Neuberger Berman Group LLC v. Becky Hoang / nb capital assets
Claim Number: FA2109001964604
Complainant is Neuberger Berman Group LLC (“Complainant”), represented by Claudia W. Stangle, New York, USA. Respondent is Becky Hoang / nb capital assets (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nbcapitalassets.com>, registered with Launchpad.com Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2021; the Forum received payment on September 21, 2021.
On September 21, 2021, Launchpad.com Inc. confirmed by e-mail to the Forum that the <nbcapitalassets.com> domain name is registered with that Registrar and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Launchpad.com Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nbcapitalassets.com. Also on September 23, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Neuberger Berman Group LLC, provides investment advisory and asset management services as well as real estate investment services. Complainant has rights in the trademark NB based on its use in commerce since 2009 and various registrations of the mark with the United States Patent and Trademark Office (“USPTO”), the earliest of which was issued on March 27, 2018. It also promotes its services at the website <www.nb.com>. Respondent’s <nbcapitalassets.com> domain name, registered on December 15, 2018, is confusingly similar to Complainant’s NB mark as it incorporates the entire NB mark and merely adds the relevant generic term “capital assets”.
Respondent does not have rights or legitimate interests in the <nbcapitalassets.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the NB mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use thereof as Respondent uses the domain name to host an unfinished template website.
Respondent registered and uses the <nbcapitalassets.com> domain name in bad faith. Respondent uses the disputed domain name to suggest an affiliation with Complainant and confuse consumers. Additionally, Respondent used a proxy service when registering the disputed domain name. Furthermore, a default judgment against Respondent, by the state of Washington, for engaging in mortgage lending without a license, further indicates Respondent’s bad faith. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the NB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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."
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.
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 and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the NB mark based on registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights for purposes of Policy ¶ 4(a)(i). See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”) Since Complainant provides information concerning registration of the NB mark with the USPTO, which has been verified by the Panel, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <nbcapitalassets.com> domain name is confusingly similar to Complainant’s NB mark as it incorporates the entire NB mark and merely adds the term “capital assets.” The addition of descriptive terms to a mark will often not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). As the disputed domain name contains the NB mark followed by the term “capital assets” which relate to Complainant’s investment advisory and asset management services, the Panel finds that it is confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant first argues that Respondent does not have rights or legitimate interests in the <nbcapitalassets.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the NB mark. Although it is well established that Panels may consider WHOIS information when deciding whether or not a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), such information is not alone determinative and should not be considered in a vacuum. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA 1602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). Additionally, lack of authorization to use a mark may support an assertion that a respondent is not commonly known by a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information lists “Becky Hoang / nb capital assets” as the registrant. However, the website to which the disputed domain name resolves appears to be a template with such common placeholder language as “Lorem ipsum dolor sit amet, consectetur adipiscing elit” thus suggesting that Respondent is not actually promoting its business under the name “nb capital assets” despite having registered the disputed domain name nearly three years ago. Further, Complainant asserts that it has not authorized Respondent to use the NB mark and Respondent has not filed a Response or made any other submission in this case to rebut Complainant’s assertions. As there is no additional information to indicate that Respondent is commonly known by the disputed domain name the Panel finds as much under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof as Respondent uses the domain name to offer competing services. Using a disputed domain name to offer services that comepete with those offered by a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot of the resolving website for the disputed domain name which, although appearing to be a template, does show headings titled “Commercial Loans”, “Business Loans”, and “Real Estate Loans”. Further, Complainant has submitted evidence that a default judgment was issued against Respondent, by the State of Washington Department of Financial Institutions Division of Consumer Services, for providing a mortgage loan without obtaining the required license. From this, the Panel accepts Complainant’s assertion that Respondent appears to offer financial services that compete with, or are at least closely related to those offered by Complainant. As Complainant has made out a prima facie case that has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it is not making a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iii).
Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s rights in the NB mark. UDRP case precedent typically declines to accept the legal theory of constructive notice. However, where both parties are located in a jurisdiction that applies such a law, including the United States of America, and the complainant has obtained a federal trademark registration predating the relevant domain name registration, panels have been prepared to accept the concept. See WIPO Overview 3.0, par. 3.2.2. Also Leite’s Culinaria, Inc. v. Gary Cieara, D2014-0041 (WIPO Feb. 25, 2014) (“under 15 USC §1072, registration of Complainant’s mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.”) As both parties to this dispute are USA-based and the doctrine of constructive notice is recognized under USA law, the Panel finds it reasonable to apply the principle in this case. Complainant’s earliest USPTO registration of its NB mark issued on March 27, 2018, some months before Respondent’s December 15, 2018 registration of the disputed domain name.
Further, Complainant asserts that Respondent had actual knowledge of Complainant's rights in the NB mark. Where parties participate in closely related industries it is reasonable to infer some familiarity with others in that field. See Go Travel Un Limited v. Obshchestvo s organichennoj otvetstvennostyu “Ekstrip”, D2020-1719 (WIPO Sep. 11, 2020) (“Respondent appears to work in the same industry as the Complainant” and “[i]n these circumstances, the Panel finds it very likely that the Respondent knew of the trademark and the Complainant’s rights in it at the time that it registered the Domain Name.”) The Panel finds Complainant’s assertion to be reasonable as both parties are in a rather specialized and sophisticated field (real estate finance and investing services) and Respondent has not participated in this case to claim otherwise. As such, it seems quite likely that Respondent had actual knowledge of Complainant in light of its existence in this industry since 2009 and its promotion of its services at the website www.nb.com.
Therefore, the Panel finds it highly likely that Respondent had both actual and constructive knowledge of Complainant’s rights in the NB mark at the time it registered the disputed domain name.
Complainant further argues that Respondent registered and uses the <nbcapitalassets.com> domain name in bad faith because Respondent uses the disputed domain name to suggest an affiliation with Complainant and confuse relevant consumers. Using a disputed domain name to pass oneself off as a complainant and offer competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”) The Panel notes that Complainant provides a screenshot showing that the disputed domain name resolves to a website displaying the NB mark and appearing to offer competing financial services in the field of real estate. Respondent has not sought to explain its actions or rebut Complainant’s case. Therefore, the Panel finds bad faith by a preponderance of the evidence per Policy ¶ 4(b)(iv).
Additionally, Complainant argues that the above-mentioned default judgment against Respondent, by the state of Washington for providing a mortgage loan without the proper license, further indicates Respondent’s bad faith. Under Policy ¶ 4(a)(iii), evidence that a disputed domain name is used in furtherance of illegal activity may indicate bad faith. See Google Inc. v. Domain Admin, FA 1605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). Here, Complainant provides a copy of the default judgement against Respondent and the Panel agrees that this adds to the list of adverse evidence and thus provides further support for the above finding of Respondent’s bad faith.
Finally, Complainant argues that Respondent’s bad faith is evidenced by its use of a proxy service when registering the disputed domain name. Use of a privacy service, without more, typically does not reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO Nov. 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO Sep. 21, 2007) (finding that privacy services may be justified by the need to avoid spam and identity theft). However, when viewed as part of the totality of the circumstances which surround a respondent’s activities, engagement of a privacy service may provide further support for a finding of bad faith registration and use. See, e.g., Braviant Holdings, LLC v. Domain Admin / GuardPrivacy.org, FA 1964570 (Forum Oct. 18, 2021) (“The domain name is held in the name of what the Panel presumes to be a privacy registration service acting on behalf of an undisclosed beneficial owner (possibly the same entity as in prior cases involving the same parties), and Respondent is not identified on the website other than by the disputed domain name. Such conduct is indicative of bad faith registration and use under the Policy.”). As Respondent utilized the Privacy Protect, LLC shield when registering the disputed domain name, this further supports the Panel’s above conclusion that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nbcapitalassets.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 22, 2021
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