DECISION

 

LeBoeuf Corporation v. DOMAIN ADMIN

Claim Number: FA1601001655243

PARTIES

Complainant is LeBoeuf Corporation (“Complainant”), represented by Jeffrey M. Rosenfeld of KRONENBERGER ROSENFELD, LLP, California, USA.  Respondent is DOMAIN ADMIN (“Respondent”), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <leboeuf.com>, registered with eNom, Inc.

 

PANEL

Each of 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. Karl V. Fink (Ret.) (Chair), David J. Steele Esq., and The Hon Neil Anthony Brown QC as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 5, 2016; the Forum received payment on January 5, 2016.

 

On January 6, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <leboeuf.com> domain name 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2016 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@leboeuf.com.  Also on January 6, 2016, 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.

 

A timely Response was received and determined to be complete on January 25, 2016.

 

On February 3, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) (Chair), David J. Steele Esq., and The Hon Neil Anthony Brown QC as Panelists.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

Complainant

Complainant has common law rights in the LEBOEUF mark dating back to 2002. Respondent’s <leboeuf.com> domain name is identical to the LEBOEUF mark because it contains the entire mark along with only the addition of the generic top-level domain (“gTLD”) “.com.”

 

Respondent is not commonly known by the <leboeuf.com> domain name because the available WHOIS information does not suggest as much, and because Respondent has not been authorized to use the LEBOEUF mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive use.

 

Respondent uses the <leboeuf.com> domain name in bad faith because the resolving website constitutes an inactive use and because Respondent offered to sell the domain for $500,000.00.

 

Respondent

Complainant does not have common law rights in the LEBOEUF mark.

 

The term “le boeuf” is French for “the beef” or “the ox,” and is, therefore, a generic term such that Respondent has rights and legitimate interests in the <leboeuf.com> domain name.

 

Respondent’s registration of the <leboeuf.com> domain name predates any potential rights Complainant holds in the LEBOEUF mark.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is NOT entitled to the requested relief of transfer of the <leboeuf.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."

 

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 does not claim to hold a registration for the LEBOEUF mark registered with a trademark registration organization. Complainant claims it has common law rights in the LEBOEUF mark dating back to 2002. In order to have common law rights, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include extensive and continuous use and media attention. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). In order to demonstrate secondary meaning, Complainant has provided a sworn declaration to having engaged in the continuous marketing and sale of healthcare consulting services since 2002, and a business card for Complainant’s President & CEO which has no date. Complainant has also provided a 2012 article about the use of the LEBOEUF mark in relation to a law firm merger and a copy of its Corporation Corporate Profile from the Missouri Secretary of State website. However, Complainant has provided no evidence to support its claim of having acquired common law rights in the LEBOEUF mark.

 

Respondent denies that Complainant has common law rights in the LEBOEUF mark dating back to 2002 and that Complainant holds any common law rights in the mark whatsoever. Respondent contends that Complainant’s provided Corporation Corporate Profile from the Missouri Secretary of State website is inaccurate and misleading. Respondent has provided evidence of this purported misleading nature in its exhibits, suggesting that Complainant’s company was filed as “Global Solutions International, Inc.” in 2002, rebranded to “Cynergy Consulting, Inc.” in 2009, and rebranded again on September 1, 2015 to “LeBoeuf Corporation.” The Panel finds this evidence sufficient to rebut the claim of rights dating back to 2002, and therefore the Panel finds that Complainant does not hold common law rights in the LEBOEUF mark under Policy ¶ 4(a)(i). See Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).

 

Complainant has NOT proved this element.

 

Rights or Legitimate Interests

 

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Respondent argues that the term of the <leboeuf.com> domain name,le boeuf” is common and generic, because it is French for “the beef” or “the ox,” and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has provided evidence of this generic nature through the use of Google searches, as well as other uses of the term in association with beef on the Internet. The Panel therefore finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Complainant has NOT proved this element.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent uses the <leboeuf.com> domain name in bad faith because Respondent offered to sell the domain for $500,000.00. Complainant has provided evidence to show that Complainant had offered to purchase the domain for $2,000.00 and that Respondent counteroffered to sell for $500,000.00. Complainant maintains that this constitutes bad faith under Policy ¶ 4(b)(i), as an offer for sale in excess of out of pocket costs. Complainant alleges that Respondent uses the <leboeuf.com> domain name in bad faith because the resolving website constitutes an inactive use.

 

Respondent argues that its registration of the <leboeuf.com> domain name predates any potential rights Complainant holds in the LEBOEUF mark. Respondent notes that it registered the domain on September 6, 2010. Respondent argues that because Complainant did not become known as “LeBouef Corporation” until September 1, 2015, Respondent could not have possibly targeted Complainant with its registration of the <leboeuf.com> domain name. Respondent further argues that because it has not engaged in bad faith registration, neither the offer to sell the domain nor the current inactive use of the domain are done in bad faith. The Panel agrees with this argument and therefore finds that Respondent did not engage in any bad faith registration or use. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).

 

The Panel finds that Respondent has rights or legitimate interests in the <leboeuf.com> domain name pursuant to Policy ¶ 4(a)(ii), and therefore the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

Complainant has NOT proved this element.

 

Reverse Domain Name Hijacking

 

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <leboeuf.com> domain name, of its rights to use the disputed domain name. Respondent refers to its argument with respect to Complainant’s common law rights argument. Respondent maintains that Complainant’s provided Corporation Corporate Profile from the Missouri Secretary of State website is inaccurate and misleading. Respondent has provided evidence of this purported misleading nature in exhibits, suggesting that Complainant’s company was filed as “Global Solutions International, Inc.” in 2002, rebranded to “Cynergy Consulting, Inc.” in 2009, and rebranded again on September 1, 2015 to “LeBoeuf Corporation.” Respondent also notes that Complainant swore, under penalty of perjury, in its Annex 1 to having used the LEBOEUF mark since 2002. Respondent argues that this shows that Complainant knowingly perjured itself in asserting these rights and knew or should have known that it had no rights in the mark.

 

The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the <leboeuf.com> domain name and that Respondent registered and is using the disputed domain name in bad faith. The Panel therefore finds there is sufficient evidence to determine that Complainant has acted in bad faith and that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).

 

Respondent has established Reverse Domain Name Hijacking.

 


DECISION

Complaint having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is ORDERED that the <leboeuf.com> domain name REMAIN WITH Respondent.

 

Hon. Karl V. Fink (Ret.) (Chair), Panelist

David J. Steele Esq., Panelist

The Hon Neil Anthony Brown QC, Panelist

 

Dated:  February 11, 2016

 

 

 

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