DLJ Long Term Investment Corporation v. Highland International Investment dba Highlands International Investment Ltd et al
Claim Number: FA0112000103064
Complainant is DLJ Long Term Investment Corporation, Chicago, IL (“Complainant”) represented by James E. Griffith, of McDermott, Will & Emery. Respondent is Highland International Investment dba Highlands International Investment Ltd., et. al., Coral Gables, FL (“Respondent”).
The domain names at issue are <e-netexchange.com>, <enetexchange.com>, <enetexchange.net>, <enetexchange.org>, <enetexchanges.com>, <epershing.net>,
<epershing.org>, <i-netexchange.com>, <i-netexchange.net>,
<i-netexchange.org>, <i-partner.net>, <inetexchanges.com> and <netexchanges.org> and are registered with Network Solutions, Inc..
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 December 17, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.
On December 18, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <e-netexchange.com>, <enetexchange.com>, <enetexchange.net>,
<enetexchange.org>, <enetexchanges.com>, <epershing.net>, <epershing.org>,
<i-netexchange.com>, <i-netexchange.net>, <i-netexchange.org>,
<i-partner.net>, <inetexchanges.com> and <netexchanges.org> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
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 January 29, 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 for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” 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 makes the following allegations:
1. Each of the domain names is confusingly similar to the trademarks used by Complainant’s licensees in connection with promotion of goods and services in the financial field.
2. Respondent has not and is not currently using the domain names with a bona fide offering of goods and services. Respondent is not commonly known by any of the domain names. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain names. Therefore, Respondent does not have a legitimate interest in respect of the domain names.
3. Respondent has linked the domain names to a website which offers to transfer the domain names’ registrations and other domain names for consideration. Respondent has, therefore, engaged in a pattern of conduct with intent to prevent Complainant from reflecting its established trademark in corresponding domain names. Respondent’s passive holding with an offer to sell is also evidence of Respondent’s registration of and offer to sell the domain names in bad faith.
B. Respondent did not file a Response in this proceeding.
Complainant has established in this proceeding that Pershing is a division of one of the licensees of Complainant. Pershing offers a wide variety of securities trading, clearing, information management, financial products and services. Founded in 1939, Pershing has been one of the leading firms in its field for decades. The trademark PERSHING was registered May 18, 1999, under Registration number 2,245,524.
Complainant also uses, through its licensees, a family of marks that include NETEXCHANGE. The NETEXCHANGE marks are used in connection with investment-related websites, online securities brokerage and computer software for securities brokerage. Complainant first used NETEXCHANGE in commerce December 1996. After filing for registration on May 28, 1996, Complainant was granted the federal trademark NETEXCHANGE July 25, 2000, Registration number 2,369,648.
Complainant also uses, through its licensees, the registered trademark IPARTNER in connection with computer software used in the financial securities field. IPARTNER was registered July 11, 2000, Registration number 2,366,003.
Complainant asserts that Respondent does business as Highlands International Investment, Ltd., DomainCollection.com, and Newcastle. Highland International Investment, Ltd. registered: <enetexchange.com> and <i-netexchange.com> on July 7, 2000, <i-partner.net> on July 11, 2000, <enetexchange.org>, <epershing.net>, and <epershing.org> on September 20, 2000, and <i-netexchange.org> on September 21, 2000. While Newcastle registered; <e-netexchange.com>, <enetexchange.com>, <enetexchange.net>, <enetexchanges.com>, <i-netexchange.net>, and <inetexchanges.com> on April 27, 2001. The address listed for the domain names registered by Highland International Investment, Ltd. is the same as the address for Newcastle’s contact. The e-mail address listed for all of the domain names is email@example.com. The phone number for each company is the same. Therefore, absent any evidence to the contrary, the Panel will treat Highland International Investment, Ltd. and Newcastle as the same entity for purposes of this Decision.
Respondent linked these domain names to its website <domaincollection.com>, which offers the domain names for sale.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences 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 and is being used in bad faith.
Complainant claims that Newcastle and Highland International Investment, Ltd. are the same company in this case. The two companies list the same address, e-mail and phone number under its contact information on its registration for the domain names in dispute. Since Respondent has not asserted otherwise, for purposes of this Decision the Panel will consider the two companies as the same entity. See Encyclopaedia Britannica, Inc. v. Zuccarini & Cupcake Patrol, D2000-0330 (WIPO June 7, 2000) (finding that the “joinder of two Respondents in this proceeding is proper because the registrant of the domain names in dispute is the same person (where both Respondents share identical postal addresses and the same administrative and billing contact information)”).
Further, Complainant has established in this proceeding that it either held a federal trademark right or had common law rights to PERSHING, NETEXCHANGE, and IPARTNER when Respondent registered the domain names in dispute. Complainant further had registered PERSHING and IPARTNER as federal trademarks before Respondent registered the domain names that incorporate in their entirety Complainant’s trademarks. In addition, Complainant has used NETEXCHANGE as a mark since December, 1996 and was granted its registration on July 25, 2000. Respondent registered <e-netexchange.com> and <i-netexchange.com> on July 7, 2000, eighteen days prior to the registration of Complainant’s trademark of NETEXCHANGE. However, since Complainant had used NETEXCHANGE in commerce since December, 1996, Complainant’s rights in NETEXCHANGE predate Respondent’s registration of
<e-netexchange.com> and <i-netexchange.com>. Complainant has established its rights in all three marks before Respondent registered the domain names in dispute. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark).
The disputed domain names are confusingly similar to Complainant’s marks since each domain name in question incorporates one of Complainant’s three trademarks. The only difference between the domain names and the trademarks is an addition of a letter(s) and/or hyphen, which does not create a distinct domain name such as would affect the confusing similarity necessary to satisfy Policy ¶ 4(a)(i). See Crédit Lyonnais v. Association Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (WIPO Dec. 15, 2000) (finding that Respondent’s domain name "eebay.com" is confusingly similar to the Complainant’s registered trademark); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights to and legitimate interests in the marks that are contained in their entirety within the disputed domain names at issue here. Respondent did not respond to the Complaint and under such circumstances, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent has offered the domain names for sale to the public on its website <domaincollection.com> and has presented no evidence it has used the disputed domain names in connection with any bona fide offering of goods and services or that it has has made any legitimate noncommercial or fair use of the domain names. Respondent failed to satisfy either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
No evidence suggests that Respondent is commonly known by any of the domain names in dispute, therefore, Respondent cannot satisfy Policy ¶ 4 (a)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Registration and use of a domain name in bad faith can be inferred from the evidence. Although, the Respondent’s website does not specify the cost to obtain the domain names in dispute, absence a Response to the contrary, the Panel concludes that Respondent has offered to transfer the domain name registrations for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain names. This permits a finding that Respondent is therefore acting in bad faith as outlined in Policy ¶ 4 (b)(i). See Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that “the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that…. Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration"); see also American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Respondent has offered no evidence to show that if it has used the domain names in commerce other than offering the domain names for sale. Absence a Response to the contrary, the Panel finds that since Respondent has attempted to sell the thirteen domain names, Respondent has engaged in a pattern of registering domain names in order to prevent Complainant from reflecting Complainant’s marks in corresponding domain names and that Respondent has acted in bad faith based on Policy ¶ 4(b)(ii). See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites).
Therefore, the Panel finds that Policy ¶ 4 (a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain names: <enetexchange.com>, <enetexchange.com>, <enetexchange.net>, <enetexchange.org>, <enetexchanges.com>, <epershing.net>, <epershing.org>, <i-netexchange.com>, <i-netexchange.net>, <i-netexchange.org>, <i-partner.net>, <inetexchanges.com> and
<netexchanges.org> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 12, 2002.
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