Generic Top Level Domain Name (gTLD) Decisions

The Complainant is DLJ Long Term Investment Corporation , Chicago, IL, USA ("Complainant") represented by James E. Griffith, McDermott, Will & Emery. The Respondent is Russell Johnson d/b/a Darryl Lee Johnson, Holtsville, N Y, USA ("Respondent").

The domain names at issue are dljsource.com, dljdirectelectric.com, dljetrade.com, and d-l-j.com registered with Network Solutions.

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 7, 2000; The Forum received a hard copy of the Complaint on September 6, 2000.

On September 12, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names dljsource.com, dljdirectelectric.com, dljetrade.com, and d-l-j.com are registered with Network Solutions and that the Respondent is the curren t registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 3, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Res pondent 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@dljsource.com, dljdirectelectric.com, dljetrade.com, d-l-j.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 October 10, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notic e 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, withou t the benefit of any Response from the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

The Respondent did not submit a response.

Complainant holds federally registered trademarks for DLJ, DLJ DIRECT, WWW.DLJDIRECT.COM, DONALDSON, LUFKIN & JENRETTE and variations thereof. Complainant’s licensees also use the DLJ mark in connection with the promotion of DLJ and its service s through the web site dlj.com and its related sites.

Complainant sent Respondent two cease-and-desist letters regarding the registration of the domain names. Respondent did not respond to either letter. The administrative and billing contact information listed for two of the domain names is "Russdomainfo rsale Johnson." Darryl Lee Johnson and DLJ DirectElectric are listed as the administrative and billing contacts for the other two domain names. At the time the complaint was filed, Respondent did not have active web sites associated with any of the domain names.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

The domain names are confusingly similar to Complainant’s federally registered marks. The addition of generic words, hyphens or ".com" does not affect the analysis under ICANN Policy ¶ 4(a)(i). See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the domain name <deutsche-bank-ag.com> is identical to the Complainant’s registered trademark "Deutsche Bank AG"); The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of the Complainant’s registered mark is confusingly similar); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Respondent has not submitted any evidence to rebut Complainant’s contention the Respondent does not have any rights or legitimates interests in the domain names. If the Darryl Lee Johnson and DLJ DirectElectric administrative contact information li sted for two of the domain names were correct, Respondent might have demonstrated sufficient rights or legitimate interest to defeat Complainant’s complaint. However, Respondent made no such showing, and his failure is instructive on the validity of his r egistration and use of the domain names. See Cigna Corp. v. JIT Consulting, AF-00174 (eResolution, June 6, 2000) (finding that if Respondent had considered Complainant’s claim to be in error, Respondent would have answered and corrected the inaccur ate claim). This panel finds that Respondent has no rights or legitimate interests in the domain names.

The evidence indicates that Respondent registered and is using the domain names in bad faith under ICANN Policy paragraphs 4(b)(i) and (ii). First, Respondent’s listed administrative contact for two of the domain names is "Russdomainforsale Johnson." (emphasis added). This implies that the domain names were registered primarily for the purpose of selling them. See Educational Testing Service 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); Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that Respondent registered the domain name for the purpose of selling it, as revealed by the name the Respondent chose for the registrant, "If you want this domain name, please contact me"); Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information cont ained the words, "This domain name is for sale.").

Second, by registering four domain names which all incorporate Complainant’s marks, Respondent has violated ICANN Policy ¶ 4(b)(ii) by preventing the owner of the marks from reflecting the mark in a corresponding domain name. See General Electric Co . v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holde rs from using their marks in corresponding domain names); America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business wh ich infringe on famous marks and websites); BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating oth ers’ trademarks and the fact that the domain names in question do not link to any on-line presence or website).

Having established all three elements required by the ICANN Policy, it is the decision of this panel that the requested relief be granted.

Accordingly, it is ordered that he domain names dljsource.com, dljdirectelectric.com, dljetrade.com, and d-l-j.com be transferred from the Respondent to the Complainant.