DLJ Long Term Investment Corporation v. Dina Khublall a/k/a Jeana Khublall
Claim Number: FA0202000104598
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from the Respondent to the 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.
Respondent failed to submit a Response.
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.
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.
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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