DLJ
Long Term Investment Corporation v. Dina Khublall a/k/a Jeana Khublall
Claim
Number: FA0202000104598
PARTIES
Complainant is DLJ Long Term Investment Corporation,
Chicago, IL (“Complainant”) represented by James
E. Griffith, of McDermott, Will
& Emery. Respondent is Dina Khublall, Brooklyn, NY
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <dljgroup.com>,
registered with Register.com.
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.
Hon. Ralph Yachnin as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
13, 2002; the Forum received a hard copy of the Complaint on February 14, 2002.
On February 14, 2002, Register.com
confirmed by e-mail to the Forum that the domain name <dljgroup.com> is registered with Register.com and that
Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com
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 February 18, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 11, 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 postmaster@dljgroup.com 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 March 18, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <dljgroup.com>
domain name is identical to Complainant's DLJ mark.
Respondent has no
rights or legitimate interests in the disputed domain name.
Respondent registered
and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to
submit a Response.
FINDINGS
Since
1959, Complainant has used the DLJ mark in commerce in connection with the sale
and offering of broker and dealer services, lender services, underwriting
securities, investment banking, and financial consulting. DLJ is an abbreviation of Complainant's
name, "Donaldson, Lufkin & Jenrette." Complainant's mark has accumulated significant goodwill as a
result of its longstanding and continuous use.
Complainant registered the DLJ mark with the United States Patent and
Trademark Office. The DLJ mark is
Registration Number 2,347,975 on the Principal Register.
Respondent
registered the disputed domain name on August 30, 2000. Respondent put the domain name up for sale
immediately by registering the domain name as "Dina Khublall-This Domain
Name is For Sale!" Complainant
sent a cease and desist letter to Respondent who answered by offering to
transfer the domain name to Complainant if it could be "fully
reimbursed." Complainant offered
Respondent $70.00 to cover the cost of registration associated with the domain
name. Respondent refused this offer and
demanded $1020.00. Respondent asserted
that this number was a reflection of its actual expenses but never provided a
record of these expenses to Complainant.
Respondent is not using the domain name in connection with an active
website, even though it has held the disputed domain for over a year and a half.
DISCUSSION
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 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; and
(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
has established that it has rights in its DLJ mark through registration on the
principal Register of the United States Patent and Trademark Office. Furthermore, Respondent's <dljgroup.com>
domain name is confusingly similar to Complainant's mark because it
incorporates the entirety of Complainant's mark and merely adds the generic
term "group." It has been
established that the addition of a generic term to a well-known mark is not
enough to create a distinct mark capable of overcoming a claim of confusing
similarity. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to come forward with a Response and therefore it is presumed that
Respondent has no rights or legitimate interests in the disputed domain
name. 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).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See 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”).
It
can be inferred, based on the passive holding of the domain name and short time
between registration and attempted sale of the disputed domain name, that
Respondent registered the domain name with the intention of selling it. It has been established that it is not a
bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) if the
registrant merely attempts to sell the domain name. See 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); see
also 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).
There
is no evidence on the record and Respondent has not come forward to establish
that it is commonly known by the <dljgroup.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate
any rights or legitimate interests in the <twilight-zone.net> domain name
since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent
has not used the disputed domain names in connection with a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because it has no
website at <dljgroup.com> and registered the disputed domain name
with the intention of selling it. See Vestel Elektronik Sanayi ve Ticaret AS v.
Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “…merely
registering the domain name is not sufficient to establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the Respondent failed to submit a Response to the Complaint and had made
no use of the domain name in question); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June
7, 2000) (finding that fair use does not apply where the domain names are
misspellings of Complainant's mark).
Furthermore,
Respondent has failed to establish a website at the disputed domain name even
though it has held registration of <dljgroup.com> for over a
year. Respondent's passive holding of
the domain name demonstrates a lack of rights and legitimate interests. See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that Respondents have not established
any rights or legitimate interests in the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261
(Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest
can be found when Respondent fails to use disputed domain names in any way).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
It
can be inferred from the circumstances that Respondent registered the disputed
domain name with the intention of selling it in excess of its out-of-pocket
costs. This type of behavior is
considered to be in bad faith pursuant to Policy ¶ 4(b)(i). See America Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) (finding bad faith where Respondent offered domain names for sale);
see also Deutsche Bank AG v.
Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the
name was registered in bad faith because of the short time frame between the
Respondent’s registration and the unsolicited offer of sale to the
Complainant); see also Educational Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined
with no legitimate use of the domain name constitutes registration and use in
bad faith).
Respondent
registered the disputed domain name over a year and a half ago and has yet to
establish a website at the disputed domain.
After such a significant amount of time has passed, the passive holding
of a domain name is considered to be evidence of bad faith use. See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an
infringing domain name without active use can constitute use in bad faith).
Based on the fact that Complainant's DLG mark is
well-known and registered on the Principal Register of the United States Patent
and Trademark Office, Respondent had constructive and/or actual notice of
Complainant's mark. Therefore, the
registration of a domain name confusingly similar to Complainant's mark is
evidence of bad faith. See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly,
it is Ordered that the domain name <dljgroup.com> be
transferred from Respondent to Complainant.
Hon.
Ralph Yachnin, Panelist
Justice,
Supreme Court, NY (Ret.)
Dated:
March 27, 2002
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