The Complainant is Chicago Mercantile Exchange Inc. of Chicago, Illinois, United States of America (“United States”), represented by Norvell IP llc, United States.
The Respondent is Necip Velisoy / Cyprus Interactive of Girne, Cyprus, represented by BH LEX Law and Consultancy Bureau, Cyprus. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 26, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Response was filed with the Center on May 22, 2017.
The Complainant submitted an unsolicited supplemental filing on June 1, 2017.
The Center appointed Steven A. Maier, Stefan Abel and The Hon Neil Brown Q.C. as panelists in this matter on June 23, 2017. The Panel finds that it was properly constituted. Each member of 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.
The Panel determines that it is unnecessary to review the Complainant’s unsolicited supplemental filing in this proceeding.
While the Respondent has submitted a number of documents in the Turkish language, the Panel determines that these documents shall be deemed for the purposes of this proceeding to be as described by the Respondent and that translations will not be required. 4. Factual Background
The Complainant is a corporation registered in Delaware, United States, with its principal place of business in Chicago, Illinois, United States. It is a provider of financial services.
The Complainant is the owner of registrations for the trademark or service mark GLOBEX including the following:
- United States trademark number 2448961 for a typed drawing GLOBEX, registered on May 8, 2001 in Class 36 for conducting commodities, securities, monetary and financial instruments futures and options exchange services
- European Union Trade Mark number 005816707 for the word mark GLOBEX, registered on May 12, 2009 in Class 36 for financial affairs, monetary affairs and real estate affairs
The Complainant is the owner of additional trademark registrations for the mark GLOBEX in territories including Australia, Brazil, Canada, China, India and Japan. The majority of these registrations date from the late 1980s or early 1990s.
The Respondent is resident in Cyprus. He is the principal of a corporate entity named Globex Menkul Değerler Ltd (“the Company”), which appears from the documents submitted by him to have been incorporated under the auspices of the Turkish Republic of Northern Cyprus on August 29, 2013.
The disputed domain names were registered on the following dates:
on October 4, 2012
on January 2, 2014
on January 2, 2014
The disputed domain name has resolved to a website, principally in the Turkish language, but headed “GLOBEX Your Global Forex Partner”. The website names the Company and is stated by the Respondent to constitute a demonstration site, intended in due course to offer services in the foreign exchange market.
The remaining two disputed domain names have not resolved to any active website. 5. Parties’ Contentions A. Complainant
The Complainant states that it was founded in 1898 and has used its current corporate name since 1919. It states that it provides an international marketplace for the exchange and clearing of financial derivatives, namely futures and options. It states that it is one of the world’s leading financial institutions and that traders, institutions, corporations, investors and governments have relied on it for over 100 years.
The Complainant states that it pioneered the electronic trading of derivatives through its GLOBEX trading platform, which it began to develop in 1987 and launched in 1992. It states that, since that date, its GLOBEX platform has revolutionized the world of electronic trading and is the world’s leading platform for currencies and metals in particular. It states that it is also one of the largest regulated marketplaces for trading foreign exchange, which it submits is widely known as “FX” or “forex”. The Complainant submits that its GLOBEX platform can be accessed from over 150 countries and that the Complainant’s own operations extend globally with numerous international offices.
The Complainant states that it registered the domain name in 1994 and that it owns more than 75 other domain names that include the GLOBEX mark.
The Complainant submits that it devotes millions of dollars annually to promoting and advertising its services under the GLOBEX mark. It states that it has traded billions of contracts through the GLOBEX platform including 3.5 billion contracts in 2016, generating revenues in excess of USD 3.3 billion. The value of the contracts themselves exceeded over one quadrillion dollars.
The Complainant submits evidence that it has traded Turkish Lira futures on its GLOBEX system since 2009.
The Complainant exhibits evidence concerning its business and trading, including its published reports and reference guides. The Panel notes that, while much of this material is recent, the exhibits include financial information including the Complainant’s total revenues of USD 2,015 million in 2012. The exhibits also include a reference to over three-quarters of the Complainant’s trading volume deriving from its GLOBEX platform as of 2010.
The Complainant submits that, as a result of the above matters, its GLOBEX marks have come to be associated by the relevant consuming public worldwide with the Complainant and with services only of the highest quality. The Complainant submits that the goodwill associated with the GLOBEX trademark is of immeasurable value and is owned exclusively by the Complainant.
The Complainant submits that the reputation of the GLOBEX marks has been recognized by previous panels under the UDRP. The Complainant cites Chicago Mercantile Exchange Inc., CME Group Inc. v. Globex Biz Solutions,WIPO Case No. D2015-0671, which concerned domain names including the term “globex” that were registered from July 2011 onwards. In that (albeit uncontested) case the panel found that the Complainant’s GLOBEX trademark had a “considerable reputation” in financial markets at the date of registration of the relevant domain names. The Complainant also refers to Chicago Mercantile Exchange Inc. and CME Group Inc. v. Registration Private, Domains By Proxy, LLC / Srgglobex LTD,WIPO Case No. D2016-1446 (although also uncontested), in which the panel observed that:
“Based on the evidence in the case file, notably the Complainant’s activities under its [GLOBEX] 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.”
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that each of the disputed domain names includes the term “globex” as its dominant element, which is identical with the Complainant’s GLOBEX trademark. The Complainant submits that this is paired in each case with the generic term “forex”, which refers to the foreign exchange markets. The Complainant argues that the addition of this generic term does nothing to distinguish the disputed domain names from the Complainant’s trademark, but on the contrary intensifies the confusing similarity given the reputation of the Complainant’s GLOBEX mark in the international financial community.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant states that the Respondent is not affiliated or connected with the Complainant in any way and that the Complainant has never authorized the Respondent to use its GLOBEX trademark. The Complainant states that the Respondent did not use any GLOBEX trademark prior to the Complainant’s use of that mark and denies that the Respondent has any rights in that mark, or has commonly been known by any of the disputed domain names. The Complainant denies that the Respondent has made any legitimate noncommercial or fair use of the disputed domain names.
The Complainant also disputes that the Respondent has made any demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services. On the contrary, the Complainant refers to the Respondent’s website and alleges that the Respondent has used the disputed domain names in connection with a structure that is designed to deceive customers into purchasing the Respondent’s foreign exchange services by using the Complainant’s GLOBEX trademark to create the impression that those services emanate from the Complainant. The Complainant also complains that the Respondent’s website requests personal information in order to set up an individual’s account.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith.
The Complainant asserts that the Respondent knew or ought to have known of the Complainant’s GLOBEX trademark at the date he registered the disputed domain names. The Complainant refers to its extensive trademark registrations around the world and to the reputation of its trademark as recognized by previous UDRP panels. The Complainant says that, in the light of the reputation of its GLOBEX mark particularly in the field of “forex” trading, it is obvious that the Respondent was or should have been aware of that mark.
The Complainant submits that the Respondent is using the disputed domain names for commercial gain by intentionally creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services (paragraph 4(b)(iv) of the Policy). Specifically, the Complainant contends that the Respondent is using the website at “www.” to promote the sale of his “forex” services by reference to the Complainant’s GLOBEX mark. The Complainant argues that, owing to the widespread fame of the GLOBEX mark in the financial services industry, the Respondent is capitalizing on that fame by using the mark misleadingly to attract Internet users to his website.
The Complainant submits that the Respondent’s “passive” holding of two of the disputed domain names does not prevent a finding of bad faith in all the circumstances of the case (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Complainant further submits that the Respondent has provided false contact details, namely addresses in both Cyprus and Turkey. It also exhibits a legal demand letter dated April 12, 2017 sent by its representative to the Respondent, to which it says the Respondent did not reply.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent denies that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. He states that the Complainant does not have any such rights, and that even if it does, they do not take priority over the Respondent’s own rights. The Respondent denies that the Complainant’s GLOBEX mark is as famous as stated by the Complainant and puts the Complainant to proof of the reputation of that mark prior to October 4, 2012 in particular. The Respondent also specifically disputes the reputation of the Complainant’s trademark within Turkey or Turkish-speaking markets. The Respondent states that even if the reputation of the Complainant’s trademark is momentarily accepted, it is clear and obvious that the name “globex” refers to the Company and that the Respondent is entitled to use that name.
The Respondent submits that each of the disputed domain names is comprised of the common terms “globe” and “ex”, the latter of which signifies exchange, and that the mark GLOBEX is devoid of any distinctive character and should not have been registered. He states that both the terms “globe” and “ex” are commonly used in connection with the “forex” market and that anyone could legitimately have come up with the name “globex” for use in that connection.
The Respondent submits that he does have rights or legitimate interests in respect of the disputed domain names. He states that these rights emanate from his founding and ownership of the Company and that that registration of the Company entitles him to use its name for the purposes of websites. The Respondent adds that the Company’s articles of association also specify the Company’s area of business, namely providing goods and services relating to the foreign exchange or “forex” market. The Respondent states that he did not need the Complainant’s permission or licence to use the “globex” term. He states that the Complainant does not have exclusive, worldwide rights in the GLOBEX mark and no superior rights in the mark to those of the Respondent.
The Respondent exhibits an agreement dated October 6, 2015 between the Company and a United Kingdom (“UK”) company, London Capital Group Limited (“LCC”), described as an “Introducing Broker Agreement,” which sets out the terms on which the Company may introduce customers to LCC. The Respondent submits that the existence of this agreement demonstrates that no-one believed the Respondent to be the Complainant and that the Respondent has not attempted to benefit from any alleged confusion. He states that his target market is different from that of the Complainant and that no-one would think his services originated from the Complainant.
The Respondent states that he has also invested money in connection with the Company and exhibits evidence of a payment of USD 10,000 dated November 18, 2015 in favour of LCC.
The Respondent denies that he has used the disputed domain names to mislead Internet users, or in any other manner in bad faith. He states that he was unaware of “the Complainant’s domain name or the alleged rights attaching to it”, which the Panel reads as a submission that he was unaware of the Complainant’s trademark at the date he registered the disputed domain names. He also denies that he had any duty to be aware of the Complainant’s trademark. The Respondent states that he is resident in the Turkish Republic of Northern Cyprus, which does not form part of the European Union, and that the Complainant has never registered a trademark in the jurisdiction of Northern Cyprus.
The Respondent goes through each of the circumstances indicating bad faith as set out in paragraph 4 of the Policy and denies that any of them is applicable in this case.
The Respondent submits that the website at “www.” does not infringe any rights of the Complainant. He states that the site has never been operational and has comprised a demonstration version since it was launched. The Respondent states that the reason the website has not been further developed is that he has been in bad health. He states that the reason the website requests personal information is that the Company has the right to request “Know Your Client” information and to undertake due diligence on potential customers.
The Respondent further contends that the Complainant’s lapse of time in bringing these proceedings prevents the Complainant from establishing bad faith. He submits that the Complainant could have registered the disputed domain names but did not do so, and is bringing these proceedings now in order to enter the Respondent’s marketplace, damage the Complainant’s competitors and establish a monopoly for itself.
The Respondent denies having given false contact information and states that it is necessary to include an address in Turkey as the Turkish Republic of Northern Cyprus is not internationally recognized. The Respondent denies having received any notice of the Complainant’s claim or any demand letter from its representatives prior to the commencement of these proceedings and states that he would have no duty to respond to any such letter in any event. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark GLOBEX and that it has a longstanding trading history under that mark in financial services including foreign exchange (“forex”) trading. Each of the disputed domain names comprises the whole of the Complainant’s mark GLOBEX together with the descriptive term “forex”. The Panel finds that the addition of the term “forex” does not distinguish the disputed domain names from the Complainant’s trademark, but rather adds to the risk of confusion between the disputed domain names and that trademark. In the circumstances, the Panel finds that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions give rise to a prima facie case for the Respondent to answer that he has no rights or legitimate interests in respect of the disputed domain names.
The Respondent registered the disputed domain name in October 2012 and appears to have registered the Company in August 2013. He registered the two further disputed domain names in January 2014. The Company entered into an introduction agreement with LCC in October 2015 and appears to have made a payment to LCC in November 2015. The Respondent has used the first of the disputed domain names for the purposes of the Company’s website offering “Global Forex” services under the mark GLOBEX, although he states that the site remains a demonstration site which has not been further developed owing to his ill health.
The Respondent argues that owing to the descriptive nature of the elements of the term “globex” and its natural association with the foreign exchange market, anyone could legitimately have come by that name without knowledge of the Complainant’s trademark and that he created the name accordingly. He also argues that he has used the disputed domain names for the purpose of a bona fide business in accordance with the name of the Company, and that as the registrant of the Company he has as much right to use the GLOBEX mark as does the Complainant.
While the Panel finds that the term “globex” is arguably comprised of descriptive elements, i.e. “globe” and “ex”, it also finds that those elements in combination have become distinctive of the Complainant and its services in the financial services sector as a result of the Complainant’s many years of substantial and prominent trading under the GLOBEX mark. The question in this case, therefore, is whether the Respondent registered and has used the disputed domain names in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the goodwill attaching to that mark, or alternatively without knowledge of the Complainant’s rights in and in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy).
The Panel accepts that the Respondent registered the Company under the name and mark GLOBEX and that the Company has entered into business transactions. However those facts are not conclusive that the activities of the Company represent a bona fide offering of goods or services. If the Company was in fact registered with the Complainant’s trademark in mind and with the intention of benefiting unfairly from the Complainant’s goodwill, then in the view of the Panel, the Company’s offering would not be bona fide and would amount to a pretext for the registration of the disputed domain names.
Having considered the evidence in the case, the Panel finds that the Complainant has operated an electronic trading system under the GLOBEX name and mark since 1992 and that it has prominently traded contracts including foreign exchange (“forex”) on that platform since well before the Respondent’s registration of any of the disputed domain names or the Company. While the Respondent states that he is resident in Northern Cyprus, and disputes the reputation of the Complainant’s GLOBEX mark particularly in that region, the Respondent has nevertheless purported to set up an online business intended to trade foreign exchange on a global basis. In addition, each of the disputed domain names includes a generic Top Level Domain (e.g. “.com” or “.net”) and none of them is suggestive of a localized or regionally restricted business. Further, the Company has apparently entered into an introduction agreement with a United Kingdom company.
In the circumstances, including the Respondent’s own business profile, the Panel considers it overwhelmingly likely that the Respondent was aware of the Complainant’s trademark GLOBEX and of the Complainant’s services under that mark at the date he registered each of the disputed domain names and the Company. The Panel concludes in these circumstances that the Respondent registered the disputed domain names and the Company with the intention of benefitting from the significant goodwill which attached to the Complainant’s trademark in the field of financial services. In the view of the Panel, the Company does not in these circumstances represent a bona fide offering of goods or services and the fact of its existence does not serve to “sanitize” the disputed domain names.
While the above is sufficient for the Panel to conclude that the Company does not represent a bona fide offering of goods or services, the Panel also notes in passing that, while the Company did enter into an agreement with LCC and apparently made a payment to it, there is no evidence of that contract having been performed by way of any customer introductions. Further, the Respondent accepts that the Company has not actually traded, although he attributes this to his own ill health.
There being no other evidence of rights or legitimate interests on the part of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
For the reasons set out above, the Panel has concluded on balance that the Respondent registered the disputed domain names in the knowledge of the Complainant’s rights in the trademark GLOBEX, including in connection with “forex” trading, and with the intention of benefitting from the Complainant’s goodwill in that trademark.
While the Respondent argues that he is making independent and legitimate use of the GLOBEX mark and that neither his website nor his business is confusing, the Panel finds that a significant number of Internet users who access a website linked to any of the disputed domain names are likely to assume that that website is owned, operated or authorized by the Complainant. Even if that impression is dispelled upon reviewing the website, the Respondent will nevertheless have attracted potential customers to his website as a result of the misrepresentation.
In the circumstances, the Panel finds that, by using the disputed domain name , the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website (paragraph 4(b)(iv) of the Policy).
The Panel accepts the Complainant’s submission that the Respondent’s “passive” holding of two of the disputed domain names does not preclude a finding of bad faith when the circumstances of the case point to such a finding, as is the case here.
The Panel does not consider the Complainant’s submissions concerning the Respondent’s contact information or its legal demand letter to be of any material significance.
In the circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith. 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 disputed domain names , and be transferred to the Complainant.
Steven A. Maier
Presiding Panelist
Stefan Abel
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: July 7, 2017
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