Leumas Residential, LLC v. Leumas Advisors LLC
Claim Number: FA2306002048740
Complainant is Leumas Residential, LLC (“Complainant”), represented by Reginald D. Samuel, Virginia, USA. Respondent is Leumas Advisors LLC (“Respondent”), represented by Gerald M. Levine of Levine Samuel, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leumas.com>, registered with Network Solutions, LLC.
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 Panelist in this proceeding.
Flip Petillion as Presiding Panelist.
Richard W. Hill as Panelist.
Carol Stoner as Panelist.
Complainant submitted a Complaint to Forum electronically on June 13, 2023; Forum received payment on June 13, 2023.
On June 15, 2023, Network Solutions, LLC confirmed by e-mail to Forum that the <leumas.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 June 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2023 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 email@example.com. Also on June 21, 2023, 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 July 11, 2023.
On July 19, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Flip Petillion as presiding Panelist, and Richard W. Hill and Carol Stoner as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant claims to be an investment services company that has been using the LEUMAS mark since 1998. Complainant claims rights in the LEUMAS mark through a trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,626,784, registered on December 11, 2018, filing date April 19, 2018, claimed first use in commerce date January 1, 2003). Respondent’s <leumas.com> domain name (the “disputed domain name”) is identical to the LEUMAS mark.
Respondent lacks rights or legitimate interests in the disputed domain name and Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent alleges that the disputed domain name resolves to an inactive page, but provides evidence that the resolving webpage displays advertising hyperlinks.
Complainant alleges that Respondent registered and uses the disputed domain name in bad faith by failing actively to use the domain name, and that Respondent has never used the domain; however it provides evidence that the resolving webpage displays advertising hyperlinks.
Respondent was formed in 2002 by its principal, Mr. Harvey Samuel Kelly. Respondent registered the disputed domain name on November 12, 2002. The name was chosen by reversing the letters of the middle name of the Respondent’s principal, Samuel. Currently, Leumas Advisors LLC is inactive to avoid conflict of interest with its principal’s work as a pensions funds analyst with the Office of the Connecticut State Treasurer. Respondent’s principal intends to resurrect his Leumas Advisors business upon retirement. All annual dues and fees have been kept up to date in relation to Leumas Advisors LLC and all registrations have been achieved.
Respondent does not challenge that Complainant has a registered trademark for LEUMAS. However, Complainant lacks standing because Respondent registered the disputed domain name before Complainant’s trademark was recorded. Complainant provides no evidence that it had any common law rights prior to 2003.
Respondent has rights and legitimate interests in the disputed domain name. Respondent has maintained its annual membership with Financial Industry Regulatory Authority (“FINRA”) and the Connecticut Department of Banking demonstrating its continued interest and investment in the disputed domain name. Furthermore, Respondent has used the disputed domain name for email service.
Respondent has not registered or used the disputed domain name in bad faith. Complainant has not provided concrete evidence of any bad faith. On the contrary, Complainant has harassed Respondent by sending numerous emails from 2008 to 2022 to addresses linked to the disputed domain name, seeking to purchase the disputed domain name.
Finally, Respondent requests that the Panel find that Complainant engaged in Reverse Domain Name Hijacking.
Complainant is a United States company which owns a United States trademark for LEUMAS, registered on December 11, 2018, filing date April 19, 2018, and covering services related to real estate.
Respondent is a United States company founded in 2002 by a United States national. Respondent registered the disputed domain name on November 12, 2002. The disputed domain name appears to resolve to a registrar parking page including sponsored links. The evidence provided by Respondent also shows continuous use of the disputed domain name for email services.
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.
Complainant asserts rights in the LEUMAS mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 5,626,784, registered on December 11, 2018). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the LEUMAS mark per Policy ¶ 4(a)(i).
As the addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s LEUMAS mark.
Complainant must demonstrate both that Respondent has no rights or legitimate interests in the disputed domain name, as well as that the disputed domain name was registered and is being used in bad faith. If Complainant does not succeed on either one of those elements, the requested remedies under paragraph 4(i) of the Policy must be denied by this Panel.
The Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and is being used in bad faith, as will be discussed below under the third element. The Panel therefore considers it unnecessary to discuss this element. See Knud Jepsen A/S v. Rick Schwartz, Virtual Dates Inc, WIPO Case No. D2017-0679.
Nevertheless, the Panel observes that:
- the disputed domain name was chosen by reversing the letters of the middle name of the Respondent’s founder, Samuel;
- the disputed domain name predates the Complainant’s mark by more than 15 years, and the Complainant does not provide evidence of any common law rights in the name LEUMAS before the registration of the disputed domain name;
- the evidence provided by Respondent shows continuous use of the disputed domain name for sending and receiving email. This is sufficient to establish rights or legitimate interests, see GoSecure Inc. v. Billa Bhandari, FA2107001954083 (Forum Aug. 19, 2021) (citing Zero International Holding GmbH & Co. Kommanditgesellsshaft v. Beyonet Services and Stephen Urich, 2000-0161 (WIPO May 12, 2000) (“We do not accept that complainant’s contention that registration of a domain name which is only to be used for [e-mail and file transfer operations] is in some way improper and constitutes bad faith.”)).
Further, Respondent provides evidence that it plans to expand its use of the disputed domain name in the future. Evidence of plans to use a disputed domain name may be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Sony Pictures Television Inc. v Thomas, Jeff, FA 1625643 (Forum Aug. 6, 2015) (holding that “Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant’s arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith.”).
The Panel finds that the abovementioned evidence regarding origin of the disputed domain name, date of its registration, its use for email, and plans for expanded use, constitute sufficient evidence of Respondent's rights or legitimate interests in the disputed domain name.
As mentioned above, the registration of the disputed domain name predates Complainant’s trademark registration by more than 15 years, and Complainant does not provide evidence of any common law rights in the name LEUMAS before the registration of the disputed domain name. The Panel observes that the trademark record of Complainant’s mark mentions January 31, 1998, as the date of first use of the mark. However, the Panel finds that this claimed date of first use is not sufficient to prove that the mark actually was used and valid at that date. Moreover, the same trademark record mentions January 1, 2003 as the date of first use in commerce, which is after the registration of the disputed domain name. In any event, common law rights in a mark should be proven by substantive evidence, which is inexistent in this case.
In the Panel’s view, it follows from the above that Complainant cannot prove registration in bad faith per Policy ¶ 4(a)(iii). See Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). As the Policy requires a showing of bad faith registration and use, Complainant fails on this element. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”).
Nevertheless, the Panel adds that there is no evidence of any bad faith use of the disputed domain name by Respondent. Contrary to Complainant’s allegations, as noted above, the disputed domain name has been actively used to send and receive emails. Complainant was also aware of this as it sent numerous emails to an email address linked to the disputed domain name. Through these emails, Complainant has harassed Respondent about purchasing the disputed domain name from Respondent, even after Respondent’s reply that the disputed domain name was not for sale.
The Panel observes that at no point in the years that Complainant offered to purchase the domain name did Complainant make any suggestions that the Respondent’s registration was made in bad faith. See ACE Limited v. WebMagic Ventures, LLC, FA0802001143448 (Forum Apr. 8, 2008) (<ace.us>) (holding that “Pre-dispute communications between Complainant and Respondent are highly relevant, and concealment of such communications by Complainant erodes Complainant’s credibility”); and Gold Coast Tourism Corporation Ltd. v. Digimedia.com L.P., D2013-1733 (WIPO November 13, 2014). The Panel therefore finds that Respondent registered and uses the disputed domain name in good faith per Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
The Panel finds that the present case is a classic Plan B case, in which Complainant initiated UDRP proceedings following unsuccessful attempts to purchase the disputed domain name in order to force the transfer of the disputed domain name. Complainant pursued the Respondent’s principal to purchase the disputed domain name by sending more than a dozen emails to his “@leumas.com” email address as well as to his official government account. The Panel finds that Complainant misrepresented the facts by failing to mention these communications in its Complaint and by stating that the disputed domain name is not being used, despite receiving at least one email from the “@leumas.com” email address in which Respondent clearly stated that the disputed domain name was not for sale. The Panel also observes that Complainant filed its application for the LEUMAS mark about 10 years after this communication from the Respondent’s principal. In the Panel’s view, the Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in disputed domain name and that Respondent registered and is using the disputed domain name in bad faith. The above circumstances support a finding of reverse domain name hijacking. 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 (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”).
While this arbitration Panel is not permitted to award costs and fees, Respondent may choose to pursue other remedies under applicable law.
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 <leumas.com> domain name REMAIN WITH Respondent.
Flip Petillion, Presiding Panelist
Richard W. Hill and Carol Stoner, Panelists
Dated: July 26, 2023
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