WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chicago Mercantile Exchange Inc. v. E-Globex Consulting, LLC Case No. D2009-1728 1. The Parties
Complainant is Chicago Mercantile Exchange Inc. of Chicago, Illinois, United States of America, represented by Brinks Hofer Gilson & Lione, United States.
Respondent is E-Globex Consulting, LLC of Haymarket, Virginia, United States. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2009. On December 17, 2009, the Center transmitted by e-mail to GoD, Inc., a request for registrar verification in connection with the disputed domain name. On December 17, 2009, GoD, Inc., transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 19, 2010.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 27, 2010. 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
Complainant states that it is “the largest futures exchange in the United States” and that it was “founded in 1898 and provides an international marketplace for the exchange of financial derivatives products, namely, futures and options contracts.” Complainant further states that “[i]n 1987, Complainant announced plans to develop the first worldwide after-hours electronic trading system, to be launched under the mark GLOBEX” and that “[i]n 1992, after five years of planning, negotiation, and development, Complainant launched the CME GLOBEX system” which generated revenue of more than USD 2 billion between 1995 and 2009.
Complainant states that it owns four federal trademark registrations in the United States for marks that consist of or include GLOBEX (U.S. Reg. Nos. 1,576,888; 2,448,961; 3,193,924; and 2,803,314), the first of which was registered on January 9, 1990, as well as “more than 30” similar trademark registrations worldwide. All of these registrations are supported by appropriate exhibits and are collectively hereafter referred to as the “GLOBEX Trademark.”
The Disputed Domain Name was created on March 6, 2007. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the GLOBEX Trademark because it includes the GLOBEX Trademark in its entirety plus, only, the letter “e”, which is “a minor alteration or addition [that] is not likely to eliminate confusion.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not affiliated with Complainant or authorized by Complainant to use the GLOBEX Trademark in a domain name; Respondent is using the Disputed Domain Name “in order to attract Internet users to a website that features financial information”; and Respondent cannot be commonly known by the GLOBEX Trademark because the mark “was specifically coined by Complainant for use in connection with its financial services”.
- Respondent registered and is using the Disputed Domain Name in bad faith because Respondent “had actual or constructive notice of Complainant's trademark rights in the GLOBEX mark”; Respondent uses the Disputed Domain Name “to gain commercial profit through redirection of Internet users to Respondent's website… offering financial services”; and Respondent has never responded to at least seven attempts by Complainant to discuss the Disputed Domain Name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the GLOBEX Trademark, and Respondent does not dispute the validity of the GLOBEX Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the GLOBEX Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “e-globex”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
As this Panel found in a previous dispute under the Policy, the addition of the letter “e” to the beginning of a trademark to create a domain name does not alleviate any confusing similarity between the trademark and the domain name. Gateway Inc. v. Domains by Proxy Inc. / NetWeb, Inc.,WIPO Case No. D2008-0063 (transfer of and ). See also Crédit Lyonnais v. Association Etre Ensemble,WIPO Case No. D2000-1426 (transfer of ); and Bloomberg L.P. v FBS UK Ltd, NAF Claim No. 97187 (transfer of ).
Accordingly, the Disputed Domain Name is confusingly similar to Complainant's GLOBEX Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations detailed above and without any evidence this Panel finds compelling of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has on balance proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined in part by considering the four (non-exhaustive) examples of bad faith set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant specifically alleges that Respondent has acted in bad faith pursuant to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Given the apparent nature of Respondent's services in the financial industry (the same industry as Complainant's), the Panel agrees that Respondent's registration and use of the Disputed Domain Name was likely primarily for the purpose of disrupting Complainant's business and that Respondent created confusion with Complainant by intentionally attempting to attract Internet users to Respondent's website for Respondent's commercial gain. Similar conclusions have been reached in numerous decisions under the Policy, including those cited by Complainant, inter alia, Bank of America Corporation v. Franky Tong, NAF Claim No. 128074 (transfer of ) and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103 (transfer of ).
In light of the above, the Panel is convinced that Complainant has proven the third element of the Policy. 7. Decision
For all 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 be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: February 10, 2010
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