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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CDW Computer Centers, Inc. v. Hostmaster

Case No. D2002-0564

 

1. The Parties

The Complainant is CDW Computer Centers, Inc., 200 North Milwaukee Avenue, Vernon Hills, IL 60061, United States of America.

The Respondent is Hostmaster, 11800 N.E. 99th Street, Vancouver BC, Canada.

 

2. The Domain Name and Registrar

The Domain Name is <wwwcdw.com> and the Registrar is OnlineNIC, Inc.

 

3. Procedural History

The Complainant submitted an email copy of its complaint about the disputed domain name to the WIPO Arbitration and Mediation Center (the Center) on June 18, 2002, and a hardcopy on June 20, 2002. The Center acknowledged the Complainant's submission on June 19, 2002. The complaint was filed in accordance with the approved Rules and Supplementary Rules for Uniform Dispute Resolution Policy (UDRP), October 24, 1999, with the exception of the matter of mutual jurisdiction. As the Respondent had not agreed in its domain name registration agreement to the location of the principal office of the Registrar as a court of mutual jurisdiction the Complainant submitted on August 15, 2002, an amendment to its complaint agreeing to submit to the jurisdiction of the domain name holder's address.

The Center sought verification of the disputed domain name from OnlineNIC, Inc. on June 19, 2002. OnlineNIC, Inc.'s response was received on June 20, 2002, identifying Hostmaster as the registrant of the disputed domain name and confirming that the UDRP Policy applies to the disputed domain name. Also, the Registrar confirmed that the domain name will remain locked during the pending administrative proceeding.

The Center sent the complaint to the Respondent on June 21, 2002, by hard copy and e-mail and sent copies to the Complainant, ICANN and OnlineNIC, Inc. The Center’s communication informed the Respondent of a "Notification of Complaint and Commencement of Administrative Proceeding" and that the last day for a response was July 11, 2002. The hardcopy was returned unopened to the Center because its courier was unsuccessful in locating the Respondent's address.

The Respondent defaulted by not sending a response by the due date and on July 12, 2002, the Center sent a "Notification of Respondent Default" to the Respondent and the Complainant.

Following an invitation from the Center to serve as a panelist, the Panel member submitted his "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center on July 31, 2002, and was formally appointed on August 16, 2002.

The Panel has not received any additional submissions. The Panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements including proper notification to the Respondent and the payment by the Complainant of the appropriate fee for a decision by a single panelist.

The proceedings were conducted in English and the Panel's decision is scheduled to issue on August 30, 2002.

 

4. Factual Background

The Complainant is a United States corporation incorporated under the laws of the State of Illinois. The Complainant is a large commercial retailer of computer hardware, software, accessories and support, and is listed in the Fortune 500 largest corporations in America. The Complainant established in April 1996 an Internet electronic commerce ordering system under the name "CDW.com". By 2001 that site was generating more than 1 million individual transactions and over $US 615 million in direct, unassisted web sales.

The Complainant owns a portfolio of trademarks in the USA and Canada which use the letters "CDW". The original trademark CDW was registered in the United States on June 25, 1991. The Complainant's trademark is well-known and is relied upon to identify the Complainant as a major supplier of computer products and services and as distinguishing the Complainant and its products from those of its competitors and the goods and services of others. The CDW trademark, brand and the <cdw.com> domain name symbolize substantial goodwill for CDW. They are actively promoted in North America and internationally and are valuable commercial assets of the Complainant. Its gross advertising expenses in 2001 exceeded $US 80 million.

The Complainant has been the registrant for the domain name <cdw.com> since 1994 and has used "CDW.com" in commerce since 1995. The Complainant's domain name <cdw.com> resolves to CDW’s primary corporate web site, "CDW.com", from which hundreds of millions of dollars worth of computer hardware and software is purchased annually. The "CDW.com" web site averages over 91,000 unique visitors per day.

The Complainant submitted evidence that the disputed domain name resolved to two competitor web sites (Micro Warehouse and the Morpheus Shopping Club) and to "Ubid.com", an online auction site which sells computer and other high-tech products. Evidence also provided shows that the Internet user is actually directed to a series of several different internet addresses prior to reaching the final web site in order to generate revenue for the Respondent through referral fees.

The Complainant sent several "cease and desist" letters but received no responses. However, the redirections now resolve to the Complainant's site.

The Respondent, located in Canada, registered the disputed domain name <wwwcdw.com> on April 7, 2002. The name and contact details provided by the Respondent to the Registrar are incomplete and inaccurate. No full name was provided, the address does not exist and, according to the Complainant, the telephone contact belongs to a third party who does not appear to be connected with the registration or use of the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

-The Respondent registered the <wwwcdw.com> domain to divert for personal financial gain Internet users who wish to find CDW’s well-known brand but mistype the address.

-The disputed domain name is confusingly similar to the Complainant’s official, legal and famous name, and registered mark, "CDW."

-The registration of <wwwcdw.com> indicates that the Respondent intended unfairly to exploit the domain name to its advantage and CDW’s disadvantage.

-The Respondent is not the Complainant’s licensee in any respect, nor has the Complainant in any way endorsed, authorized, or sponsored the Respondent's use of the Complainant’s marks.

-The Respondent does not own any registered or common law marks containing the terms "CDW," "WWWCDW," "WWWCDW.com," "Computer Discount Warehouse," "CDW Computer Centers, Inc.," "CDW.com," or any similar derivation.

-The Respondent has not been commonly known by the contested domain name, nor does the Respondent run any enterprise commonly known by the contested domain name.

-The Respondent has not been commonly known by any name whose initials may form "CDW" or "WWWCDW" as an acronym.

-The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Respondent’s only use appears to be using <wwwcdw.com> to divert traffic to referral sites. The Respondent appears to be attempting to profit from referral fees for the visitors misdirected from the disputed domain name.

-The Respondent’s diversion of Internet traffic for its own benefit demonstrates that the Respondent intentionally registered a domain name incorporating CDW’s world-famous marks in bad faith. The Respondent has no rights to or affiliation with CDW or "CDW.com". The only reasonable inference is that the Respondent chose to register <wwwcdw.com> in order to exploit the Complainant’s marks and goodwill, and to divert Internet traffic to a web site paying referral fees.

-The Respondent has entered into a referral fee arrangement that provides a remuneration based on each visitor who is sent to the destination site. Arrangements such as this one are evidence of bad faith under the UDRP.

-The Respondent’s bad faith is evidenced by a complete failure to reply to the cease and desist letters sent by CDW.

-The inaccurate and incomplete contact data provided in the registration information for <wwwcdw.com> further demonstrate the Respondent's bad faith intentions.

B. Respondent

The Respondent failed to provide a response to the Complainant's allegations.

 

6. Discussion and Findings

As the Respondent failed to provide a response to the Complainant's allegations and, in the absence of any exceptional circumstances, the Panel, in accordance with Rule 5 (e), will decide the dispute based on the complaint.

In accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that: (i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent's domain name has been registered and is being used in bad faith.

(i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights

The Complainant's demonstrated rights in the trademark "CDW" are well proven. It holds numerous US and Canadian trademarks using the letters CDW registered as early as June 25, 1991, and August 27, 2001, respectively - well before the Respondent registered the disputed domain name.

The disputed domain name <wwwcdw.com> is made up of a simple combination of the letters "www" and the Complainant's trademark.

Since the commencement of domain name dispute resolution many cases have considered the effect of linking a trademark with "www" without the separating "dot". In fact, the ICANN domain name index records almost 100 similar cases. All agree that there is confusing similarity with the trademark component of the domain name because the letters "www" serve no distinguishing capacity other than to imply a linking to the World Wide Web. Also, there is broad agreement in those cases that most Internet users would see the disputed domain name as an indication that it was the mistyped domain name of the Complainant's trademark as utilized on the Web. These cases are variously referred to as typo-squatting or typo-piracy. See InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069, Edmunds.com, Inc. v. WWWEDMUNDS.com, WIPO Case No. D2001-0937, Reuters Limited v. Global Net 2000, WIPO Case No. D2000-0441, World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 and Prada S.A. v. Domains For Sale Inc., WIPO Case No. D2002-0512.

Consistent with previous decisions, the Panel agrees that the addition of the letters "www" does not alter the basic meaning of the disputed domain name and, therefore, finds that the Respondent's domain name is confusingly similar to the Complainant's trademark.

(ii) the Respondent has no rights or legitimate interests in respect of the domain name

ICANN's Uniform Domain Name Dispute Resolution Policy Rule 4 (c) sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. The ways include, but are not limited to:

(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 an 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 a legitimate non-commercial 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".

The Respondent has not provided any information demonstrating its rights or legitimate interests in the disputed domain name.

Based on the information before the Panel it seems unlikely that any of the above ways of demonstrating rights to or legitimate interests in the disputed domain name could possibly be maintained by the Respondent. There is no evidence of using the domain name with a bona fide offering of goods and services. To the contrary the Respondent initially appears to have registered the domain name to intentionally redirected potential CDW customers to other sites and to gain referral fees. However, it is noted that more recently the site has been altered to resolve to the Complainant's site. Whether or not this is a permanent arrangement is not known.

Also, there is no evidence before the Panel that indicates that the Respondent is commonly known by the domain name or that there has been legitimate non-commercial or fair use of the domain name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) the Respondent's domain name has been registered and is being used in bad faith

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4 (b) of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The circumstances of paragraph 4 (b) involve possible bad faith motives of: (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its immediately trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users to a website for commercial gain by creating confusion with the Complainant's trademark.

In this case the fourth of the above motives is apparent immediately. The Respondent's domain name initially resolved to sites of the Complainant's competitors and at the same time arranged for the user to be redirected to other intermediary Internet addresses in order to generate revenue through referral fees.

The fact that the disputed domain name no longer redirects mistyped domain names to other sites (and in fact now resolves directly to the Complainant's site) raises the question of whether a finding of bad faith can still be maintained. As mentioned earlier, the Panel is not limited to just the paragraph 4 (b) circumstances to determine whether the domain name was registered and used in bad faith.

In the Panel's view the factors supporting registration and use in bad faith by the Respondent are:

-Given the distinctiveness and reputation of the Complainant's trademark, the fact that it has no specific meaning and the lack of any information on which to assert that the Respondent came up with the domain name independently there is no obvious explanation other than the registration was made in bad faith with the intent to generate revenue by redirecting mistyped domain names to other sites. Similar conclusions about opportunistic bad faith registrations are found in a number of decisions, such as, Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, Nintendo of America Inc v. Pokemon, WIPO Case No. D2000-1230, Neuberger Berman Inc v. Alfred Jacobson, WIPO Case No. D2000-0323 and Telstra Corporation Ltd. v. Brett Micallef, WIPO Case No. D2000-0919.

-The Respondent's current passive holding of the domain name, in combination with having no legitimate rights or interests in the domain name and the likelihood of being aware of the CDW reputation and trademark, can be interpreted as bad faith use for the purposes of paragraph 4 (a) (iii). Previous decisions support this approach: see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.

-The Respondent has taken deliberate steps to conceal its true identity and to prevent communication and such action is evidence of bad faith. Previous decisions support this approach: see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Nintendo of America Inc. v. Berric Lipson, WIPO Case No. D2000-1121 and Hunton & Williams v. American Distribution Systems Inc., WIPO Case No. D2000-0501.

In view of the evidence provided and the precedent found in similar cases the Panel finds that the disputed domain name has been registered and is being used in bad faith.

 

7. Decision

In accordance with the Policy, Rules and prior decisions, the Panel has decided that the disputed domain name is confusingly similar to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent's domain name has been registered and is being used in bad faith. Accordingly, the Panel requires the Registrar to transfer the disputed domain name <wwwcdw.com> to the Complainant.

 


 

Ross Wilson
Sole Panelist

Dated: August 29, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0564.html

 

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