DECISION

DLJ Long Term Investment v. Namewhiz.com-NameForSale

Claim Number: FA0010000095758

PARTIES

The Complainant is DLJ Long Term Investment Corporation , Chicago, IL, USA ("Complainant").  The Respondent is Namewhiz.com-NameForSale, Baldwin Park, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are: "dljbanks.com","dljbanks.net","dljebank.net","dljebank.org","dljebanks.com",

"dljebanks.net","dljebanks.org","dljfin.com","dljibank.com","dljibank.net",

"dljibanking.com","dljibanking.net","dljibanks.com" and "dljibanks.net" registered with Network Solutions.

PANELIST

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 3, 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: "dljbanks.com","dljbanks.net","dljebank.net","dljebank.org","dljebanks.com",

"dljebanks.net","dljebanks.org","dljfin.com","dljibank.com","dljibank.net",

"dljibanking.com","dljibanking.net","dljibanks.com" and "dljibanks.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 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 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@dljbanks.com, postmaster@dljbanks.net, postmaster@dljebank.net, postmaster@dljebank.org, postmaster@dljebanks.com, postmaster@dljebanks.net, postmaster@dljebanks.org, postmaster@dljfin.com, postmaster@dljibank.com, postmaster@dljibank.net, postmaster@dljibanking.com, postmaster@dljibanking.net, postmaster@dljibanks.com, postmaster@dljibanks.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 November 3, 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

· The Domain Names are Confusingly Similar to the Complainant’s Marks

· Respondent Has No Rights or Legitimate Interest in the Domain Names

· The Domain Names Were Registered In Bad Faith

B. Respondent

The Respondent did not submit any response to the Panel.

FINDINGS

The Complaint is based upon the federally registered trademarks DLJ; DLJ DIRECT; WWW.DLJDIRECT.COM; DONALDSON, LUFKIN & JENRETTE, and variations thereof. DONALDSON, LUFKIN & JENRETTE, DLJ DIRECT, DLJ, and WWW.DLJDIRECT.COM are duly registered in the United States Patent and Trademark Office under eight valid, subsisting, and uncancelled registrations, which Complainant is the owner thereof.  Additionally, the DLJ mark is incorporated as a trademark element in two other registrations owned by Complainant and in approximately ten applications currently pending before the United States Patent and Trademark Office.

Donaldson, Lufkin & Jenrette, Inc. (DLJ), a licensee of Complainant, is a leading integrated investment and merchant bank that serves institutional, corporate, governmental, and individual clients.  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 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, its predecessors, and its licensees adopted and have continually used in commerce the mark DLJ 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 uses, through its licensees, the famous 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>.

Complainant sent Respondent a cease and desist letter dated July 28, 2000, requesting that Respondent transfer its registrations of the Domain Names to the Complainant. After receiving no response to the July 28, 2000 letter, Complainant sent Respondent a second cease and desist letter dated August 25, 2000. 

Respondent is a domain name broker, buying and selling Internet addresses for a profit.

Respondent does not currently have active web sites at the Domain Names dljbanks.com, dljbanks.net, dljebank.net, dljebank.org, dljebanks.com, dljebanks.net, dljebanks.org, dljfin.com, dljibank.com, dljibank.net, dljibanking.com, dljibanking.net, dljibanks.com, and dljibanks.net.

Respondent has listed the name “NameWhiz.com-NameForSale,” as the Registrant for the domain names.

DISCUSSION

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 fact that the Respondent does not maintain active web sites through the domain names does not preclude the finding that Respondent registered the Domain Names in bad faith.  See Armstrong Holdings Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (maintenance of active web sites not necessary for finding of bad faith registration); Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (passive holding of domain name can amount to bad faith use).

Identical and/or Confusingly Similar

Each of the Domain Names is confusingly similar to the Complainant’s marks. The fourteen Domain Names all consist of Complainant’s DLJ mark attached to a generic word describing some aspect of online banking (banks, ebank, ebanks, ibank, ibanking, ibanks, and ifin, [which is presumably an abbreviation of “Internet finance”]).  Confusion is especially likely in this case because DLJ is one of the largest investment banks in the world, and thirteen of the fourteen Domain Names consist of “DLJ” along with some variation on the word “bank.”  See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

Rights or Legitimate Interests

Respondent has not articulated any rights or interests in the Domain Names.  See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding no rights or legitimate interests where the Respondent has not asserted any rights or legitimate interests in the domain name).

Respondent is not using the domain names in connection with a bona fide offering of goods or services.  See Policy, Paragraph 4(c)(i).  The Panel determines that offering domain names that infringe upon others’ marks is not a bona fide offering of goods and services to satisfy Policy Paragraph 4(c)(i).  Also, Respondent is not commonly known by any of the domain names, either as a business, individual, or other organization.  See Policy, Paragraph 4(c)(ii).  Respondent is not making a legitimate noncommercial or fair use of the domain names.   See Policy, Paragraph 4(c)(iii).

Respondent does not have any rights or legitimate interests in the domain names.

Registration and Use in Bad Faith

The Respondent’s business sells domain names for a profit.  There is nothing inherently suspect about this practice, unless the domain names for sale infringe upon another’s trademark or service mark rights.  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.”).

Although Respondent has not directly contacted Complainant in an effort to sell the domain names, Respondent has listed the name “NameWhiz.com-NameForSale,” as the domain name Registrant for the Names.  This contact information itself constitutes an offer to transfer the domain name registration “for valuable consideration in excess of [Respondent’s] out-of-pocket costs directly related to the domain name.”  See Policy, Paragraph 4.b.(i).  See also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”). 

In light of Respondent’s registration of the domain names, each of which incorporate Complainant’s famous DLJ trademark, Respondent has engaged in a “pattern of conduct” in order “to prevent the owner of the trademark[s] from reflecting the mark in corresponding domain name[s].” See Policy,  Paragraph 4(b)(ii).  Respondent’s “pattern of conduct” in order to exploit the trademarks of others is also evidenced by its home page where it notifies consumers that “Trademarks [are] available for select names at additional cost.”

Respondent has registered and used the domain names in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. 

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "dljbanks.com","dljbanks.net","dljebank.net","dljebank.org","dljebanks.com","dljebanks.net","dljebanks.org","dljfin.com","dljibank.com","dljibank.net","dljibanking.com","dljibanking.net","dljibanks.com" and "dljibanks.net", be transferred from the Respondent to the Complainant.

Hon. James A. Carmody, Panelist

Dated: November 6, 2000

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