The Complainants are Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, the United States of America (“USA”), represented by Norvell IP llc, of the USA (both together referred as the “Complainant”).
The Respondent is Globex Biz Solutions of Mumbai, India. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2015. On April 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 24, 2015.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 the Respondent of the Complaint, and the proceedings commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 1, 2015. 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
The Complainant CME Group is a provider of financial exchange services and offers futures and options trading through five major exchanges being the Chicago Mercantile Exchange, the Chicago Board of Trade, the Commodity Exchange, the New York Mercantile Exchange, and the Kansas City Board of Trade. The Complainant Chicago Mercantile Exchange Inc (“CME”) is a wholly owned subsidiary of CME Group and is a financial exchange that provides an international marketplace for the exchange and clearing of financial derivative products, namely futures and options contracts.
In 1992, the Complainant CME launched an electronic trading platform for futures under the name “Globex”. Presently the Globex trading platform can be accessed from 150 countries. The Complainant has registered the domain name and owns more than 60 domain names that include the word “globex”.
The Complainant is the owner of a number of trade marks consisting of the word “globex” (the “GLOBEX Mark”). The GLOBEX Mark was first registered in the USA in 1990 for “Conducting courses, seminars and computerized training in trading contracts for securities, commodities, and monetary and financial instruments on a futures exchange”. The Complainant also owns registrations for the GLOBEX Mark in various international jurisdictions, including Australia, Brazil, Canada, China, the European Community, India, Japan, Mexico, Singapore, and the United Kingdom of Great Britain and Northern Ireland.
The Domain Name was registered on July 23, 2011. The Domain Name was registered on October 11, 2012. The Domain Names , , , , and were registered on October 16, 2012. The Domain Names are presently inactive however prior to the filing of this Complaint, the Domain Names , , and resolved to websites (the “Respondent’s Websites”), which offered visitors the opportunity to “Practice trading GLOBEX” and purported to offer tools to allow investors to trade on financial markets online. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s GLOBEX Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the GLOBEX Mark. It owns trade mark registrations for the GLOBEX Mark in the USA and various jurisdictions around the world.
The Domain Names consist of the GLOBEX Mark with the addition of the geographical terms “US,” “US-,” “Thai,” “UK,” “Dubai,” and “Lanka” or the three letter acronyms “SNP” and “SGX” (the designation of the Singapore Exchange). The additions to the GLOBEX Mark do not prevent a finding of confusing similarity.
The Respondent has no rights or legitimate interests in the Domain Names. The Complainant has not authorized the Respondent to use and register any domain name incorporating the GLOBEX Marks. The Domain Names are either not used by the Respondent or are used in connection with a scheme designed to deceive customers into purchasing the Respondent’s services, by creating the impression that those services originate from Complainant.
The Domain Names were registered and are being used in bad faith. The Respondent registered the Domain Names with awareness of the Complainant’s reputation. It has used the Domain Names , , and to promote the sale of its services of providing education about, and tools for use in, futures trading, in association with Complainant’s GLOBEX Mark. The Respondent is passively holding the Domain Names , , and , which amounts to use of the Domain Names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the GLOBEX Mark, having registrations for the GLOBEX Mark in the USA and various international jurisdictions.
The Domain Names , , , , and consist of the GLOBEX Mark with the addition of various geographical terms as prefixes. In the present case the addition of these geographical terms to the Domain Names that otherwise incorporate the GLOBEX Mark in its entirety does not prevent a finding of confusing similarity. The Domain Names , consist of the GLOBEX Mark with the addition of the prefix “sgx” and “snp”. The presence of those prefixes attached to the dominant element, being the GLOBEX Mark, does not prevent a finding of confusing similarity. In either case a person viewing any of these Domain Names may be confused into thinking any of the Domain Names refer to a site run by or associated with the Complainant.
Accordingly, the Panel finds that each of the Domain Names is confusingly similar to the Complainant’s GLOBEX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c))
The Respondent has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the GLOBEX Mark or a mark similar to the GLOBEX Mark. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names for a legitimate noncommercial use or the Domain Names , , and in connection with a bona fide offering of goods or services.
The named Respondent in this case is Globex Biz Solutions which does correspond to the Domain Names, however there is no evidence before the Panel that the Respondent has registered a business or company name instead of using the name Globex Biz Solutions as simply the means to assert a legitimate interest in the Domain Names. Even in the event that the Respondent has properly registered Globex Biz Solutions as a business or company name, the Panel finds that is insufficient to establish the Respondent has rights or legitimate interests in the Domain Names. There is no evidence of when the company name was registered or whether there is any examination process for registering company names. If the mere registration of a company name (as opposed to an examined trade mark) was sufficient in itself to show rights or legitimate interests it would be possible for a professional cybersquatter to defeat any UDRP case merely by obtaining an unexamined company name registration upon the commencement of a claim against it.
The Respondent has used the Domain Names , , and to, without the permission of the Complainant, promote the sale of its services of providing education about, and tools for use in, futures trading. The Respondent’s Websites make reference to the Complainant’s Mark, potentially indicating that the Respondent is in some way connected to the Complainant and appear to offer financial trading services, or at least services associated with the Complainant, for which the Respondent is likely to receive some revenue. Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests including providing evidence of the bona fide nature of the Respondent’s Websites or that it is commonly known by any of the Domain Names but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the GLOBEX Mark at the time the Respondent registered the Domain Names. The Respondent’s Websites offer services for trading in financial markets, where the Complainant and its GLOBEX Mark have a considerable reputation. The Respondent’s Websites also make reference to the Complainant’s GLOBEX Mark. Moreover the term “globex” is a coined word and the Panel cannot conceive of a reason, nor has the Respondent supplied one, to register the Domain Names other than in awareness of and to benefit from any confusion arising from the reputation of the Complainant. The registration of the Domain Names in awareness of the GLOBEX Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent has used the Domain Names , , and to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the GLOBEX Mark as to the source, sponsorship, affiliation or endorsement of its websites. The Respondent’s Websites purport to offer financial trading services, similar to those offered by the Complainant. The only apparent purpose behind the conduct of the Respondent in registering and using the Domain Names is to gain revenue from people who visit the Respondent’s Websites out of confusion or because they assume the Websites are connected to the Complainant. The Panel finds that such use amounts to use in bad faith.
With respect to the Domain Names , , and , those Domain Names are currently inactive and there is no evidence that the Domain Names have been used by the Respondent for any purpose. They are, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
a) The Respondent was aware of the Complainant at the time it registered the Domain Names and operates in the same field of industry;
b) The Respondent has registered eight Domain Names that reproduce the Complainant’s GLOBEX Mark in its entirety;
c) The Respondent has provided no bona fide reason for the registration of the Domain Names; and
d) The Respondent has registered similar domain names (, , and ) and has used those domain names in bad faith.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent’s passive holding of the Domain Names , , and is use of the Domain Names in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , , , and be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: June 4, 2015
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