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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neuberger Berman Inc. v. Alfred Jacobsen
Decision in Case No. D2000-0323
1. The Parties
Neuberger Berman Inc.
605 Third Avenue
New York, New York 10158
William M. Ried
Wilkie Farr & Gallagher
787 Seventh Avenue
New York, NY 10019-6099
493 Bedford Center Road
Bedford Hills, NY 10507
2. The Domain Name and Registrar
The disputed domain name is <newbergerberman.com>. The registrar is register.com, 575 Eighth Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
This dispute is to be decided in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was received by the Center on April 28, 2000 and on the same day the Center requested that the registrar, register.com, check and report back on the registrant for the disputed domain name, <newbergerberman.com>. On May 1, 2000, register.com reported the registrant was Respondent:
493 Bedford Center Road
Beford Hills, New York 10507
On May 8, 2000, the Complaint was notified to Respondent and this Administrative Proceeding officially began. On May 22, 2000, the Center received Respondent’s response. The Administrative Panel was selected and submitted a Declaration of Impartiality and Independence on May 29, 2000.
This Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by June 12, 2000.
4. Factual Background
Complainant is a financial services corporation incorporated in Delaware with main business offices in New York City. Complainant was founded in the 1930’s and, since that time, has acquired wide recognition among those involved with Complainant’s main areas of activity, which include private asset management, mutual funds and professional securities services. The company name Neuberger Berman Inc. comes from the names of Messrs. Neuberger and Berman, the two founding partners.
On May 30, 1995, Complainant registered United States Trademark Registration No. 1,896,476 on the Principal Register in class 36, financial services. On August 25, 1998, Complainant registered the domain name "<neubergerberman.com>. During the 1990’s, Complainant also registered some forty-five (45) other trademarks on the Principal Register of the United States of America, all of them including the company names Neuberger Berman (Complaint Exhibit D).
Respondent registered the domain name <newbergerberman.com> on August 5, 1999. Complainant disputes Respondent’s right to register this domain name.
5. Parties’ Contentions
a) Complainant has registered a family of at least forty-five trademarks and service marks containing the words Neuberger and Berman going back to May 30, 1995.
b) On August 25, 1998, Complainant registered the domain name <neubergerberman.com>.
c) Complainant is the owner and bona fide senior user of the "Neuberger Berman" trade name.
d) Since its inception in 1939, Neuberger Berman Inc. has become a well-known provider of financial services in the United States of America.
e) Neuberger Berman’s web site <neubergerberman.com> receives thousands of visits per day.
f) Neuberger Berman has been the subject of numerous press releases and unsolicited articles in newspapers throughout the United States (Complaint Exhibit H).
g) "Newberger Berman" differs from "Neuberger Berman" by only one letter and thus is confusingly similar. Substitution of a "w" for a "u" leaves "Newberger Berman" phonetically identical to "Neuberger Berman" and does nothing to distinguish the two in terms of appearance or meaning.
h) Respondent’s registration is part of the practice known as "typo-piracy", or registering domain names which are different only by a slight misspelling from the name of a well-known and highly trafficked web site. The intention in registering such "typo-sites" is often to profit by selling such domain names to those with rightful claims to them (Complaint p.8).
i) As a result of such consumer confusion, Neuberger Berman is likely to suffer diverted traffic, loss of consumer goodwill, a resulting loss of sales, and inestimable damage to its reputation as a provider of online information and services.
j) Complainant has not licensed or otherwise permitted Respondent to use Complainant’s trademark or any of the Neuberger Berman family of marks, nor has Complainant licensed or otherwise permitted Respondent to apply for or use any domain name incorporating those marks.
k) Upon information and belief, Respondent, Alfred Jacobsen, established shareholder accounts with Complainant during 1992, 1994, 1996, 1997 and 1998 (Complaint p. 10).
l) Under WIPO case precedent, Respondent’s "passive holding" of <newbergerberman.com> amounts to bad faith. In more than eight months since registering <newbergerberman.com>, Respondent apparently has made no actual use of this domain name.
m) Paragraph 4(b) of the Uniform Policy lists as evidence of the bad faith registration and use of a domain name held passively: an intention to sell, rent, or otherwise transfer the domain name at a profit to the owner of a confusingly similar mark.
n) Complainant requests that the disputed domain name <newbergerberman.com> be transferred to Complainant.
a) Respondent’s domain name is distinguishable from Complainant’s trademark.
b) It is Respondent’s right to register a domain name for future use.
c) There are many names that are pronounced the same but spelled differently.
d) Respondent, without any prior knowledge of Complainant’s trademark, invented the name New Bergerber Man in a story he wrote with hopes of turning it into a movie. He contends he plans to use the domain name for the movie (Response para 23).
e) Respondent has never had any accounts with Neuberger Berman Inc.
f) The State of New York Secretary of State would allow Respondent to form a corporation using the disputed domain name configured as follows: "NEWBERGERBERMAN.COM.INC" (Response para 30).
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <newbergerberman.com>) transferred to itself, Complainant must prove the following (the Policy, para 4(a) (i-iii):
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
Complainant’s trademarks and domain name are built on its company name Neuberger Berman Inc. Respondent registered the doman name <newbergerberman.com> on August 5, 1999 The two names are phoneticially identical in English. Respondent spells new with a "w" vice Complainant’s "u".
Respondent has produced a letter dated February 11, 2000 from the Office of the Secretary of State of the State of New York stating he might incorporate using the name "NEWBERGERBERMAN.COM.INC". However, the State of New York’s letter can not guarantee to Respondent that the name it has chosen is not subject to objection because it infringes the trademark of another party. As the Secretary of State for the State of New York himself cautions Respondent:
"In responding that the name ("NEWBERGERBERMAN.COM INC") is distinguishable, we do not approve the name for any other purpose. Availability does not imply that the name satisfies any particular requirement of law nor any particular standard of a body with power to grant or withhold its approval, license, or permit or take any other action. No expenditure or other commitment should be made in reliance upon the availability of the name."
This Panel further notes that as Complainant is incorporated in Delaware and not New York, it stands to reason the Secretary of State for the State of New York probably does not have Complainant’s company name on its ledgers of companies incorporated in New York. In any case, the "com" Respondent artfully added for incorporation is irrevelant for our dispute here. Here, we have to determine whether Respondent’s domain name <newbergerberman.com> is confusingly similar or identical to Complainant’s <neubergerberman.com>
This Panel finds that the slight difference in spelling between "Newberger" and "Neuberger" and their phonetic identity make Respondent’s domain name confusingly similar to Complainant’s trademarks based on its company name Neuberger Berman Inc., and thus confusingly similar to Complainant’s domain name <neubergerberman.com>. As we later discuss, it also appears to this Panel it was precisely Respondent’s intention to register a domain name confusingly similar to Complainant’s.
Legitimate Rights or Interests
Respondent admits to not currently using the disputed domain name <newbergerberman.com> for any purpose (Response, para 28). Respondent also asserts he has a right to register a domain name "for future use" for a film based on a story he wrote with a character he created called "New Bergerber Man". Respondent offers no other evidence to support this remarkable explanation. This Panel finds Respondent’s explanation contrived and devoid of credibility.
Respondent apparently is a lawyer in New York. The site with the domain name, which this Panel has found confusingly similar to Complainant’s trademark Neuberger Berman Inc., has been inactive since it was registered on August 5, 1999. This Panel sees no evidence whatever of a legitimate right or interest Respondent may have in the disputed domain name, other than interests pointing to bad faith and not allowed under the Policy and the Rules, as we discuss below.
Registered and Used in Bad Faith
Respondent had constructive notice of Complainant’s pre-existing, registered trademarks based on Neuberger Berman Inc. when he registered the disputed domain name <newbergerberman.com> on August 5, 1999.
It also seems likely that Respondent had actual notice of Complainant’s company name Neuberger Berman Inc. because Respondent probably was a client of Complainant (Complaint, p. 10). Even if we accept Respondent’s unconvincing denial that he is a former client of Complainant, it seems unlikely that Respondent, a lawyer in New York, never heard of Complainant, given the latter’s high visibility in the financial services market.
This panel is persuaded by Complainant’s argument that the family names of Neuberger and Berman placed together to form a domain name are sufficiently unique that Respondent was unlikely ever to have coined such a domain name without already knowing about Complainant. As we stated above, this Panel finds Respondent’s explanation (Response para 23 ) that he created the name New Bergerber Man as a character in a story he wrote, and from this created the domain name, to be totally unbelievable.
Even though Respondent, a lawyer, is sophisticated enough not to put into writing overt requests for money from Complainant in exchange for turning over the domain name to Complainant, this panel infers that Respondent’s hints of being willing to engage in "discussions" with Complainant does point to a propensity on Respondent’s part to seek money from Complainant for the domain name.
In addition to some evidence Respondent was after money for the domain name, there also is considerable evidence Respondent sought to disrupt Complainant’s business by confusing the many people who would seek Complainant’s web site but would end up at Respondent’s website. Complainant has produced convincing evidence regarding the practice of "typo-piracy" whereby bad faith operators deliberately misspell a famous domain name trademark in hopes of luring search engines to their site in conjunction with searches for the famous name website. This conduct is further evidence of the bad faith this Panel is empowered to find in addition to the specifically enumerated instances in the Policy (4(b).
This panel has found that Respondent’s domain name <newbergerberman.com> is confusingly similar, and deliberately so, to Complainant’s trademarks based on Complainant’s company name Neuberger Berman Inc.; that Respondent has no legitimate right or interest in this domain name because it is unbelievable Respondent created the name in a story hoping to make a movie; and that Respondent registered the domain name in bad faith with constructive and actual notice of Complainant’s pre-existing trademarks. Therefore, pursuant to ICANN Policy para 4(i) and Rule 15, this Panel orders that the disputed domain name <newbergerberman.com> be turned over to Complainant.
Dennis A. Foster
Dated: June 12, 2000