CDW LLC v. Yu Hao
Claim Number: FA1805001785624
Complainant is CDW LLC (“Complainant”), represented by Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Yu Hao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <1cdw.xyz> and <1cdw.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited, respectively.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2018; the Forum received payment on May 8, 2018. The Complaint was submitted in both Chinese and English.
On May 10, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <1cdw.xyz> and <1cdw.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited have verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and HiChina Zhicheng Technology Limited registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 17, 2018, the Forum served the Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of June 6, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@1cdw.com, postmaster@1cdw.xyz. Also on May 17, 2018, the English and Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, CDW LLC, is a wholly owned subsidiary of the publicly traded company CDW Corporation. CDW Corporation, a fortune 500 company, is a leading multi-brand technology solutions provider for business, government, education, and healthcare organizations in the United States, Canada, and the United Kingdom. Complainant owns numerous trademark registrations for the CDW mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,649,113 registered June 25, 1991). Respondent’s disputed domain names are confusingly similar to Complainant’s mark as the only difference is in the addition of the number “1” and the generic top-level domains (“gTLD”) “.xyz” and “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s CDW mark and is not commonly known by the domain names based on the WHOIS information of record. Additionally, Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain names resolve to error pages that contain no content.
Respondent registered and used the disputed domain name in bad faith as Respondent has engaged in a pattern of registering domain names that are confusingly similar to third parties’ registered trademarks. Respondent’s bad faith is further evidenced through passively holding the disputed domain names, and through having actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is CDW LLC, of Vernon Hills, Illinois, USA. Complainant is the owner of numerous domestic and international registrations for the mark CDW, and variations thereon, both alone and in conjunction with designs, constituting the CDW family of marks. Complainant has used its mark continuously since at least as early as 1985 in connection with its provision of multi-brand technology solutions for use in business, government, education, and healthcare organizations.
Respondent is Yu Hao, of Beijing, China. Respondent’s registrar’s address is also listed as Beijing, China. The Panel notes the <1cdw.com> and <1cdw.xyz> domain names were simultaneously registered on or about February 20, 2018.
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."
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 and is being used in bad faith.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Preliminary Issue: Language of Proceeding
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Complainant contends Respondent has been a part of prior UDRP proceedings in which it was found to be conversant in English, and that the current proceeding should not be any different. The Panel also notes that Respondent communicated with the Forum via email, labeled as “Other Correspondence,” in which Respondent wrote in the English language. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been provided to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel finds that the proceeding should be in English.
Complainant claims rights in the CDW mark through registrations with the USPTO (e.g., Reg. No. 1,649,113 registered June 25, 1991). Registration of a mark with the USPTO is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds Complainant has demonstrated rights to the CDW mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <1cdw.com> and <1cdw.xyz> domain names are confusingly similar to its mark as the only difference is in the addition of the number “1” and the gTLDs “.xyz” and “.com.” Such additions to a domain name do not typically distinguish the domain name from a finding of confusing similarity per Policy ¶ 4(a)(i). See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant here has set forth the requisite prima facie case.
Complainant argues Respondent has no rights or legitimate interests in the <1cdw.com> and <1cdw.xyz> domain names as Respondent is not authorized to use Complainant’s CDW mark and there is no evidence in the WHOIS information of record to show Respondent is commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Complainant provides a copy of the relevant WHOIS information that lists registrant as “Yu Hao,” and previously listed the registrant as “Nexperian Holding Limited.” The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent does not use the <1cdw.com> and <1cdw.xyz> domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use as the domain names resolve to error pages. Inactively holding a domain name is not typically considered a bona fide offering of goods or services, or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Here, Complainant provides screenshots of the resolving webpages, which displays the message “ERROR. The requested URL could not be retrieved.” The Panel here finds that Respondent’s use of the disputed domain name is not in accordance with Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues Respondent registered and used the <1cdw.com> and <1cdw.xyz> domain names in bad faith as Respondent has engaged in a pattern of bad faith registration. A pattern of bad faith registration may demonstrate a respondent registered and used a domain name in bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant provides a list of UDRP cases in the Complaint where Respondent was ordered to transfer domain names. The Panel here finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Next, Complainant contends Respondent inactively holds the dispute domain names in bad faith. Inactively holding a domain name can demonstrate bad faith per Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides screenshots of the resolving webpages, which displays the message “ERROR. The requested URL could not be retrieved.” The Panel here finds that Respondent’s inactive holding of the disputed domain names demonstrates bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <1cdw.com> and <1cdw.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 26, 2018
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