DECISION

Lehman Brothers Inc. v. Scott Simon

Claim Number:  FA0405000271212

PARTIES

Complainant is Lehman Brothers Inc. (“Complainant”), represented by Anne E. Naffziger of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Suite 4900, Chicago, IL 60601.  Respondent is Scott Simon  (“Respondent”), 15 Tallow Lane, Lake Grove, NY 11755.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lehmanmortgage.com>, registered with Register.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 12, 2004; the Forum received a hard copy of the Complaint on May 13, 2004.

On May 13, 2004, Register.com confirmed by e-mail to the Forum that the domain name <lehmanmortgage.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 May 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 2004 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@lehmanmortgage.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 June 17, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <lehmanmortgage.com> domain name is confusingly similar to Complainant’s LEHMAN BROTHERS mark.

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

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

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

FINDINGS

Complainant, Lehman Brothers, Inc., is in the financial service business including securities brokerage, investment consulting, banking, mortgage and credit card services.

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the LEHMAN BROTHERS mark (Reg. No. 1,717,171 issued September 15, 1992, Reg. No. 1,755,687 issued March 2, 1993).  Complainant also holds trademark registrations for LEHMAN LOGIC (Reg. No. 1,796,071 issued September 28, 1993), LEHMAN BROTHERS BANK (Reg. No. 2,381,464 issued August 29, 2000), LEHMAN PRIMEPLUS (Reg. No. 2,549,090 issued March 19, 2002), LEHMAN BROTHERS PRIMEPLUS (Reg. No. 2,539,396 issued February 19, 2002), LEHMAN BANK (Reg. No. 2,519,808 issued December 18, 2001), LEHMAN FUTURES LIVE (Reg. No. 2,529,704 issued January 15, 2002), and LEHMANLIVE (Reg. No. 2,656,151 issued December 3, 2002 and Reg. No. 2,832,374 issued April 13, 2004).  Additionally, Complainant holds over 50 other trademark registrations for its LEHMAN and LEHMAN BROTHERS marks in over forty-five countries around the world.

Complainant has served the financial needs of corporations, governments and municipalities, institutional clients, and high-net-worth individuals worldwide since 1850.  Currently, Complainant has revenues of more than $17 billion and net income of almost $1.7 billion while serving over 170,000 individual and corporate clients worldwide.  Complainant has used the LEHMAN BROTHERS mark in commerce since the company’s inception in 1850.  Thus, the LEHMAN BROTHERS mark enjoys a high degree of recognition in North America and elsewhere.

Complainant operates its main websites at <lehman.com>, <lehmanbrothers.com>,  <lehmanmortgage.net> and <lehmanbank.com>.

Respondent registered the disputed domain name on October 29, 2003.  Respondent has parked the domain name, which points to its registrar’s website services.

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

Complainant established with extrinsic proof in this proceeding that it has rights to the LEHMAN BROTHERS mark as evidenced by its registration with the United States Patent and Trademark Office.  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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

The domain name registered by Respondent, <lehmanmortgage.com>, is confusingly similar to Complainant’s LEHMAN BROTHERS mark because the domain name incorporates the prominent feature of Complainant’s mark, the name “Lehman,” and simply adds a generic or descriptive term, “mortgage,” related to Complainant’s services.  The mere addition of a generic or descriptive term that describes a segment of Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term “LEAFS”).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that “[p]roving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for [R]espondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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”).

Respondent has passively held the <lehmanmortgage.com> domain name since the time of registration.  Respondent’s use of a domain name that is confusingly similar to Complainant’s LEHMAN BROTHERS mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); 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).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <lehmanmortgage.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (stating that “[d]ue to the fame of Complainant’s FOOT LOCKER family of marks and the fact that Respondent’s WHOIS information reveals its name to be “Bruce Gibson,” the Panel infers that Respondent was not “commonly known by” any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”);  see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on the website that would justify use of the word NOKIA within the domain name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent intentionally registered a domain name, <lehmanmortgage.com>, that contains the prominent feature of Complainant’s well-known mark.  Respondent has failed to market any bona fide goods or services, other than its registrar’s website services.  Respondent’s passive holding of a domain name confusingly similar to Complainant’s mark evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of Complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website).    

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Respondent’s registration of the disputed domain name, a domain name that incorporates the prominent feature of the Complainant’s mark and simply adds a generic or descriptive term, suggests that Respondent knew of Complainant’s rights in the LEHMAN BROTHERS mark.  Furthermore, the generic or descriptive term incorporated in the domain name describes a key segment of Complainant’s business.  Thus, the Panel finds that Respondent likely chose the <lehmanmortgage.com> domain name based on the distinctive and well-known qualities of Complainant’s mark.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

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 <lehmanmortgage.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  June 30, 2004

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