DECISION

 

CDW LLC v. gong / eric mikovich

Claim Number: FA2406002103235

PARTIES

Complainant is CDW LLC ("Complainant"), represented by Kelley S. Gordon of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is gong / eric mikovich ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <joincdw.team>, registered with NameSilo, LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 21, 2024; Forum received payment on June 21, 2024.

 

On June 22, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <joincdw.team> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement 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 June 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2024 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@joincdw.team. Also on June 28, 2024, the 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On July 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a wholly owned subsidiary of the publicly traded company CDW Corporation. CDW Corporation, a Fortune 500 company and member of the S&P 500 Index, is a leading multi-brand technology solutions provider for business, government, education, finance, and healthcare organizations with locations worldwide. CDW Corporation employs more than 15,000 people and provides goods and services to over 250,000 customers. For year ending 2023, CDW Corporation generated net sales of approximately 21 billion dollars.

 

CDW owns numerous trademark registrations and applications throughout the world for CDW and CDW & design, including in the United States, the European Union, and Canada.

 

Respondent's <joincdw.team> domain name wholly incorporates the CDW mark, with the mere addition of the generic term "join," and generic top-level domain extension ".team." The term "join" does not distinguish the domain name from CDW's mark and Respondent's addition of the generic top level domain ".team" is insignificant. The additions of the term "join" and top-level domain ".team" only served to confuse consumers into thinking <joincdw.team> is related to, affiliated with, or endorsed by CDW.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. The CDW marks predate any rights Respondent could claim in <joincdw.team>, and Respondent is not commonly known as <joincdw.team>. Complainant has never licensed or authorized Respondent to use its CDW name or trademark in any way. Respondent has not used the at-issue domain name in connection with a bona fide offering of goods or services. Instead, Respondent uses the <joincdw.team> to redirect to <cdw.com> in order to make the email address contact@joincdw.team, that Respondent uses in a phishing scheme where Respondent passes off as one of Complainant's employees, to give credibility to Respondent's fraudulent use of <contact@joincdw.team> email.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent's bad faith is evidenced by its registration of <joincdw.team>, its attempt to pass itself off as CDW, and its use of "@joincdw.team" email address. The at-issue domain name wholly incorporates the CDW mark, negating any presumption of Respondent's legitimate intentions. Respondent has intentionally attempted to disrupt CDW's business. Respondent used <joincdw.team> to pass itself off as CDW and further attempted to acquire personal information from consumers to facilitate a phishing scam. Respondent's use of a domain name to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant constitutes bad faith. Policy¶ 4(b)(iv). Further, at the time of registration Respondent was aware Complainant's trademarks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights CDW.

 

Respondent is not affiliated with Complainant and is not authorized to use the CDW mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in CDW.

 

Respondent uses the at-issue domain name to redirect to Complainant's genuine website, host email, and facilitate fraud.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The at-issue domain is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has registered its CDW trademark with the USPTO as well as with other national registrars. Any one of Complainant's trademark registrations demonstrates Complainant's rights in a mark under the Policy. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

Respondent's <joincdw.team> domain name consists of Complainant's CDW trademark prefixed by the descriptive term "join" with all followed by the ".team" top-level domain name. The differences between Complainant's trademark and Respondent's at-issue domain name fail to distinguish the domain name from Complainant's mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <joincdw.team> domain name is confusingly similar to Complainant's CDW trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also, Bloomberg Finance L.P. v. Domain Administrator / Registry Services, LLC, FA2 2038314 (Forum July 26, 2023) ("The addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).").

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <joincdw.team> indicates that "gong eric mikovich" is the domain name's registrant and there is nothing in the record showing that Respondent is otherwise known by the <joincdw.team> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Additionally, Respondent uses the <joincdw.team> to pass itself off as Complainant via email hosted at <joincdw.team> and uses such email to defraud third parties into believing they are dealing with Complainant. Respondent may then further deceive such third parties into giving up personal and financial data or otherwise take advantage of the confusion it created and extract information or other consideration from such third parties. Respondent's use of the at-issue domain name to facilitate phishing is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for internet users personal information by offering a fake job posting on the resolving website).

 

Given the forgoing, Respondent lacks rights and lacks legitimate interest in <joincdw.team>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence that leads the Panel to find that Respondent acted in bad faith pursuant to the Policy.

 

First, by misappropriating Complainant's trademark to use in its domain name and the domain name's hosted email, Respondent passes itself off as Complainant. Respondent deliberately set out to register and use the at-issue domain name to pass itself off as Complainant to confound third-parties as to the sponsorship of Respondent's email so that Respondent might deceptively interrogate recipients who mistakenly believe, based on Respondent's bogus email, they are dealing with Complainant. Respondent's use of the at-issue domain name in this fashion disrupts Complainant's business and shows Respondent's bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the <abbuie.com> domain name to impersonate Complainant's CEO. Such use is undeniably disruptive to Complainant's business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)"); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). The fact that Respondent is engaging in email phishing, in itself, shows Respondent's bad faith registration and use of the at-issue domain name. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).

 

Moreover, Respondent had actual knowledge of Complainant's rights in CDW when it registered <joincdw.team> as a domain name. Respondent's prior knowledge of Complainant's trademark is evident from the mark's notoriety as well as from Respondent's posing as Complainant in an email phishing scheme and redirecting the domain name to Complainant's genuine website. Respondent's registration and use of the confusingly similar <joincdw.team> domain name with knowledge of Complainant's trademark rights in CDW shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <joincdw.team> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Paul M. DeCicco, Panelist

Dated: July 21, 2024