WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milbank, Tweed, Hadley & McCloy LLP v. John Zissu
Case No. D2001-0894
1. The Parties
The Complainant in this administrative proceeding is Milbank, Tweed, Hadley & McCloy, LLP, a New York limited liability partnership, with a principal place of business at 1 Chase Manhattan Plaza, New York, New York 10005-1413, U.S.A.
The Respondent is John Zissu, New York, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is as follows: . The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on May 11, 1999.
3. Procedural Background
On July 12, 2001, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
On July 26, 2001, WIPO e-mailed Complainant's attorney requesting Complainant to amend the "Mutual Jurisdiction" section of the Complaint. Complainant was requested to elect to submit to the jurisdiction of either the courts in the principal office of the concerned registrar, or Respondent's address, or both, with respect to any challenge to a decision to transfer or cancel the domain name. The required amendment was submitted to WIPO on July 26, 2001.
The Complaint, as amended, was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on July 31, 2001.
The Respondent failed to submit a Response, and, on August 25, 2001, a "Notification of Respondent Default" was forwarded to Respondent by WIPO.
The decision of the Panel was due to WIPO on or before September 19, 2001.
4. Factual Background
Complainant Milbank, Tweed, Hadley & McCloy (hereinafter "Milbank") is an international financial services law firm. Founded in 1866, the firm has continuously provided legal services to a variety of clients. Over the past 125 years, Milbank has spent a substantial sum of money advertising and promoting its legal services. Clients and members of the legal community commonly refer to Complainant as "Milbank Tweed" or "Milbank."
Milbank is the registered owner of the domain names , , .
As noted above, Respondent registered the disputed domain name on May 11, 1999. On May 9, 2001, Respondent contacted a partner at Milbank via e-mail, informing him that Respondent was the registrant of the domain name, that he was "fully aware of current trademark law as it pertains to domain name use" and offering to relinquish the name for $2,000. According to Respondent, the price was "non-negotiable." Respondent also indicated that the only way to contact him was via e-mail at jzissu@ and that the Whois contact information for the domain name did not reflect this current address. See Complaint, Exhibit E.
Milbank responded by e-mail on May 21, 2001, and informed Respondent that Milbank would not agree to his demand and that it would institute a UDRP proceeding to have the domain name transferred to it in the event Respondent did not agree to transfer the name immediately. See Complaint, Exhibit F.
In a subsequent e-mail, dated June 13, 2001, Respondent reiterated his demand for $2,000, which Respondent argued incorporated Milbank's probability of success in a UDRP proceeding, as well as the time, cost, and effort necessary to effectuate the transfer of the domain name. See Complaint, Exhibit G.
5. Parties' Contentions
Complainant contends that the domain name in issue is identical to the service mark MILBANK TWEED, which has been used by Milbank for 125 years and in which Milbank has common law rights. In support of its assertion of common law rights in the mark MILBANK TWEED, Complainant cites its long use of the mark, as well as its advertising and promotional efforts and expenditures in connection with the mark.
Complainant further argues that Respondent has no rights or legitimate interests to the domain name. It maintains that Respondent has no trademark rights to the domain name and that Complainant has neither agreed nor consented to Respondent's use or registration of the disputed domain name. Further, according to Complainant, Respondent has no legitimate or commercial use of the domain name. The domain name does not resolve to any web site or online presence.
Finally, Complainant contends that the domain name was registered and is being used in bad faith. According to Complainant, Respondent's correspondence with Complainant supports a finding that the domain name was registered primarily for the purpose of selling the registration to Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Complainant further argues that Respondent's "passive" holding of the domain name, i.e., Respondent's failure to use the domain name in connection with an active web site, supports a finding of "bad faith" registration and use.
6 . Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant clearly has met all the requirements set forth in para. 4(a) of the Policy.
First, there is no question that the domain name in dispute is identical or confusingly similar to the MILBANK TWEED mark. The inclusion of the generic top-level domain name ".com" in Respondent's domain name is without legal significance.
It is also clear that Complainant, through its extensive and longstanding use of the mark MILBANK TWEED, as well as advertising and promotional efforts and expenditures associated therewith, owns common law rights in the MILBANK TWEED mark. The evidence supports a determination that the public associates the MILBANK TWEED mark with Complainant.
The Panel further determines that Respondent has no rights or legitimate interests with respect to the domain name. The evidence establishes that Respondent has not made use of the domain name in connection with the bona fide offering of goods or services and is not known by the domain name.
Finally, there is ample evidence of "bad faith" registration and use. The evidence indicates that Respondent offered to sell the domain name in dispute to Complainant for $2,000 and that this sum was "non-negotiable." This evidence supports a finding that Respondent registered the domain name primarily for the purpose of selling the registration to the Complainant for a sum in excess of Respondent's documented out-of-pocket costs directly related to the domain name. Such activity "shall" be evidence of the requisite "bad faith" under para. 4(b)(i) of the Policy.
The Panel finds that Respondent's "inactivity" with respect to the domain name also supports a finding of "bad faith" registration and use. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
7. Decision
In view of the above, the Panel grants Complainant's request for transfer to it of the domain name .
Jeffrey M. Samuels
Sole Panelist
Dated: September 13, 2001
Full & Egal Universal Law Academy