Complainant is Chicago Mercantile Exchange Inc. and CME Group Inc. of Chicago, Illinois, United States of America ("United States" or "U.S."), represented by Norvell IP llc, United States.
Respondents are YinZheZhu of Yanji, Jilin, China / Li Donghu Li Donghu, Ad Network of Qingdao, Shandong, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR.
The disputed domain names , and are registered with Jiangsu Bangning Science & technology Co. Ltd.
Both PDR Ltd. d/b/a PublicDomainR and Jiangsu Bangning Science & technology Co. Ltd. will be hereinafter collectively named as the Registrar unless otherwise designated. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrant and providing the contact details. In response to an invitation to amend the Complaint by the Center on July 11, 2016, Complainant filed an amended Complaint on July 14, 2016.
On July 11, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 14, 2016, Complainant requested that English be the language of the proceeding. Respondents did not comment on the language of the proceeding.
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 Respondents of the Complaint, and the proceeding commenced on July 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2016. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on August 9, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on August 19, 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. 4. Factual Background A. Complainant
Complainant 1, Chicago Mercantile Exchange Inc., is a company incorporated in Chicago, Illinois, U.S. (hereinafter "Complainant CME" or "CME").
Complainant 2, CME Group Inc., is a company incorporated in Chicago, Illinois, U.S. (hereinafter "Complainant CME Group" or "CME Group") and the parent company to Complainant CME (Complainants 1 and 2, collectively, "Complainant(s)").
Founded in 1848, Complainant is the world's largest and most diverse financial exchange. Complainants' operations now extend globally with offices in the U.S., Canada, Brazil, United Kingdom of Great Britain and Northern Ireland, Ireland, Singapore, China, Republic of Korea, India and Japan (Annex J to the Complaint).
Complainant has exclusive rights in the CME Marks globally, including the Republic of Korea (since February 27, 2007), the U.S. (February 14, 1978), and China (since December 7, 2007) (Annexes L-M to the Complaint). B. Respondents
Respondents are YinZheZhu of Yanji, Jilin, China and Li Donghu Li Donghu, Ad Network of Qingdao, Shandong, China. The disputed domain names and were registered on December 28, 2015. The disputed domain name was registered on January 4, 2016. The disputed domain names and were registered on January 28, 2016. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are confusingly similar to Complainants' CME Marks.
Complainant contends that Respondents have no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that Respondents registered and are using the disputed domain names in bad faith.
Complainant requests that the disputed domain names be transferred to it. B. Respondents
Respondents did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Consolidation of Respondents
As a preliminary matter the Panel finds, given the evidence of common control of the disputed domain names provided by the Complainant, namely, as the websites at the disputed domain names resolve to substantially similar Korean-language websites featuring the same business name, that it is appropriate to consolidate complaints against multiple Respondents in a single Decision. 6.2. Language of the Proceeding
The language of the Registration Agreements for the disputed domain names , and is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Respondents have used English characters in the disputed domain names, not Chinese characters;
(b) The websites at the disputed domain names include English words and characters and Korean words and characters, but not Chinese words or characters;
(c)Respondents have been subject to the Prior Decisions involving English language brands, the proceeding for which were conducted in English, and in which Respondents did not request a language other than English; and
(d) Complainants are not in a position to conduct the proceeding in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting Annexes.
Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593. The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:
"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement". WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585.
The Panel has taken into consideration the facts that Complainant is a company from the U.S., and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain names include Latin characters and English abbreviations "cme" (for "Chicago Mercantile Exchange"), "hts" (for "Home Trading System"), as well as English words "best" and "good". Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047.
On the record, Respondents appear to be Chinese individuals and are thus presumably not native English speakers, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondents have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) all disputed domain names are registered in Latin characters and particularly in English language, rather than Chinese script; (b) The websites resolved from the disputed domain names are in Korean and English, and Respondents were apparently doing business in Korean and English through the websites (Annex C to the Complaint); (c) the websites appear to have been directed to users worldwide (particularly Korean and English speakers) rather than Chinese speakers; (d) the Center has notified Respondents of the proceeding in both Chinese and English, and Respondents have indicated no objection to Complainant's request that English be the language of the proceeding; (e) the Center informed Respondents that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.3. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the CME Marks acquired through registration. The CME Mark has been registered worldwide including in the U.S., Republic of Korea and China. Founded in 1848, Complainant is one of the world's leading financial exchange.
The disputed domain names comprise the CME Mark in its entirety. The disputed domain names , , , and only differ from Complainant's trademark by the additions of the words "best", "good", "hts" or/and by number "7" or "365" respectively. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain names.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name." Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087.
The mere addition of the descriptive terms or English abbreviations "hts" (for "Home Trading System"), and/or English words "best" or "good" as well as number "7" or "365" as prefixes to Complainant's mark fails to distinguish to this Panel the disputed domain names from Complainant's trademark. By contrast, it may increase the likelihood of confusion. For example, the "hts" is one of services of Complainant. Internet users who visit the disputed domain names are likely to be confused and may falsely believe that the disputed domain names operated by Complainant for providing CME-branded financial services, such as financial exchange.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the CME Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) having been commonly known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein.
Complainant has rights in the CME Mark globally, including registration in the Republic of Korea (since February 27, 2007), the U.S. (February 14, 1978), and China (since December 7, 2007) (Annexes L-M to the Complaint). According to Complainant, founded in 1848, Complainant is the world's largest and most diverse financial exchange. Complainants' operations now extend globally with offices in the U.S., Canada, Brazil, United Kingdom, Ireland, Singapore, China, Republic of Korea, India and Japan.
Moreover, Respondents are not an authorized dealer of CME -branded products/services. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word "CME" in the disputed domain names business operation or the use of the CME Marks and design on their websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the CME Mark or to apply for or use any domain name incorporating the CME Mark;
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Respondents registered the disputed domain names and on December 28, 2015, on January 4, 2016, and on January 28, 2016 respectively, long after Complainant's registrations of the CME Marks (e.g. in the U.S. since 1978; in China and Republic of Korea since 2007). The disputed domain names are identical or confusingly similar to Complainant's CME Mark.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondents were in actuality advertising, offering and selling purported CME products/services through the websites resolved by all disputed domain names (Annex C to the Complaint).
The Panel finds that Respondents have failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondents' documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents' websites or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' websites or location or of a product or service on Respondents' website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the CME Marks with regard to its products and services. Complainant has registered its CME Marks internationally, including registration in China and Republic of Korea (since 2007). Moreover, Respondents used the CME Marks and design on their websites (without disclaimer or other clarifying details), and the websites advertised for sale various purported CME products and services. Respondents would likely not have advertised products and/or services purporting to be CME products and/or services on the websites if they were unaware of CME's reputation. In the other words, it is not conceivable that Respondents would not have had actual notice of Complainant's trademark right at the time of the registration of the disputed domain names. The Panel also finds that the CME Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Moreover, Respondents have chosen not to formally respond to Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant's CME branded products and/or services. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using confusingly similar disputed domain names, Respondents has "intentionally attempted to attract, for commercial gain, Internet users to Respondents' websites" purportedly offering Complainant's CME-branded products and/or services without authorization. Complainant claimed that Respondents "registered the disputed domain name in bad faith with the intent to capitalize on Complainants' fame and reputation for commercial gain based on a likelihood of confusion between the disputed domain names and CME Marks".
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Given the widespread reputation of the CME Marks (as well as the content on Respondents' previous websites mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain names are resolved. In other words, Respondents have through the use of confusingly similar disputed domain names and webpage contents created a likelihood of confusion with the CME Marks.
Noting also that apparently no clarification as to Respondents' relationship to Complainant are made on the homepages of the disputed domain names, potential Internet users are led to believe that the websites at disputed domain names are either Complainant's sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondents have not responded formally to the Complaint. Lastly, the Panel notes the large number of domain names registered by the Respondents which incorporate Complainant's marks. The Panel therefore concludes that the disputed domain names were used by Respondents in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 names , , , and be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 5, 2016
Full & Egal Universal Law Academy