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
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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