NATIONAL ARBITRATION FORUM
URS FINAL DETERMINATION


THUASNE v. Reagan et al.
Claim Number: FA1412001594920


DOMAIN NAME

<lombax.blue>


PARTIES


   Complainant: THUASNE SERVICE JURIDIQUE Legal Department of LEVALLOIS PERRET CEDEX, France
  
Complainant Representative: Nameshield Laurent Becker of Angers, France

   Respondent: Jopseh M Reagan of Wayne, MI, United States of America
  

REGISTRIES and REGISTRARS


   Registries: Afilias Limited
   Registrars: Tucows Domains Inc. (R139-LRMS)

EXAMINER


   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 Examiner in this proceeding.
   Mr. Tomáš Abelovský, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: December 12, 2014
   Commencement: December 12, 2014
   Response Date: December 12, 2014
   Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: No multiple complainants or respondents and no extraneous domain names require dismissal

   Findings of Fact: No multiple complainants or respondents and no extraneous domain names require dismissal. Complainant has provided the following explanatory text, in toto, in its Complaint (subject to the 500-word limit specified in paragraph 1.2.7 of the URS): “A. The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights: The domain name is identical to the International trademark " LOMBAX " N° 563321, registered on December 7th, 1990. The trademark " LOMBAX " is also registered in TMCH clearinghouse. LOMBAX® is a lumbar support belt with locking system into two parts. See: http://www2.thuasne.fr/thuasne/front/site/france/lang/fr/pid/768 The New GTLD « .BLUE » makes reference to the color of Complainant’s products packaging. See : https://www.google.fr/search? q=thuasne&biw=1280&bih=878&source=lnms&tbm=isch&sa=X&ei=eqmJVOCDDsu9UYefhMgD&sqi=2&ved=0CAYQ_AUoAQ B. Registrant has no legitimate right or interest to the domain name The Respondent does not have any rights in the name “ LOMBAX ” nor is the Respondent commonly known by this name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name. The Respondent is not making an active use of the disputed domain name. The domain name is still in parking page. C. The domain name(s) was/were registered and is/are being used in bad faith. - The domain name is identical to the trademark " LOMBAX " ; - the domain name is maintained in parking page since its registration ; - the Respondent has intentionally registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.” Complainant owns valid International trademark "LOMBAX" N° 563321, registered on December 7th, 1990. Respondent has provided the following explanatory text, in toto, in its Response to the Complaint (subject to the 2,500-word limit specified in paragraph 5.4 of the URS): “This trademark is expired, reference here: http://www.trademarkia.com/lombax-76372382.html. A Lombax in the USA is a fictional video game species, reference here: http://ratchet.wikia.com/wiki/Lombax […] I am a furry, and my character I play is part lombax, reference can be found here: https://www.furaffinity.net/view/13661766/ which was posted june 7th 2014. The character is blue, and is a lombax species, the name lombax.blue is a legitimate use of the domain name. […] I registered this domain to make a blog and art site for my character, which is a blue colored lombax, and have no intentions on using it for any other purpose.”

  

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


Complainant demonstrated that he is owner of the International trademark "LOMBAX " N° 563321, registered by WIPO on December 7th, 1990. Also, the trademark "LOMBAX " is registered in TMCH clearinghouse. Respondent has proven that US Trademark “LOMBAX” SN: 76372382 has been canceled (cancellation date according USPTO is January 17, 2014). Despite this fact, the registered domain name is identical to a word mark for which Complainant holds a valid international registration which is in current use (International trademark "LOMBAX " N° 563321) and specifically protected by a treaty in effect at the time the URS complaint is filed.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


Complainant demonstrated that Respondent has no legitimate right or interest to the domain name <lombax.blue>. Respondent has registered the domain name without any authorization from Complainant who is the legitimate holder of the trademark. Respondent has no affiliation with the Complainant. The Respondent is not actively using the disputed domain name (it is parked). There is no such convincing connection between the fictional character (Lombax), the Respondent (or his identification) and the existing domain name registration. Respondent has not proven otherwise. Also, Respondent has not demonstrated any rights to the fictional character name or related story.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


Respondent has registered and used the domain name <lombax.blue> in bad faith and Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure. That is so for the following reasons. First, Complainant’s trademark is used for the real product characterized with blue color (see http://www2.thuasne.fr/thuasne/front/site/france/lang/fr/pid/768). Obviously, the new gTLD .BLUE makes reference to the color of Complainant’s products packaging. Secondly, Complainant showed that the Respondent has parked the domain name on the web-server without any content. The domain name resolves to a click through site with a commercial web-hosting advertisement. Respondent is not known by the domain name and there is no convincing evidence that he is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Also, Respondent has registered the domain name in order to prevent the trademark holder from reflecting the mark in a corresponding domain name.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. 

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

Respondent has provided the following explanatory text: “I believe this is an abusive claim, as the trademark itself is listed as expired, and is marked CANCELLED - SECTION 8 1/17/2014 I request this claim be dismissed immediately.” According to above reasoning, the Complaint was neither abusive nor contained material falsehoods ("LOMBAX " N° 563321, registered by WIPO on December 7th, 1990 is valid international trademark).


DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. lombax.blue

 


Mr. Tomáš Abelovský
Examiner
Dated: December 16, 2014

 

 

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