Generic Top Level Domain Name (gTLD) Decisions

The Complainant is DLJ Long Term Investment Corp., Chicago, IL, USA ("Complainant") represented by James E Griffith, McDermott, Will & Emery . The Respondent is The Domain Name You Have Entered Is For Sale d/b/a/ Entre Domains, Las Vagas, NV, USA ("Respondent").

The domain names at issue are dljdirecte-union.com, and dljdirect-eunion.net 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.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 2, 2000; The Forum received a hard copy of the Complaint on October 4, 2000.

On October 4, 2000, Network Solutions confirmed by e-mail to the Forum that the domain names dljdirecte-union.com, and dljdirect-eunion.net are registered with Network Solutions and that the Respondent is the current 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 October 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2000 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@dljdirecte-union.com, and postmaster@dljdirect-eunion.net 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 31, 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 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 the Respondent.

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

A. Complainant

Complainant alleges the following:

B. Respondent

Respondent did not submit a response in this matter.

This Complaint is based upon Complainant’s federally registered trademarks DLJ; DLJ DIRECT; WWW.DLJDIRECT.COM; DONALDSON, LUFKIN & JENRETTE. Donaldson, Lufkin & Jenrette, Inc. (DLJ), a licensee of Complainant, is a leading integrated investment and merchant bank. DLJ’s businesses include securities underwriting; sales and trading; investment and merchant banking; financial advisory services; investment research; correspondent brokerage services; on-line brokerage services; and asset management. DLJ was founded in 1959, and currently maintains offices in 14 U.S. cities, as well as 11 international offices located in Europe, Latin America and Asia. DLJ enjoyed net revenues of $5.6 billion in 1999, and is one of the largest financial service organizations of its type in the world.

Since 1959, Complainant and its predecessors and licensees adopted and have continually used in commerce the mark DLJ in connection with the sale and offering of, 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 DLJ Mark in connection with a wide range of financial and computer-related goods and services bearing the DLJ Mark. Complainant’s licensees also use the DLJ Mark in connection with the promotion of DLJ and its services through the web site dlj.com and its related sites.

Since 1998, Complainant adopted and has continually used in commerce, through its licensee DLJdirect, the mark DLJ DIRECT in connection with DLJ’s online brokerage operation. In 1999, DLJdirect launched operations in the United Kingdom and Japan, and in early 2000 announced its plans to expand into Asia and the Middle East. Complainant uses, through its licensees, the DLJ DIRECT Mark in connection with securities brokerage and investment advisory services and on securities trading computer software bearing the DLJ DIRECT Mark. Complainant’s licensees also use the DLJ DIRECT Mark in connection with the promotion of the DLJdirect organization and its services through the web site dljdirect.com and its related sites.

Complainant is also the owner and licensor of the mark DLJDIRECT-EUNION, which is the subject of numerous applications filed in the Middle East, and has been licensed for use in the Middle East by a related joint venture, in which DLJdirect participates. The formation of this joint venture was widely publicized in the United States in February, 2000. Complainant uses, through its licensees, the DLJDIRECT-EUNION Mark in connection with securities brokerage and investment advisory services and on securities trading computer software bearing the DLJDIRECT-EUNION Mark. Complainant’s licensees also use the DLJDIRECT-EUNION Mark in connection with the promotion of the DLJdirect-EUNION organization and its services through the web site dljdirect-eunion.com and its related sites.

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 at issue, dljdirecte-union.com, and dljdirect-eunion.net are confusingly similar to several marks in which the Complainant has demonstrated rights. The evidence indicates that Complainant holds numerous federal trademark registrations for, inter alia, DLJ; DLJ DIRECT; WWW.DLJDIRECT.COM; DONALDSON, LUFKIN & JENRETTE. Respondent’s domain names entirely incorporate Complainant’s DLJ and DLJ DIRECT marks. See DLJ Long Term Investment Corporation v Russell Johnson d/b/a Darryl Lee Johnson, FA 95565 (Nat. Arb. Forum, Oct. 16, 2000) (finding the domain names dljsource.com, dljdirectelectric.com, dljetrade.com, and d-l-j.com to be identical to Complainant’s marks).

Internet users who are seeking to access Complainant’s DLJDIRECT-EUNION services will likely assume, due to the similarity of the domain names to the mark, that Respondent and Complainant are affiliated. See e.g. Blue Cross and Blue Shield Association and Trigon Insurance Company, Inc. d/b/a Trigon Blue Cross Blue Shield v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that the domain names are sufficiently similar to these marks as to cause a likelihood of confusion between the relevant users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain names).

Therefore, this panel finds that the domain names at issue are confusingly similar to Complainant’s marks.

Respondent has not asserted any rights or legitimate interest in respect of the domain names dljdirecte-union.com, and dljdirect-eunion.net. This panel must conclude therfore, based on the evidence presented, that Respondent has no such rights. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

There are few circumstances which indicate bad faith as blatantly as a registrant who lists "THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE," as the domain name administrative contact. This is not to say that every offer to sell a domain name equates bad faith; but where the domain name is based upon another’s intellectual property, the registration and offer for sale is in bad faith. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.") In this case, Respondent’s registration and use is in bad faith.

Having satisfied all three elements required under ICANN Policy paragraph 4(a), this panel concludes that the requested relief shall be granted. The domain names dljdirecte-union.com, and dljdirect-eunion.net shall be transferred from Respondent to Complainant.