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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Neuberger Berman Inc. v. Chapman Capital LLC
Claim Number: FA0008000095508
PARTIES
The Complainant is Neuberger Berman Inc., New York, NY, USA ("Complainant") The Respondent is Chapman Capital LLC, El Segundo, CA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is neuberger.com, registered with Network Solutions.
PANELIST(s)
The undersigned, Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 30, 2000; The Forum received a hard copy of the Complaint on August 30, 2000.
On September 5, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name neuberger.com is 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 September 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 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@neuberger.com by e-mail.
On October 11, 2000, pursuant to Complainant’s request to have the dispute decided by a One-member panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
1 - The Complainant is the owner of the registered service mark Neuberger & Berman, registered on May 30, 1995.
2 - Complainant has applied for registration of the service mark Neuberger Berman.
3 - Complainant claims a common law service mark for the word Neuberger.
4 - Complainant has also registered on the Principal Register of the USPTO, and has continually used in commerce, a family of at least seventy trademarks and service marks containing the words Neuberger Berman.
5 - On August 25, 1998, Complainant registered the domain name neubergerberman.com.
6 - Neuberger Berman, LLC was founded by Roy R. Neuberger in 1939 and operated as a limited partnership until 1996 when it became a limited liability company.
7 - Neuberger Berman LLC and Neuberger Berman Management Inc. are investment advisory firms that provide discretionary money management for individuals, institutions and mutual funds and are wholly owned subsidiaries of Complainant.
8 - Through widespread and frequent use of the word NEUBERGER by Complainant, Complainant's customers, the press and the general public, Complainant has developed common law service mark rights in this abbreviation of it's company name, which has come to identify Complainant's services and to symbolize the goodwill built up in Complainant's business.
9 - The mark NEUBERGER is used throughout Complainant's web site to identify Complainant and it's services.
10 - The authors of numerous press releases, newspaper and magazine articles, and online news service reports routinely refer to complainant as "Neuberger" in headlines, titles and bodies of their articles and use the Neuberger and Neuberger Berman marks interchangeably.
11 - Complainant's substantial advertising and promotion of the NEUBERGER family of marks have created significant goodwill and consumer recognition.
12 - Neuberger.com is identical to Complainant's common law mark and confusingly similar to Complainant's registered mark.
13 - Respondent has no rights or legitimate interest in neuberberger.com in that Complainant has not licensed or otherwise permitted Respondent to use any of the Neuberger family of marks, or any domain name incorporating those marks; Respondent has not made any use of, or demonstrable preparations to use neuberger.com; Respondent has not been commonly known by neuberger.com; nor has Respondent made any legitimate noncommercial or fair use of the domain name.
14 - Complainant has demanded that Respondent assign neuberger.com to Complainant.
15 - Complainant contends that Respondent registered and is using neuberger.com in bad faith because Respondent has registered 144 domain names, at least seventeen of which correspond to the names of established financial institution and well-known people.
16 - Complainant contends that the registration of these many domain names suggests that Respondent has engaged in a pattern of registering domain names in order to prevent the owners from reflecting their marks in domain names, and for the purpose of selling the domain names to the mark owners at a profit.
17 - Complainant contends that, although Respondent has not made an offer to sell the domain name to Complainant, Respondent's offer to "discuss this matter in an amicable fashion" and Respondent's statement that if there is a "way in which both parties can resolve this matter amicable, I would encourage working toward that goal" supports an inference that Respondent's intention was to sell the domain name, presumably for valuable consideration in excess of Respondent's out-of pocket costs directly related to the domain name.
18 - Complainant also contends that Respondent registered the domain name in a bad faith attempt to confuse consumers, divert consumer traffic from the genuine neubergerberman.com web site and to disrupt Complainant's business.
1 - Respondent is a Delaware Limited Liability Company located in El Segundo, California and owned by Robert L. Chapman.
2 - Mr. Chapman lost a large portion of his family to cancer and thereafter developed an intense interest in research targeting the prevention of that disease.
3 - Respondent registered the domain name "neuberger.com" in 1996 after discovering the cancer related research of Dr. John S. Neuberger and becoming an avid reader of Dr. Neuberger's scientific studies and analysis.
4 - In registering the domain name "neuberger.com" Respondent says that it was done for the purpose of finding a cost-efficient manner in which to assist Dr. Neuberger in his efforts to widely disseminate his research, particularly in the area of cancer prevention.
5 - Respondent says that he has registered domain names for potential use by his company, and for business associates and friends/family who did not have the knowledge or means to register domain names themselves.
6 - Respondent states that the domain name in question is not identical or confusingly similar to Complainant’s registered mark of Neuberger & Berman or to Neuberger Berman.
7 - Every trademark and service mark registered by Complainant contains both the words "Neuberger" and "Berman"
8 - Complainant does not possess a trademark for the word Neuberger used in isolation.
9 - The only entity that does have a registered trademark or service mark for the word "Neuberger" is Neuberger Messinstrument GmbH, a German manufacturer or electronic power supplies and electrical instruments.
10 - The fact that, on occasion, reference is made to Complainant in an abbreviated fashion does not form the basis for common law service mark protection.
11 - Complainant's trademark and service marks are registered for use in commerce in connection with financial and investment services.
12 - Complainant has no right to claim trademark infringement by Respondent's intended not-for-profit use of posting academic work regarding cancer prevention by an accredited professor whose surname is identical to the domain name.
13 - Respondent has a legitimate interest in respect to the domain name in that Respondent has been working with Dr. Neuberger to post his academic and scientific work on neuberger.com.
14 - That Complainant has produced no evidence that Respondent has ever tried to sell any of its registered domain names to any party or displayed bad faith in relation to such registrations.
15 - Respondent made no efforts to contact Complainant at any time between the original 1996 registration of neuberger.com and Respondent's receipt of a February 7, 2000 letter from Respondent's counsel which counters the claimed inference that Respondent intended to profit from the domain name registration.
16 - Respondent has offered in evidence a letter from Dr. Neuberger affirming he has had discussions on numerous occasions about their plan to use the neuberger.com web site for the purposes stated by Respondent.
FINDINGS
After consideration of all submissions, the undersigned makes the following findings:
1 - The domain name "neuberger.com" is not identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2 - The Respondent has legitimate rights or interests in respect of the domain name.
3 - The domain name was not registered in bad faith.
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.
Identical and/or Confusingly Similar
Although the domain name in question, "neuberger.com", contains the word Neuberger, Complainant owns and is known by the name "Neuberger Berman" or Neuberger & Berman. Complainant has no registered trademark or common law rights in the name Neuberger used alone. And, to find otherwise would, in the opinion of this writer, cause confusion and uncertainty about the use of individual surnames that might also be a part of a larger corporate name. See The Kittinger Co. v. Kittinger Collector, AF 0107b (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business); Dollar Financial Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names, <TILLPAYDAYLOAN.COM>, <TILLPAYDAYLOANS.COM>, <UNTILPAYDAYLOAN.COM>, and <UNTILPAYDAYLOANS.COM> are not identical or confusingly similar to the Complainant’s mark and logo "CASH ‘TIL PAYDAY" and "CASH ‘TIL PAYDAY LOANS"). The Respondent contends that the Complainant has no rights in the mark that comprises the domain name. See POWRACHUTE INCORPORATED V. BUCKEYE INDUSTRIES, AF-0076a, b, c, d (e-Resolution, May 30, 2000) (dismissing a complaint where complainant failed to contend, provide evidence, or give arguments to the effect that it had either a registered trademark or service mark in POWRACHUTE or any similar name, or that it had a common law trademark in the name).
Rights or Legitimate Interests
The Respondent asserts that he has rights and legitimate interests in the domain name in question. Making demonstrable preparations to use a domain name, before notice of the dispute, is evidence of rights in a domain name. See Genting Berhad v. Tan Kin Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that the Respondent had legitimate interests in the domain name where the Respondent had made preparations to use the domain for his newly formed business); SFX Entertainment, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). In this case, Respondent has had numerous discussions with Dr. Neuberger regarding use of this domain name for a legitimate purpose not related to the financial business of Complainant.
Registration and Use in Bad Faith
The Respondent contends that he did not register or use the domain name in bad faith. The evidence in this case does not support a finding that Respondent registered the name in bad faith. Respondent registered the domain name in question in 1996. If he had intended to act in bad faith as defined by UDRP, he could have easily registered the domain name neubergerberman.com. See Asphalt Research Technology, Inc. v Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that the Complainant has failed to prove that the domain name "ezstreet.com" was registered and is being used in bad faith or held passively for use by the Respondent in bad faith). See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith where even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts, the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).
See LifePlan v. Life Plan
, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that "the mere offering (of the domain name for sale), without more, does not indicate circumstances suggesting that Respondent ‘registered the domain name primarily for the purpose of selling,…’ the domain name to the Complainant); Canal Image UK, Ltd. v. Vanitymail Services, Inc., FA 94946 (Nat. Arb. Forum July 18, 2000) (finding no bad faith even though the Respondent offered to sell the domain name for $500,000 in a dubious attempt to dissuade the Complainant from further inquiry into purchasing the domain name in question); Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that Complainant failed to prove that Respondent had no rights in the domain name and had registered and used the domain name in bad faith where the Respondent is an Internet business which deals in selling or leasing descriptive/generic domain names).DECISION
It is the decision of the undersigned that the Complainant's request that the domain name "neuberger.com" be transferred is denied.
Daniel B. Banks, Jr., Arbitrator
Dated: October 25, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1371.html