DLJ Long Term Investment Corporation v. Nucom Domain Name Brokers
Claim Number: FA0112000103127
The Complainant is DLJ Long Term Investment Corporation, Chicago, IL (“Complainant”) represented by James E. Griffith, of McDermott, Will & Emery. The Respondent is Nucom Domain Name Brokers, St. Helier (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <idlj.com>, registered with IHoldings.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., 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 18, 2001.
On December 18, 2001, IHoldings.com, Inc. confirmed by e-mail to the Forum that the domain name <idlj.com> is registered with IHoldings.com, Inc. and that the Respondent is the current registrant of the name. IHoldings.com, Inc. has verified that Respondent is bound by the IHoldings.com, Inc. 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, 2001 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on December 18, 2001.
On January 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace. Q.C. as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Complaint is based on the federally registered trademark DLJ and variations thereof (the “Complainant’s Marks”). A listing of Complainant’s federal registrations and applications incorporating “DLJ” or “DONALDSON, LUFKIN & JENRETTE,” for which “DLJ” is an abbreviation, was provided in evidence. Fifteen such marks are listed.
Since 1959, Complainant and its predecessors and licensees have adopted and continually used in commerce the mark DLJ in connection with the sale and offering of, inter alia, broker and dealer services; lending services; underwriting securities; investment banking; financial consulting; financial research; and other financial and management services.
Complainant uses, through its licensees, the famous DLJ mark in connection with a wide range of financial and computer-related goods and services bearing the DLJ mark.
As a result of DLJ’s widespread, long-time, continuous, and prominent use, the DLJ mark has acquired significant goodwill, wide public recognition, and fame as a means by which DLJ and its services are known to the public, and their source and origin are identified.
Respondent’s domain name, <idlj.com>, is nearly identical to and confusingly similar to the Complainant’s DLJ mark used by Complainant’s licensees in the financial services field.
Respondent’s domain name entirely incorporates Complainant’s famous DLJ mark. The only difference between the Domain Name and Complainant’s trademark is the addition of the generic prefix “i,” commonly used to denote “internet.” The addition of generic letters such as “e” or “i” to a distinctive trademark owned by another is of no significance to a determination of likelihood of confusion because the practical effect of confusing the public is still present. See Victoria’s Secret et al v. Decal FA 96539 (Nat. Arb. Forum Mar. 9, 2001) (“evictoriasecrets.com” confusingly similar to VICTORIA’S SECRET trademark despite the addition of the letter “e” and the movement of the letter “s” to the end of the mark).
By entirely incorporating Complainant’s DLJ mark in its <idlj.com> domain name, Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
Rights or Legitimate Interest in the Domain Name
Complainant sent Respondent a cease and desist letter, dated August 17, 2001, requesting that Respondent transfer its registration of the Domain Name to the Complainant. Complainant’s cease and desist letter, sent by certified mail, was returned unopened. According to the notation on the envelope, Respondent had “gone away” and delivery was therefore not possible.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. A print-out of <idlj.com> as of December 14, 2002, indicates that the domain name is for sale or lease.
Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization.
Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Respondent does not currently have a legitimate web site at the domain name <idlj.com>. Rather, Respondent is only using the web site to offer the Domain Name for sale or lease.
Respondent has not articulated any rights or legitimate interests in the Domain Name, and does not in fact have any such rights or legitimate interests.
By not accepting delivery of Complainant’s cease and desist letter, Respondent is either actively evading Complainant’s valid claims or has violated its registration agreement with its registrar. Paragraph 12 of the “DotRegistrar” registration agreement, reads:
“Should there be any changes in your Required or Personal Information as that information is specified in paragraphs 10 and 11, above, you must promptly notify DotRegistrar of those changes. Providing inaccurate or incomplete information, or failing to update information promptly, or failing to respond within fifteen (15) calendar days to inquiries by DotRegistrar concerning the accuracy of Required Information will constitute a material breach of this Agreement, and DotRegistrar may, in its discretion, reassign, cancel or revoke the registration of your domain name for such breach.”
Both evading Complainant’s claims and failing to update domain name identifying information are indicative of Respondent’s bad faith.
Although Respondent has not directly contacted Complainant in an effort to sell the Domain Name, Respondent is openly offering the Domain Name for sale or lease on the <idlj.com> web site.
This offer to sell the Domain Name constitutes an offer to transfer the domain name registration “for valuable consideration in excess of [Respondent’s] out-of-pocket costs directly related to the domain name” in violation of Paragraph 4(b)(i) of the Policy.
Respondent’s registration of the Domain Name is also a violation of Section 43(d)(1) of the United States Trademark Act, the Anticybersquatting Consumer Protection Act. 15 U.S.C. §1125(d) et seq.: “Passive holding coupled with an offer to sell is an act of bad faith.” Industry Forums Inter., Inc. v. Cambridge Capital Inv. Ltd. FA 96300 (Nat. Arb. Forum Jan. 22, 2001). Respondent’s registration of and offer to sell the Domain Names therefore constitutes “bad faith.”
Additionally, Respondent’s registration of the Domain Name is dilutive of the Complainant’s DLJ mark by making it more difficult for web users to locate the legitimate web sites of Complainant’s licensees. By eroding the source-identification function of Complainant’s DLJ mark in this way, Respondent’s registration of the Domain Name dilutes the distinctiveness of the DLJ mark.
The fact that the Respondent does not maintain an active web site connected to the Domain Name does not preclude the finding that Respondent registered the Domain Name in bad faith. See Armstrong Holdings Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (maintenance of active web sites not necessary for finding of bad faith registration); Telstra Corp. Ltd. v. Nuclear Marshmallows D2000-0003 (WIPO Feb. 18, 2000) (passive holding of domain name can amount to bad faith use).
Complainant never contacted Respondent by phone, fax or e-mail about this issue. Respondent is a two-person business and courier deliveries often get returned from their Jersey postal address because they are often away on business for long periods, during which time there is no one to sign for the packages. Complainant could easily have e-mailed Respondent at any time to discuss the situation.
Respondent registered the <idlj.com> domain name as IDLJ is a common abbreviation for the generic term “IDL-to-Java”. The domain name is therefore a highly useful marketing tool for any business involved with computer programming. Respondent’s business and the business of Respondent’s clients involves computer programming. Proof of the use of the abbreviation can be found by looking up IDLJ on any search engine.
Complainant has no trademark for IDL-to-Java or IDLJ. Complainant’s trademark is DLJ. Their argument that their DLJ mark gives them the right to the <idlj.com> domain name is analogous to saying that the PR company Burson-Marstelller (owners of <bm.com>) should have the right to take the <ibm.com> domain name from IBM. If the Complainant’s argument is valid, the media company ABC (owners of abc.com) would have the right to take <iabc.com> from the International Association of Business Communicators.
There is no bad faith as Respondent has never approached Complainant to try to sell the domain name. Complainant admits this when it says, “Respondent has not directly contacted Complainant in an effort to sell the Domain Name.”
The domain name is currently being used on a free loan by a client of Respondent. Client is a student group at the Institutionen for Ekonomi och Informatik in Sweden. They are using the domain name for their ongoing IDL-to-Java Compiler project. It is therefore serving a valuable purpose and will continue to do so.
C. Additional Submissions
The Panel finds as follows:
1. The domain name <idlj.com> is confusingly similar to Complainant’s mark, DLJ.
2. Respondent, as against Complainant, does have a legitimate interest in the domain name.
3. Respondent is not acting in bad faith as regards Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant through registration and use has demonstrated that it has rights in the DLJ mark. The domain name <idlj.com> incorporates the entirety of Complainant's mark and merely adds an "i" to the beginning. The letter "i" is a common prefix used to mean "Internet". It has been held that the addition of a single letter to a well-known mark does not create a distinct mark capable of overcoming a claim of confusing similarity. 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 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); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Victoria’s Secret et al v. Decal FA 96539 (Nat. Arb. Forum Mar. 9, 2001) (“evictoriasecrets.com” confusingly similar to VICTORIA’S SECRET trademark despite the addition of the letter “e” and the movement of the letter “s” to the end of the mark).
Applying these principles, this Panel finds that the domain name <idlj.com> is confusingly similar to Complainant’s trademark DLJ.
Rights or Legitimate Interests
Respondent asserts that IDLJ is an abbreviation for IDL-to-Java, a generic term used extensively in computer programming. A search on google.com verifies that this is the case. Respondent further asserts that it was therefore legitimate for Respondent to register <idlj.com> because it could be a useful domain name for Respondent and/or its clients involved in the computer programming business. Respondent also asserts that the name is currently on loan to students as mentioned above and that this is a legitimate noncommercial or fair use.
The Panel is persuaded by Respondent’s arguments on this point. IDLJ is indeed an abbreviated form of the programming term IDL-to-Java. Someone like Respondent, interested in the computer programming business, would have a legitimate interest in acquiring the domain name for use in its business or for sale or loan to others. In so far as there are competing claims between Complainant and Respondent, therefore, I find that Respondent does have some legitimate interest in the domain name <idlj.com>. I leave open the question of whether Respondent may be infringing the rights of some other third party who may have trademark or service mark rights in the term “IDL-to-Java” or IDLJ.
Registration and Use in Bad Faith
While it is not necessary that I go on, given my determination with respect to the second element, on this element as well, I would find for Respondent. The evidence does not establish bad faith on the part of Respondent. Even if Respondent did acquire the domain name for the primary purpose of selling it to a third party, this was not done for the purpose of selling, renting or otherwise transferring the name to Complainant or a competitor as required by Paragraph 4(b) of the Policy. Nor did Respondent register the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. In fact, Complainant has its own web site at domain name <dlj.com>. In any event, there is no pattern demonstrated here. Lastly, there is no evidence at all that Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s mark. The purpose of registration of <idlj.com> is completely different from Complainant’s business.
Respondent has explained the failure to sign for the letter sent by Complainant. Complainant did not attempt any other means of communication with Respondent. The evidence before me on this point does not establish bad faith.
Because Complainant has failed to establish two of the three element necessary to succeed, this Complaint is dismissed.
Anne M. Wallace. Q.C., Panelist
Dated: January 14, 2002
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