WIPO Domain Name Decision: D2008-0688

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lehman Brothers Holdings Inc. v. Elevator Holdings

Case No. D2008-0688

1. The Parties

Complainant is Lehman Brothers Holdings Inc., of New York, New York, United States of America, represented by Milbank, Tweed, Hadley & McCloy, LLP, of New York, New York, United States of America.

Respondent is Elevator Holdings, of San Francisco, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lehmanalumni.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008. On May 2, 2008, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 3, 2008, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 2, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 13, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant states that it is “a renowned leader in global finance, serving the financial needs of corporations, governments, institutional clients, and high net worth individuals worldwide”. Complainant states that it and “its affiliates” own several trademark registrations for marks that include the word LEHMAN, including United States Reg. Nos. 1,717,171 (registered September 15, 1992, for use in connection with “securities brokerage services; investment consulting services; investment banking services; and merchant banking services”) and 1,755,687 (registered March 2, 1993, for use in connection with “securities brokerage services; investment consulting services; investment banking services; and merchant banking services”), each for LEHMAN BROTHERS. Complainant states that it “and its predecessors” have been using these marks – referred to hereafter as the “LEHMAN Marks” – for more than 150 years. A affidavit provided by Complainant’s global brand manager states that Complainant had annual revenues of US$19.3 billion in 2007 and spent US$49.2 million on marketing and promoting services under the LEHMAN Marks in that year.

The Disputed Domain Name was registered on January 23, 2005.

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complaint contends, inter alia, as follows:

- The Disputed Domain Name is identical or confusingly similar to the LEHMAN Marks because it “incorporates the Complainant’s famous LEHMAN name in its entirety, with the only addition being the generic word ‘alumni’”, which “should be disregarded as it is entirely descriptive and incapable of operating to distinguish the disputed domain name from the LEHMAN Marks”. In support thereof, Complainant cites Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2006-0199 (transfer of <flyersalumni.com>); and KPMG International v. J F / Ryan Flynn, WIPO Case No. D2007-1607 (transfer of, inter alia, <kpmgalumni.com>).

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent owns no trademark registration for LEHMAN or LEHMAN ALUMNI; Complainant has not agreed or consented to Respondent’s use of registration of the Disputed Domain Name; and, by using the Disputed Domain Name in connection with a website that displays a search engine and sponsored links to various third-party sites, Respondent is not using the Disputed Domain Name in a legitimate, non-commercial manner or in connection with a bona fide offering of goods or services.

- Respondent registered and is using the Disputed Domain Name in bad faith because Respondent “has used the Complainant’s well-known LEHMAN Mark in the disputed domain name to attract Internet users to web pages that offer sponsored links to unrelated third party sites, and advertisements including pop-up advertisements”; “has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s LEHMAN Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website”; and “has not provided any plausible evidence of a legitimate, non-commercial or fair use”. Furthermore, Complainant states that it is building its own alumni website and that Respondent’s website “has the capacity not only to divert alumni but also to divert business from the Complainant”. Finally, Complainant states that Respondent has engaged in a pattern of registering domain names containing third parties’ trademarks, citing the following domain names also registered by Respondent: <goldmanalumni.com> (containing the trademark GOLDMAN, owned by Goldman, Sachs & Co.); and <morganalumni.com> (containing the trademark MORGAN, which is “virtually identical” to the mark MORGAN STANLEY, owned by Morgan Stanley Group Inc.).

B. Respondent

Respondent did not reply to the Complainant’s contentions. However, in an e-mail allegedly sent by Respondent to Complainant on March 24, 2008 (a copy of which was provided by Complainant), in response to a demand letter sent to Respondent by counsel for Complainant, Respondent stated: “[A]s I purchased lehmanalumni.com in 2006 with the legitimate purpose of establishing a social networking group and without any intent to profit from the Lehman Brothers Holding Inc. (‘Lehman’) trademark, my actions have in no way violated the ACPA [U.S. Anticybersquatting Consumer Protection Act]. Moreover, my ownership of the domain name lehmanalumni.com causes neither monetary damage nor irreparable harm to Lehman’s trademarks, goods and services and reputation. Therefore, I do not agree that a transfer of the lehmanalumni.com domain name to Lehman is necessary.”

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the LEHMAN Marks.

As to whether the Disputed Domain Name is identical or confusingly similar to the LEHMAN Marks, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “lehmanalumni”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only…, as it is well-established that the top-level domain names… should be disregarded for this purpose”).

Therefore, the only difference between the relevant portion of the Disputed Domain Name (“lehmanalumni”) and the LEHMAN Marks is the addition of the word “alumni” to the Disputed Domain Name. On this point, the Panel here agrees with the previous decisions under the Policy cited by Complainant, Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2006-0199) (transfer of <flyersalumni.com>); and KPMG International v. J F / Ryan Flynn, WIPO Case No. D2007-1607 (transfer of, inter alia, <kpmgalumni.com>). In the Philadelphia Flyers supra, the panel there wrote: “Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’ 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). The term ‘alumni’ refers to past players on the hockey team and as such is generic and descriptive.” Similarly here, the term “alumni” in the domain name <lehmanalumni.com> refers to past employees of Complainant and as such is descriptive, failing to distinguish the Disputed Domain Name from the LEHMAN Marks.

Accordingly, the Disputed Domain Name is confusingly similar to Complainant’s LEHMAN Marks, and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges, inter alia, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent owns no trademark registration for LEHMAN or LEHMAN ALUMNI; Complainant has not agreed or consented to Respondent’s use of registration of the Disputed Domain Name; and, by using the Disputed Domain Name in connection with a website that displays a search engine and sponsored links to various third-party sites, Respondent is not using the Disputed Domain Name in a legitimate, non-commercial manner or in connection with a bona fide offering of goods or services.

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (visited June 27, 2008).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant alleges with specificity Respondent’s activities constitute bad faith as set forth in Policy, paragraphs 4(b)(ii) and 4(b)(i)(iv).

With respect to paragraph 4(b)(ii), Respondent’s registration of the Disputed Domain Name obviously prevents Complainant from registering the Disputed Domain Name for itself, and the other domain names cited by Complainant (<goldmanalumni.com> and <morganalumni.com>, each of which is being used in a manner similar to the Disputed Domain Name) indicate that Respondent has engaged in a pattern of registering domain names that contain trademarks owned by third parties.

With respect to paragraph 4(b)(iv), the links on the website associated with the Disputed Domain Name may indeed create a likelihood of confusion with the LEHMAN Marks, as numerous other decisions under the Policy have found with respect to other pay-per-click websites. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

In light of the above, the Panel is convinced that Complainant has proven the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lehmanalumni.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: June 27, 2008