DECISION

Lehman Brothers Inc. v. Net Promos

Claim Number:  FA0310000199814

PARTIES

Complainant is Lehman Brothers Inc., New York, NY (“Complainant”) represented by Anne E. Naffziger, of Leydig, Voit & Mayer, Ltd..  Respondent is Net Promos, Germantown, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lehmanbrothers.com>, registered with Enom, Inc.

PANEL

The undersigned 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 3, 2003; the Forum received a hard copy of the Complaint on October 6, 2003.

On October 7, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <lehmanbrothers.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 October 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 2003 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@lehmanbrothers.com 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 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <lehmanbrothers.com> domain name is identical to Complainant’s LEHMAN BROTHERS mark.

2. Respondent does not have any rights or legitimate interests in the <lehmanbrothers.com> domain name.

3. Respondent registered and used the <lehmanbrothers.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Lehman Brothers, has continuously used the LEHMAN BROTHERS mark since the 1850s.  Complainant holds a registration for the LEHMAN BROTHERS mark with the United States Patent and Trademark Office (“USTPO”) under Registration No. 1,717,171 (registered on the Principal Register on Sept. 15, 1992).  Currently, Complainant is the owner of over 50 other trademark registrations for its LEHMAN BROTHERS mark in more than 45 countries around the world.

Complainant uses its LEHMAN BROTHERS mark to identify a wide variety of financial services.  Specifically, Complainant uses its mark in connection with its securities brokerage, investment consulting, and banking and credit card services which are used by millions throughout world.

Complainant is a multi-national company with offices worldwide.  Currently, Complainant has over 170,000 individual and corporate clients throughout the world.  In 2002, Complainant grossed over $16 billion in revenue and spent more than $2 million in advertising worldwide.

Respondent registered the <lehmanbrothers.com> domain name on August 13, 1997.  Since registering the domain name, Respondent has not presently used the domain name in connection with an active website.

Complainant has not licensed or authorized Respondent to use its LEHMAN BROTHERS mark for any purpose.

When Complainant became aware of Respondent’s registration of the <lehmanbrothers.com> domain name, Complainant’s counsel sent correspondence to Respondent requesting transfer of the domain name.  Respondent responded to Complainant’s letter, advising Complainant that it would cease use of the domain name upon clarification of the facts and verification of the legal basis of Complainant’s claims.  Subsequently, Complainant’s counsel sent a second letter to Respondent reiterating its position and providing further clarification of the facts and Complainant’s legal position.  However, Respondent did not respond to Complainant’s second letter.  Rather, Respondent renewed its domain name registration for the <lehmanbrothers.com> domain name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

The Panel finds that Complainant has established rights in the LEHMAN BROTHERS mark through registration of its mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <lehmanbrothers.com> domain name is identical to Complainant’s LEHMAN BROTHERS mark.  Respondent merely added the top-level domain “.com” to Complainant’s entire mark.  The addition of a top-level domain name is not sufficient to distinguish Respondent’s domain name from Complainant’s mark since all domain names must include a top-level domain name.  Thus, the Panel concludes that Respondent’s <lehmanbrothers.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Since Respondent did not meet its burden by failing to respond to the Complaint, the Panel accepts as true all reasonable allegations asserted in the Complaint.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <lehmanbrothers.com> domain name pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

The <lehmanbrothers.com> domain name is not Respondent’s trade name or company name.  In addition, Respondent does not have an application or registration for the LEHMAN BROTHERS mark.  Furthermore, Complainant has not licensed or otherwise permitted Respondent to use its mark or to apply for or use any domain name incorporating Complainant’s mark.  Accordingly, the Panel concludes that Respondent does not have rights or legitimate interests in the domain name because it is not commonly known by the <lehmanbrothers.com> domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Since registering the <lehmanbrothers.com> domain name in 1997, Respondent has not used the domain name in connection with an active website.  Merely registering a domain name is not evidence of rights and legitimate interests in a domain name.  On the contrary, without providing the Panel with evidence that the domain name is currently used in connection with, or will be used in connection with, a bona fide offering of goods and services, the Panel must find that Respondent does not have rights and legitimate interests in the domain name.  Appropriately, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Passive holding is prima facie proof of bad faith under Policy ¶ 4(a)(iii).  Since Respondent has not used the <lehmanbrothers.com> domain name since 1997, the Panel finds that Respondent is passively holding the domain name.  Consequently, the Panel concludes that Respondent’s passive holding is evidence of  bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith).

Furthermore, Respondent registered and is using the <lehmanbrothers.com> domain name with at least constructive knowledge of Complainant’s rights in the LEHMAN BROTHERS mark.  Complainant’s well-known mark was registered on the USPTO’s Principal Register prior to Respondent’s initial registration of the domain name.  Thus, the Panel finds that Respondent registered the domain name in bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith) . 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <lehmanbrothers.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  November 5, 2003

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