DECISION

DLJ Long Term Investment Corporation v. BargainDomainNames.com

Claim Number: FA0202000104580

PARTIES

The Complainant is DLJ Long Term Investment Corporation, a Delaware corporation, of Chicago, IL (“Complainant”) represented by James E. Griffith, of McDermott, Will & Emery.  The Respondent is BargainDomainNames.com, Fort Wayne, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dlj.org>, registered with Tucows.

PANEL

The undersigned Panelist, Richard DiSalle, 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 11, 2002; the Forum received a hard copy of the Complaint on February 12, 2002.

On February 11, 2002, Tucows confirmed by e-mail to the Forum that the domain name <dlj.org> is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 4, 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 postmaster@dlj.org by e-mail.

A Response was received late and determined to be complete on March 5, 2002.  The Response was not properly served on the other party pursuant to ICANN Rule 5(a).  Although the Response was one day late, the undersigned decided to consider it.

On March 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the undersigned as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complaint is based on the federally registered trademark DLJ and variations thereof (the “Complainant’s Marks”).  Since 1959, Complainant, its predecessors, and its licensees have adopted and continually used the mark DLJ in commerce 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.

The Complainant avers that, as a result of DLJ’s widespread, long-time, continuous, and prominent use, the DLJ mark has acquired significant goodwill, wide public recognition, and fame as a means by which DLJ and its services are known to the public and their source and origin are identified.  DLJ is duly registered in the United States Patent and Trademark Office under a valid, subsisting, and uncancelled registration, of which Complainant is the owner.  Additionally, the DLJ mark is incorporated as a trademark element in many other registrations and applications owned by Complainant in the United States.

Complainant contends that Respondent’s domain name <dlj.org> is identical to and confusingly similar to the Complainant’s DLJ mark in the financial services field, and consists entirely of Complainant’s DLJ mark, so that Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

Complainant also says that Respondent is not using the domain name in connection with a bona fide offering of goods or services under the DLJ mark, but is instead linking the name to a menu of websites, including those which offer services related to “investing,” “stocks,” “personal finance,” and “financial services” and that there is no evidence of any use of the mark “DLJ” anywhere on Respondent’s web page.  It argues that Respondent does not offer any goods or services under the DLJ trademark, and that Respondent is not known as DLJ, either as a business, individual or other organization.

 

Complainant contends that Respondent has registered the domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion, and seeks to exploit Complainant’s trademark through its registration and use of the domain name which provides links to, inter alia, sites that offer financial services, the precise services that Complainant offers in connection with its DLJ mark.

B. Respondent

Respondent claims that the domain name in question, “.org,” is reserved for non-profit organizations; that it develops websites and hosts domains at no cost to non-profit organizations; and that it currently does not have a customer for <dlj.org>.

Respondent also says that it has never offered this domain for sale to anyone; that it has never used the domain to offer services to compete with dlj.com; that it will never develop the website to compete with DLJ; and that it will not transfer <dlj.org> to any party other than a non-profit that qualifies under Section 509(a) of the Internal Revenue Code.

FINDINGS

(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.

DISCUSSION

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;

(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 or Confusingly Similar  Policy ¶ 4(a)(i).

Complainant currently holds United States Registration No. 2,347,975 for the DLJ mark, and asserts that Respondent’s domain name <dlj.org> is identical to Complainant’s mark.  The addition of a generic top-level domain name such as “.org” is irrelevant when considering whether a mark is identical or confusingly similar to Respondent’s mark.  Therefore, Respondent’s mark is identical to Complainant’s.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.  Using Complainant’s mark to divert Internet users to a website with competing goods is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Respondent does not use the DLJ mark anywhere on its website, and therefore, is not commonly known by the <dlj.org> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent is not using the disputed domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is diverting Complainant’s customers to a website that offers competing services.  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Respondent has registered and is using the disputed domain name in bad faith because Respondent registered a domain name identical to Complainant’s well-known mark despite the fact that Respondent was on notice of Complainant’s mark. Registration of a mark identical to Complainant’s mark, despite actual or constructive notice is evidence of bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); 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).

Complainant asserts that Respondent is diluting the goodwill Complainant has worked to establish for its DLJ mark and therefore is acting in bad faith.  See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contained information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, because a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent’s website).  Indeed, why the Respondent chose <dlj.org> as its domain name is not at all clear, especially when the letters, DLJ, have no apparent relationship to any of Respondent’s marks or websites.

DECISION

The domain name <dlj.org> shall be transferred by the Respondent to the Complainant, DLJ Long Term Investment Corporation.

Richard DiSalle, Panelist
Dated:  April 9, 2002

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