted Internet users to Respondent�s website for commercial gain by creating a likelihood of confusion as to source, affiliation or endorsement of Respondent�s website. The Complainant asserts that such misleading use of meta-tags further evidences bad faith registration and use of the Domain Name by Respondent and it relies upon Luxottica S.r.L. v. Lux Ottica LLC (WIPO Case No. D2002-0904).

g) the fact that, after the Complainant sent an e-mail to Respondent at Respondent�s e-mail address listed in the WHOIS database, the Complainant�s e-mail was returned "undeliverable" is further evidence of the Respondent�s bad faith in that it has taken steps to conceal its true identity by providing false contact information. The Complainant relies here on Telstra Corporation v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) and Capital Broadcasting Company, Inc. v. Private, (WIPO Case No. D2000-1609).

B. Respondent

5.6 The Respondent did not reply to the Complainant�s contentions and has thus put forward no submissions to the Panel.

5.7 However, the Panel notes the Respondent�s statements in its email correspondence to the Center and to the Complainant�s lawyers summarised at paragraphs 4.10, 4.11 and 4.12 above.

 

6. Discussion and Findings

Introduction

6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.

6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.

6.3 Notwithstanding the default of the Respondent it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".

A. Identical or Confusingly Similar

6.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.

6.5 Each of the Trademarks upon which the Complainant relies consists of the word "GLOBEX". Some of the Trademarks have registration dates which are later than the date of registration of the Domain Name and no evidence of any priority dates has been put forward in relation to these. The Trademarks which pre-date the date of registration of the Domain Name ("Relevant Trademarks") are the following:

- "GLOBEX" in respect of "Conducting courses, seminars and computerized training in trading contracts for securities, commodities, and monetary and financial instruments on a futures exchange", Registration Date January 9, 1990, No. 1,576,888 (USA);

- "GLOBEX" in international class 36, Registration Date September 29, 1999, No. 1754926 (Argentina);

- "GLOBEX" in international class 36, Registration Date November 16, 1989, No. 10534 (South Korea);

- "GLOBEX" in international class 36, Registration Date May 19, 1994, No. P410170 (Switzerland);

- "GLOBEX" in international class 36, Registration Date September 1, 1991, No. 52676 (Taiwan);

6.6 The Domain Name comprises the Relevant Trademarks and differs solely to the extent of the addition of the prefix "e-".

6.7 The Panel holds that the addition of the prefix "e-" to the Relevant Trademarks is insufficient in this case to prevent the Domain Name from being confusingly similar to the Relevant Trademarks. The Panel considers that this conclusion is consistent with previous decisions on the addition of such a prefix to a trademark such as the decision in Crédit Lyonnais v. Association Etre Ensemble, (WIPO Case No. D2000-1426), cited by the Complainant, and that in Inter-IKEA Systems B.V. v. Technology Education Center (WIPO Case No. D2000-0522).

6.8 The Panel therefore finds that the Domain Name is confusingly similar to the Relevant Trademarks and that the Complainant has made out paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.9 Under paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.

6.10 The Panel notes that the Respondent has not been authorised by the Complainant to use the Relevant Trademarks in the Domain Name.

6.11 Although the Respondent has not put forward any formal submissions to the Panel, the Panel notes the statements made by the Respondent in its email to the Complainant�s lawyers that it regards the name "GLOBEX" to be a for-shortened version of the words "Global" and "Exchange". It is unclear what the Respondent�s contention is here. It may be a contention that GLOBEX is a generic term that should be available to any person operating a website in relation to stock exchanges around the world. If so, this contention is rejected by the Panel. There is no evidence before the Panel to suggest that the name GLOBEX is non-distinctive and much evidence has been provided by the Complainant to the contrary.

6.12 In the circumstances, whether or not the Respondent has rights or legitimate interests in the Domain Name turns upon the reasons why the Domain Name was chosen. For the reasons set out in greater detail below in the context of the question of bad faith, the Panel concludes as a matter of fact that it was with the intention and purpose of diverting traffic to the Respondent�s website for commercial gain by creating a likelihood of confusion with the Relevant Trademarks. Such activity does not give the Respondent legitimate rights or interests in the Domain Name.

6.13 In the circumstances the Panel finds that paragraph 4(a)(ii) of the Policy is made out by the Complainant.

C. Registered and Used in Bad Faith

6.14 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent and has been used in bad faith.

6.15 A non exclusive list of circumstances that are evidence of registration in bad faith are set out in paragraph 4(b) of the policy. The Complainant relies in particular on paragraph 4(b)(iii) and paragraph 4(b)(iv).

6.16 Before considering these paragraphs it is helpful to consider to what extent the evidence shows that the Respondent had knowledge of the Complainant�s use of "GLOBEX" at the time it registered the Domain Name.

6.17 The Domain Name was registered on December 2, 1999. The Panel notes that at that time the Complainant did not have a trade mark registration for the "GLOBEX" name in Indonesia, the country in which the Respondent is resident.

6.18 However, based on the evidence put forward by the Complainant of (i) it�s trade mark registrations in other countries; (ii) its substantial marketing spend in relation to the Globex exchange; and (iii) the articles in numerous well-known newspapers and financial publications around the world in which the "GLOBEX" name is referred to in association with the Complainant; and (iv) the fact that the web-site addressed by the Domain Name relates to the financial services industry generally (and, indeed, in one of the screen prints provided includes a reference to the Complainant itself), the Panel considers that the Complainant has put forward a strong prima facie case that the Respondent knew of the Complainant�s use of the "GLOBEX" name and the reputation of that name when it registered the Domain Name.

6.19 The Panel notes the Respondent�s statement in relation to the "GLOBEX" name that "I don�t know if there is a company which use this term/acronim as its name" (sic). Although there is a danger in interpreting too much into an email in imperfect English, the fact stated is that the Respondent does not know of any company which uses "GLOBEX" as part of its name. It is not a statement that the Respondent does not know of any company that uses the name "GLOBEX" other than as part of its name (as is the case here). In the circumstances the Panel considers that the Respondent�s statement is not sufficient to rebut the Complainant�s case on knowledge and finds as a question of fact that the Respondent had actual knowledge of the Complainant�s use of the "GLOBEX" name.

6.20 Paragraph 4(b)(iii) refers to a situation where:

"�you have registered the domain name primarily for the purpose of disrupting the business of a competitor;"

6.21 On the basis of screen prints provided by the Complainant, the Panel notes that, although the website to which the Domain Name resolved relates to the financial services industry generally, it does not offer services which compete with those of the Complainant, being the provision of a marketplace for the exchange of financial derivative products. The Panel therefore finds that the Complainant�s allegations under paragraph 4(b)(iii) are not made out.

6.22 Paragraph 4(b)(iv) refers to a situation where:

"� by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website 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."

6.23 The Panel has already concluded that the Respondent had actual knowledge of the Complainant�s use of the "GLOBEX" name when it registered the Domain Name. Given that fact, it is difficult in the circumstances of this case for the Panel to reach any conclusion other than that the Domain Name was chosen with the intention of attracting internet users to the Respondent�s website.

6.24 A further point here is the Respondent�s use of "GLOBEX" as a meta-tag keyword within the HTML structure of the website addressed by the Domain Name. Whilst it is not explained in the Complaint, the Panel understands the assertion here to be use of the "GLOBEX" name enables the Respondent to obtain a higher search-engine ranking for its website when a search against the name "GLOBEX" is conducted. Such activity strikes the Panel as persuasive evidence in support of its conclusion that the purpose of the Domain Name registration was to divert traffic to the Respondent�s website. The Panel notes that the Complainant relies upon Luxottica S.r.l v. Lux Ottica LLC, (WIPO Case No. D2002-0904) on the question of bad faith. The Luxottica case primarily considers meta-tag use in relation to the question of rights and legitimate interests, but the Panel nevertheless believes its conclusions here to be consistent with the approach taken in Luxottica.

6.25 But showing that the Domain Name was registered with the intention of attracting Internet users to the Respondent�s website by creating a likelihood of confusion with the "GLOBEX" name is not sufficient. A Complainant must show that the reason for such registration was for commercial gain. Can the Complainant show this in this case?

6.26 In the Panel�s view the answer to that question is yes. Even if the services available on the website itself could not be said to be offered for commercial gain (which appears to be the case from the screen prints provided), it is reasonable to infer (and the Panel does infer) from the existence of banner advertisements on the website that the Respondent derived some indirect commercial benefit by including such advertisements on its site. In the Panel�s view this constitutes sufficient commercial gain for the purpose of paragraph 4(b)(iv). The Panel considers its conclusion on this point to be consistent with that adopted in V&S Vin&Spirit AB v. Corinne Ducos, (WIPO Case No. D2003-0301).

6.27 In the circumstances the Panel finds that the Complainant�s allegations under paragraph 4(b)(iv) have been successfully made out.

6.28 It has been alleged by the Complainant that the fact that the Complainant�s initial email to the Respondent at the email address listed on the WHOIS database was returned "undeliverable" is evidence of bad faith. It appears from the correspondence that an explanation for this is given by the Respondent. However, it is only a partial explanation. It is incumbent on registrants to keep up to date their contact details filed with the relevant registrar. The Panel does not rely on this fact in establishing bad faith in this case but future panels may not take such an indulgent view.

6.29 Taking all of the foregoing into account the Panel is persuaded on balance that the Domain Name has been registered and used in bad faith.

 

7. Decision

7.1 For all of the foregoing reasons, the Panel finds that the Complainant has sufficiently proved that:

(a) the Domain Name is confusingly similar to trademarks of the Complainant;

(b) the Respondent does not have any rights to or legitimate interest in the Domain Name; and

(c) the Domain Name was registered and has been used in bad faith.

7.2 Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

 

 

Matthew S. Harris
Sole Panelist

Dated: November 6, 2003

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