DLJ Long Term Investment Corporation v.
Nyunhwa Jung
Claim
Number: FA0307000167960
Complainant is DLJ Long Term Investment Corporation,
Chicago, IL (“Complainant”) represented by James
E. Griffith, of McDermott, Will & Emery. Respondent is Nyunhwa Jung, Seoul, REPUBLIC OF KOREA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dljmarketing.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 8, 2003; the Forum received a hard copy of the Complaint
on July 9, 2003.
On
July 9, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to
the Forum that the domain name <dljmarketing.com> is registered
with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the
current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has
verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a
Dotregistrar.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
July 11, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 31, 2003 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@dljmarketing.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
August 6, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dljmarketing.com>
domain name is confusingly similar to Complainant’s DLJ mark.
2. Respondent does not have any rights or
legitimate interests in the <dljmarketing.com> domain name.
3. Respondent registered and used the <dljmarketing.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1959,
Complainant has used the DLJ mark in commerce world-wide 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 registered the DLJ mark with the
U.S. Patent and Trademark Office on May 9, 2000 (Reg. No. 2347975). Complainant also holds several registrations
for the “Donaldson, Lufkin, & Jenrette” mark, for which “DLJ” is an
abbreviation.
Respondent
registered the <dljmarketing.com> domain name on October 28,
2002. The disputed domain name resolves
to a website that is basically undeveloped with the exception that it states
that the <dljmarketing.com> domain name is 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 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 has
established rights in the DLJ mark through registration of the mark with the U.S.
Patent and Trademark Office and through use of the mark in commerce since 1959.
Respondent’s <dljmarketing.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name fully incorporates the DLJ mark and adds the generic word
“marketing” to the mark. The word
“marketing” does not identify the source of the disputed domain name and is
likely to cause Internet users who view the domain name to mistakenly assume
that it should be associated with Complainant’s mark. Therefore, the addition of a generic word to another’s mark is
insufficient to avoid a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See America Online,
Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11,
2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive
terms “traffic school,” “defensive driving,” and “driver improvement” did not
add any distinctive features capable of overcoming a claim of confusing
similarity); see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the allegations of the Complaint; therefore, the Panel
presumes that Respondent lacks rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
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); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Also, Respondent
has attempted to sell the disputed domain name via the website that the domain
name resolves to. Respondent’s attempt
to sell the disputed domain name is evidence that Respondent lacks rights or
legitimate interests in the <dljmarketing.com> domain name. See Mothers Against Drunk Driving
v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the
circumstances, Respondent’s apparent willingness to dispose of its rights in
the disputed domain name suggested that it lacked rights or legitimate
interests in the domain name); 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
Respondent registered the domain name with the intention of selling its
rights).
Furthermore, the
WHOIS information for the disputed domain name lists Respondent, Nyunhwa Jung,
as the registrant of the <dljmarketing.com> domain name; however,
it fails to establish that Respondent is commonly known by the disputed domain
name or by the DLJ MARKETING mark.
Also, Respondent is not affiliated with Complainant and is not authorized
or licensed to register or use domain names that incorporate Complainant’s DLJ
mark. Therefore, the Panel concludes
that Respondent does not have rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent, Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel
presumes that Respondent either had actual or constructive knowledge of
Complainant’s rights in the DLJ mark because the mark is registered with the
U.S. Patent and Trademark Office and has been used in commerce worldwide since
1959. Since Complainant operates its
business worldwide, the fact that Respondent and Complainant are from different
countries is irrelevant. Registration
of a domain name, despite knowledge of Complainant’s rights, is evidence of bad
faith registration pursuant to Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret
Ltd. P’ship v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072); see also 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).
Furthermore,
Respondent’s attempt to sell the disputed domain name is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Am. 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”); see also Am. 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).
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 relief shall be GRANTED.
Accordingly, it
is Ordered that the <dljmarketing.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 18, 2003
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