WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CDW Computer Centers, Inc. v. Swarthmore Associates LLC
Case No. DBIZ2002-00136
1. The Parties
The Complainant in this administrative proceeding is CDW Computer Centers, Inc. ("CDW"), an Illinois corporation located in Vernon Hills, Illinois, United States of America. The Respondent is Swarthmore Associates, LLC ("Swarthmore"), a California Limited Liability Company located in Pacific Palisades, California, United States of America.
2. The Domain Name and Registrar
The domain name involved in this proceeding is <cdw.biz>.
The Registrar with whom the domain name is registered is PSI-Japan, Inc. of Tokyo, Japan.
3. Procedural History
On April 26, 2002, CDW’s Complaint was filed by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") for decision in accordance with the Start-Up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "STOP"), the rules for Start-Up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-Up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules"). See STOP Rules, Paragraph 3(b)(c). The Center received a hardcopy of CDW’s Complaint on April 29, 2002.
It appears that the Complaint was filed in accordance with the requirements of the STOP Rules and WIPO Supplemental STOP Rules, that payment was properly made, and that CDW has complied with the formal filing requirements.
On May 9, 2002, the Center sent to Swarthmore its notification of the commencement of this proceeding, and gave Swarthmore until May 29, 2002, to file its Response. On May 24, 2002, Swarthmore’s Administrative Contact sent an e-mail to the Center stating that "our clients have obtained new counsel to represent them in this matter, and we will forward this information to them." After reviewing the case file, the Panel deems that Swarthmore was properly notified in accordance with the STOP Rules and WIPO Supplemental STOP Rules.
However, Swarthmore did not file a timely Response, and on May 31, 2002, the Center sent a Notification of Respondent Default to Swarthmore. On June 1, 2002, counsel for Swarthmore sent an e-mail to the Center stating that "I have received the Notification of Default regarding the complaint filed by CDW Computer in connection with the domain name cdw.biz. This office is representing the Respondent and due to our inadvertence failed to timely send out the response. We request that the attached response be considered pursuant to STOP Rules. Thank you."
In reply, on June 3, 2002, the Center sent an e-mail to Swarthmore’s counsel stating "we acknowledge receipt of your response by e-mail on June 1, 2002. As the Notification of Respondent Default had already been issued, the response is going to be considered a late submission. We are now in the process of appointing the Administrative Panel and it will entirely be up to him/her to decide whether or not to accept your response. However, we would still expect you to send us one signed original and three copies of it as required by rules. Thanks."
Although Respondent concedes that its response to CDW’s Complaint was not timely filed, the Panel in its discretion has decided to consider Respondent’s papers.
On June 10, 2002, the Center contacted the undersigned to solicit interest in being the Sole Panelist who would decide this matter. After clearing potential conflicts of interest, the undersigned notified the Center on June 11, 2002, of the ability and availability to serve as the Sole Panelist for this matter. Also on June 11, 2002, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the Administrative Panel for this STOP proceeding was probably constituted.
On June 12, 2002, the Center forwarded to the undersigned the case file for this proceeding. On that same day, a Notification of Appointment of Administrative Panel and Projected Decision Date were sent by the Center to the parties. The Center notified the parties that the undersigned would be the Sole Panelist to decide this matter.
4. Factual Background
Complainant, CDW, states it has used in Commerce since October 1, 1985, the mark CDW, which is the subject of a United States Federal Trademark Registration issued on the Principal Register since 1991. The services in connection with which the CDW mark is used by Complainant, and for which the mark is registered, are "retail and wholesale store services, retail and wholesale outlet services and mail order services in the field of computer software, hardware and related peripheral devices." A copy of the United States Federal Registration for the CDW mark was attached to the Complaint.
Complainant CDW also claims ownership of other service marks registered in the United States comprising the letter string CDW or of which CDW is a dominant feature. Copies of the relevant trademark registrations, all issued in connection with retail and wholesale store services and mail order services relating to computer software, hardware and peripheral devices, were attached to the Complaint.
Complainant CDW also claims ownership of over 70 domain names of which CDW is the dominant feature. Complainant claims that its use of the domain name <cdw.com> generated in excess of $615 million in direct unassisted web sales in the year 2001.
Complainant claims it is a world leader in providing retail and wholesale store and outlet services, as well as mail order services, related to computer hardware, software and related peripheral devices. Complainant alleges it has spent substantial sums of money developing, advertising and promoting its services under its CDW marks. Complainant claims extensive and widespread goodwill in connection with its CDW marks.
Complainant asserts that the domain name <cdw.biz> is identical to its CDW mark. Complainant claims that CDW is the distinctive feature of the domain name "to which .biz adds little or nothing."
Complainant asserts that Respondent is neither the owner nor the beneficiary of any trademark or service mark that is identical or at all similar to the <cdw.biz> domain name. Complainant further asserts that Respondent has no rights or legitimate interests in respect of the domain name, in that Complainant has not licensed or otherwise permitted Respondent to use either the domain name or the mark, and Respondent has no connection with the name CDW.
Complainant contends that there is no evidence showing that, before any notice to Respondent of the dispute, Respondent made any use of, or demonstrable preparations to use, the <cdw.biz> domain name, a name corresponding to this domain name or the mark in connection with a bona fide offering of goods or services. Respondent, it is further alleged, is not commonly known by the domain name or the name CDW.
Complainant further contends that the domain name should be considered as having been registered and used in bad faith by Respondent because the domain name is used or intended to be used, solely to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s service mark CDW. Complainant further contends that Respondent has made illegitimate use of the domain name, and has chosen a domain name purely to create an association with Complainant or its services or with the intent to misleadingly divert Internet users. Complainant claims that Respondent must have known of the existence of Complainant prior to registering the domain name <cdw.biz>.
Complainant alleges that, during the week of April 21, 2002, its attorneys notified the Administrative Contact with respect to the <cdw.biz> domain name concerning Complainant’s rights in the CDW marks and domain name. Respondent, it is alleged, has taken no action in order to release or transfer the <cdw.biz> domain name to "its legitimate owners." This, in itself, says Complainant CDW, amounts to bad faith use of the domain name by Respondent.
Respondent does not dispute Complainant’s rights in its CDW marks. Respondent also acknowledges that the <cdw.biz> domain name is identical to the CDW trademark used by Complainant to sell computer products.
Respondent claims that, hypothetically, it has rights and legitimate interests in a domain name when it seeks to develop a bona fide business use for the domain name. However, Respondent does not explain, much less show, what that purported bona fide business was or is.
Respondent asserts that it has not been possible to launch a website under the <cdw.biz> domain name because the domain name Registrar cannot redirect the settings (by which the Panel presumes Respondent means Internet Protocol settings) during the pendency of this STOP proceeding. Respondent claims that it has not used, and does not intend to use, the <cdw.biz> domain name for the sale of computer products or in a manner that would infringe upon Complainant’s trademarks. Rather, says Respondent, "the website address will be used in a completely proper, legitimate manner." However, as noted, Respondent does not assert or prove what this "completely proper, legitimate manner" was or is intended to be.
Respondent claims that the filing of this STOP proceeding has prevented Respondent from transferring or using the domain name, or launching any website. There is, according to Respondent, therefore currently no use of the <cdw.biz> domain name of any kind. By this, Respondent claims that there is no proof of Respondent’s bad faith use of the contested domain name.
Further, says Respondent, its current lack of use of the contested domain name is not indicative of bad faith because this STOP proceeding was filed before there ever was an opportunity to launch a website under the <cdw.biz> domain name. Respondent claims it is entitled to a reasonable amount of time to develop the domain.
Respondent asserts that Complainant has failed to submit any documentary or other evidence establishing bad faith by Respondent, because there is none. Respondent finally asserts that Complainant has failed to sustain its burden to prove by a preponderance of credible, relevant, admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name in question, and that the contested domain name was registered or used in bad faith.
5. Parties’ Contentions
CDW asserts that (1) the contested <cdw.biz> domain name is identical to a service mark in which Complainant has rights; (2) Respondent Swarthmore has no rights or legitimate interests in respect of the domain name; and (3) the contested domain name was registered or is being used in bad faith.
Respondent, Swarthmore, contends that while the <cdw.biz> domain name is identical to a service mark in which Complainant has rights, Complainant has not proven the absence of rights or legitimate interests with respect to Respondent’s registration or use of the domain name; and, further, that there is no proof that the contested domain name was registered or is being used in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the STOP instructs this panel to "decide the 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 STOP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred to the Complainant:
(i) the contested domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered or is being used in bad faith.
In an administrative proceeding pursuant to the STOP, STOP Rules and WIPO Supplemental STOP Rules, the Complainant must prove that each of these three elements is present. STOP, Paragraph 4(a).
The STOP provides a list of particular circumstances, without limitation, that if found by the Panel to be present, shall be evidence that the registration or use of the domain name is in bad faith. STOP, Paragraph 4(b). On the other hand, the STOP provides for a list of circumstances, without limitation, if found by the Panel to be proved based upon its evaluation of all the evidence presented, to demonstrate the Respondent’s rights or legitimate interests with respect to the domain name. STOP, Paragraph 4(c).
The unique provisions of the STOP Policy, as opposed to the more familiarly known Uniform Dispute Resolution Policy ("UDRP") adopted by ICANN in October 1999, provides for special circumstances with respect to Complainant’s CDW’s satisfying its obligations of proof in this proceeding. The Panel’s decision in Gene Logic Inc. v. Cho Kyo Bock, Claim No. FA0112000103042 (NAF March 4, 2002), is particularly apt here:
"Under the STOP Policy … in anticipation of possible contests over the use of a domain [name] that potentially infringed an existing trademark, the framers of the STOP Policy provided an elaborate procedure whereby the owners of registered marks could file an advance "IP claim" with NeuLevel or other registrars indicating their trademark claim and details concerning existing intellectual property rights, which IP Claim filing is later used as the basis for a temporary hold on any new .biz registration before accepting it, during the STOP period created by the Rules. Where such an IP claim was filed, the Registrar sends an email to any new Applicant for the matching names, specifically informing him or her that an existing IP Claim is on file and providing details as to the exact mark, the owner, and a description of the goods and services covered by the claimed mark, and complete contact information for the owner so that the .biz applicant could be under no illusions about the likelihood of a contest over the registration of the mark or who to contact if there were any question in his or her mind. If the .biz applicant nonetheless decides to go forward with the application, he or she has to do so under the STOP Rules after acknowledging this potential conflict, in spite of the potential for litigation, and with complete knowledge of the exact mark and the precise reasons there may be a conflict between the domain and the claimed mark… This Notice may, in the proper case, almost preclude any possibility of registration in good faith of a domain name under facts and circumstances like the instant case."
Thus, in the instant case [, Respondent] … [selected the contested] … domain [name] … with full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark . . . of [another]. For some reason neither the Complainant nor the Respondent refers or alludes to this very critical factor in this case. Significantly also, Respondent does not complain that he did not receive this warning notice, or that it was defective in some manner. The Panel therefore must assume this process was carried out, and that Respondent was fully aware of the nature and existence of Complainant’s rights under the IP Claim procedure but elected to proceed anyway. This is hardly evidence of good faith registration of the domain name in question on these facts.
The Domain Name is Identical to a Trademark in Which Complainant has Rights
Complainant CDW asserts, and Respondent Swarthmore readily concedes, that the <cdw.biz> domain name is identical to the CDW trademark in which Complainant has rights. Therefore, Paragraph 4(a)(i) of the STOP has been satisfied.
Respondent has Not Shown that it has Rights or Legitimate Interests in Respect of the Contested Domain Name.
The decision of the Panel in Danzas Holding AG et al v. Euro Plus SLU, WIPO Case No. DBIZ2002-00003 (April 8, 2002) is particularly relevant here:
"The Respondent claims that it had the intention of using the contested domain name for some unspecified type of electronic marketing and commerce, but no proof has been furnished in support of this. The Panel notes that the name is neither registered nor used by Respondent as a trademark or as any other type of business identifier. Further, the fact that the domain name appeared vacant when it was registered cannot be regarded as proof or indication of a legitimate interest."
"The Respondents has not [sic] put forward any evidence that they have any legitimate interest, and accordingly the prerequisites of Paragraph 4(a)(ii) of STOP are met."
Similarly, in the instant proceeding, Respondent has not come forward with any argument or evidence showing that it has rights or legitimate interests with respect to the registration or use of the contested <cdw.biz> domain name. Thus, Paragraph 4 (a)(ii) of the STOP has been satisfied.
Respondent has Registered the Contested Domain Name in Bad Faith.
There is no evidence of record showing that Respondent Swarthmore attempted to sell, rent, or otherwise transfer the contested domain name to Complainant for a monetary value in excess of its out-of-pocket costs related to the domain name. There is no evidence of record that the parties are competitors, nor, as Respondent repeatedly professes, has there been an opportunity for Swarthmore to use the <cdw.biz> domain name in connection with an active website. Therefore, the bad faith circumstances of Paragraphs 4(b)(i), (iii), and (iv) of the STOP do not apply.
However, the circumstances discussed in STOP Paragraph 4(b)(ii), combined with the unique applicability of the IP claim and STOP Procedures in connection with .BIZ domain names as explained in the Gene Logic decision quoted above, provide ample circumstantial evidence that Respondent Swarthmore registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. By virtue of the IP Claim process, Respondent Swarthmore was readily aware that a third party had claimed competing trademark rights with respect to the <cdw.biz> domain name. Respondent Swarthmore decided to proceed ahead with its .BIZ domain name registration, notwithstanding the notification of Complainant CDW’s rights. Moreover, Complainant CDW’s counsel attempted to resolve this matter with Respondent Swarthmore by telephone, yet the warning by CDW’s counsel went unheeded.
Under the circumstances, particularly since Respondent Swarthmore has not come forward with any legitimate reason for its registration of the contested domain name, the Panel finds that Respondent Swarthmore registered the <cdw.biz> domain name in bad faith. Thus, Paragraph 4(a)(iii) of the STOP has been satisfied.
The Panel finds that the contested <cdw.biz> domain name is identical to the CDW mark in which Complainant CDW has rights. Respondent has not shown that it has rights or legitimate interests in the contested domain name. The domain name was registered by Respondent Swarthmore in bad faith.
Pursuant to Paragraph 4(i) of the STOP and Paragraph 15 of the STOP Rules, the Panel directs that the TRANSFER of the <cdw.biz> domain name to Complainant, CDW Computer Centers, Inc.
Dated: June 26, 2002