CDW Computer Centers, Inc. v. The Joy Company
Claim Number: FA0206000114463
Complainant is CDW Computer Centers, Inc., Vernon Hills, IL (“Complainant”), represented by James F. Gossett. Respondent is The Joy Company, Los Alamitos, CO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cdw.us>, registered with Namescout.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 4, 2002; the Forum received a hard copy of the Complaint on June 5, 2002.
On June 7, 2002, Namescout.com confirmed by e-mail to the Forum that the domain name <cdw.us> is registered with Namescout.com and that Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, Rules, Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent’s <cdw.us> domain name is identical to Complainant’s registered CDW mark.
2. Respondent has no rights or legitimate interests in the <cdw.us> domain name.
3. Respondent registered the <cdw.us> domain name in bad faith or is using the domain name <cdw.us> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns service mark Registration Number 1,649,113 for CDW as listed on the Principal Register of the United States Patent and Trademark Office (“USPTO”). Complainant has used its CDW mark in commerce since October 1, 1985 and was issued its registration with the USPTO on June 25, 1991. Complainant also owns several USPTO registrations for stylized variations of its CDW mark (e.g., 1,741,908 and 2,325,742).
Complainant holds the registration of as many as seventy domain names of which its CDW mark is the dominant feature. Among Complainant’s registered domain names is its primary website, <cdw.com>, which in 2001 alone generated more than $615.3 million in sales. Complainant is a $4 billion company with over 3,000 employees and is a world leader in providing retail and wholesale store and outlet services, as well as mail order services related to computer software and hardware.
Respondent registered <cdw.us> on April 24, 2002 and has yet to develop a stated purpose or website in conjunction with the domain name. Complainant’s investigation failed to reveal any trademark or service mark registrations or applications under Respondent’s name. Respondent is not a licensed or authorized agent of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has established rights in the CDW mark through registration on the Principal Register of the USPTO and continuous use of the mark since 1985.
Respondent’s <cdw.us> domain name is identical to Complainant’s CDW mark. Respondent’s domain name incorporates Complainant’s mark in its entirety and deviates only by the inconsequential addition of “.us” which is the United States country code top-level domain. Because the use of a top-level domain is required of domain name registrants, its inclusion does not defeat a claim of identicality or confusing similarity. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to submit a Response in this proceeding. As Complainant has searched and found no evidence of Respondent’s rights or legitimate interests in the domain name, and Respondent has not refuted Complainant’s assertions that Respondent has no rights or interests in the name, the Panel may presume that Respondent holds no such rights or interests in the <cdw.us> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Complainant’s investigation has revealed no trademark or service mark registrations or applications under Respondent’s name. Complainant’s significant presence and numerous trademark registrations in the United States, which is also Respondent’s domicile, allow a presumption that Respondent is not the owner of a trademark that is identical to the <cdw.us> domain name pursuant to Policy ¶ 4(c)(i). Furthermore, no evidence before the Panel suggests that Respondent is commonly known as “CDW” or by its registered <cdw.us> domain name pursuant to Policy ¶ 4(c)(iii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Respondent has yet to reveal a purpose for the disputed domain name and has not provided any evidence of demonstrable preparations to use <cdw.us> in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(iii). In light of Complainant’s allegation that Respondent does not intend to use the domain name for a bona fide offering of goods or services, the burden may be properly shifted to Respondent to prove such intent for legitimate future use. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with Respondent to demonstrate that it has rights or legitimate interests). Complainant has further asserted that Respondent intends to make no legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iv). Accordingly, the burden is again shifted to Respondent. Respondent has failed to support its registration of the domain name identical to Complainant’s mark with evidence of some right or legitimate interest in the name. As such, the Panel must conclude that Respondent has none. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the names had been established).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Paragraph 4(b) of the Policy provides examples of circumstances that, when present, will satisfy the “bad faith” requirement of Policy ¶ 4(a)(iii). Policy ¶ 4(b) states, however, that the enumerated examples are provided “without limitation.” Thus, the Panel may look to the totality of circumstances surrounding the registration and use of the disputed domain name in determining whether such registration or use was done in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
In this case, Complainant has argued that its business and CDW mark are widely recognized and that the company has a substantial presence on the Internet. Complainant asserts that, given the fame and notoriety of its mark, Respondent must have registered the identical domain name in an opportunistic attempt to trade on Complainant’s valuable goodwill. Complainant also asserts that any future use of the domain name will inevitably cause confusion as to the source or sponsorship of the attached website, in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant holds as many as seventy domain names and at least eight Principal Register trademark registrations incorporating CDW. Complainant has proven that it is an established and well-recognized merchant on the Internet. In light of Complainant’s assertion that Respondent was aware of Complainant’s rights in the CDW mark and Respondent’s failure to rebut the claim or provide evidence of its own rights or interests in the domain name, the Panel finds that Respondent registered <cdw.us> in an opportunistic attempt to trade on Complainant’s goodwill. This showing fulfills the bad faith requirement of Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the confusingly similar domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”).
Further, the Panel finds strong evidence that any future use of the domain name by Respondent will cause confusion among Internet users as to the source or sponsorship of the attached website. This meets the definition of bad faith pursuant to Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the [UDRP] Policy”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Dispute Resolution Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <cdw.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 25, 2002.
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