WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LERINS & BCW v. Domain Administrator, NameFind Cayman Islands Ltd.
Case No. D2021-1861
1. The Parties
The Complainant is LERINS & BCW, France, represented internally.
The Respondent is Domain Administrator, NameFind Cayman Islands Ltd., United Kingdom, represented by Levine Samuel, LLP, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <lerins.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. The Response was filed with the Center July 1, 2021.
The Center appointed Luca Barbero, Emmanuelle Ragot and Andrew D. S. Lothian as panelists in this matter on July 23, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant in the present dispute is an Economic Interest Group (“EIG”), originally established in France on November 27, 2006, under the name LERINS. The consortium was constituted by a number of French lawyers’ practices, who joined efforts for competitive advantage and cost sharing purposes. The LERINS EIG is the original owner of the LERINS trademark further described below.
In mid-December 2007, the members of the LERINS EIG decided to regroup themselves in an “Association d’Avocats à Responsabilité Professionnelle Individuelle” (“A.A.R.P.I.”) – which is the equivalent under French law of a Limited Liability Partnership of lawyers under the laws of England – in which they practiced together from January 1, 2008, changing their name to LERINS Avocats. On January 2, 2008, the LERINS EIG granted a license of the LERINS trademark for an undetermined duration to LERINS Avocats, to allow the latter to use the said trademark for the needs of its business.
On January 2, 2013, LERINS Avocats changed its name into LERINS JOBARD CHEMLA Avocats and continued to carry out an international activity for foreign clients having legal needs in France, being for instance the French member of the network of independent international law firms named “Multilaw”.
On December 31, 2017, the members of LERINS JOBARD CHEMLA Avocats dissolved this association to create a new A.A.R.P.I. with other lawyers, and the LERINS EIG consequently terminated the trademark license for LERINS, but on January 1, 2018, the new A.A.R.P.I., named LERINS & BCW, started its activity and on January 2, 2018, the LERINS EIG granted to LERINS & BCW A.A.R.P.I. a trademark license of the LERINS trademark, once more for an undetermined duration, to allow LERINS & BCW to use the said trademark for the needs of its business.
On December 1, 2020, LERINS EIG was dissolved and appointed as its liquidator, the company ACTEON. By virtue of this appointment, ACTEON was granted the broadest powers to sell the assets of the LERINS EIG, including the LERINS trademark.
On December 7, 2020, the liquidator of the LERINS EIG terminated the trademark license granted to LERINS & BCW and the LERINS trademark was sold to the Complainant by transfer agreement of December 8, 2020. Copy of the transfer agreement has been submitted as Annex 16 to the Complaint, along with the application for recordal of the assignment of the trademark from LERINS EIG to the Complainant filed on June 3, 2021 with the French Patent and Trademark Office.
The Complainant is currently in the process of renewing its marketing and communication plan and tools, as well as its brand, and is about to reduce its name to the sole “LERINS”.
The Complainant has provided evidence of ownership of the French trademark registration No. 3477894 for LERINS (word mark), filed and registered on January 26, 2007, in international classes 35, 36 and 45.
The Complainant is also the owner of the domain name <lerinsbcw.com>, which was registered on November 29, 2016 and is used by the Complainant to promote its legal services under the LERINS trademark.
According to the WhoIs information, the disputed domain name <lerins.com> was created on May 31, 2009, and is pointed to a parking page with sponsored links where the disputed domain name is also being offered for sale.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the LERINS trademark in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain “.com”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has made no demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain in connection with a bona fide offering of goods or services.
The Complainant also submits that the Respondent is not known by the disputed domain name and that, on the contrary, the Respondent is a special purpose company whose main aim is to transfer thousands of domain names initially owned by Frank Schilling’s Name Administration Inc., an online media network whose known business was to “operate thousands of generic domain names for paid search and development purposes and to register domain names”.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered the disputed domain name with the intent of selling, renting or otherwise transferring the domain name registration to the owner of the LERINS trademark, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The Complainant states that, upon expressing its interest for the disputed domain name, the Registrar replied that the disputed domain name could be acquired for a price of USD 9,888 and, considering the disputed domain name appraisal value and DNI score from AFTERNIC of December 2, 2020, confirmed the real value was USD 3,000, it is highly likely that the Respondent and the Registrar, which belong to the same group of companies, were attempting to make a profit out of the sale of the disputed domain name, in trying to sell it at more than three time its normal value.
The Respondent replied to the Complainant’s allegations, stating that the Respondent is one of the most distinguished companies in the United States active in the business of acquiring and reselling generic domain names and that it was acquired by Godaddy in February 2020 together with Uniregistry.
The Respondent highlights that the disputed domain name was first registered on March 15, 1999, and has been renewed by a number of successors without incident since that time. The Respondent further contends that it acquired the disputed domain name on December 18, 2020, for its intrinsic value, as the word “Lerins” also corresponds to a French or Scottish family name. The Respondent also states that it had no knowledge of the Complainant or its trademark until receiving the Complaint.
The Respondent further emphasizes that the Complainant seems to rely heavily on its trademark registration and world renown but has not considered the fact that the disputed domain name existed long before the Complainant’s trademark was ever registered and the Complainant has made no allegations against any other prior registrant of the same.
The Respondent asserts that it acquired the disputed domain name in fulfilling its business objectives, namely purchasing and offering for sale, domain names composed of generic terms (including dictionary or common words, phrases, acronyms, family names) that it believes are marketable to future brand owners and others for commercial or private addresses on the Internet.
Moreover, the Respondent highlights that, though the Complainant may have obtained a recent trademark registration for LERINS in Europe in connection with its legal services, it has no particular reputation in other countries like the United States, and the Complainant supplied insufficient proof to corroborate its claims that the Respondent had the Complainant in mind when acquiring the disputed domain name.
The Respondent further underlines that, considering the extensive number of commercial users worldwide for the sign LERINS, it makes no sense that the Complainant should have more right than anyone else to the disputed domain name and asserts that a party who has a desire for a “crucial asset” cannot simply deprive a current registrant of its property without proof that the registrant was in violation of the Policy, which the Complainant can in no way prove since the Respondent makes no reference at all to the Complainant on the website at the disputed domain name, containing no infringing links to law related businesses.
Lastly, the Respondent indicates that the Complainant was obviously impelled to commence the present UDRP case in an attempt to seize the disputed domain name from the Respondent, only after reaching out to the previous registrant after it found out about the offering price of the disputed domain name. In this respect, the Respondent asserts that inquiring about the price of a domain name and then initiating a UDRP proceeding should be seen as abusive conduct on the Complainant’s part and the Complainant should be sanctioned for Reverse Domain Name Hijacking.
With regards to the trademark LERINS on which the Complainant relies, the Respondent underlines that it is highly unlikely that the Complainant ever was a licensee of LERINS in its own name, since it was only formed on December 8, 2020, and became the trademark owner on that date when it purchased the trademark from the liquidator. The Respondent also notes that the Complainant’s trademark does not appear to be currently reflected in the trademark records. The Respondent does however conclude by saying that, if the Complainant does currently result as being the owner of the LERINS trademark, then it satisfied the first requirement whether or not it had any right as a licensee.
As to the issue of rights or legitimate interests in respect of the disputed domain name, the Respondent states that the Complainant has offered no proof as to its contentions and that, asserting that the lack of rights and legitimate interest is to be found simply in the fact that the Respondent is in the business of buying and selling domain names, is insufficient, especially considering that the Policy does not require that the registrant use the domain name, in order to have rights or legitimate interests in it.
With reference to the circumstances evidencing bad faith, the Respondent indicates that, considering the Complainant fails to establish the requirements of paragraph 4(a)(ii) of the Policy, being an element necessary for a finding of abusive domain name registration and use, there is no reason to address this issue.
However, the Respondent specifies that, should the Panel in any case need to assess this requirement, it should be pointed out that the Complainant’s assertions go against those of the Policy, as the Complainant asserts that because it has a legitimate interest in using the disputed domain name due to its rights in the trademark, the Respondent, and any other predecessor who owned the disputed domain name, must have registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the owner of the corresponding trademark or service mark for valuable consideration in excess of the Respondent’s out-of-pocket costs.
The Respondent also addresses the issue of prior knowledge and emphasizes that there is no way in which it could have known about a French law business that came into existence only a few days before the Respondent acquired the disputed domain name and that the Complainant has not supplied any evidence to the contrary.
Lastly, the Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking, stating that the Complainant initiated the present UDRP proceeding only once it had made enquiries about the price of the disputed domain name with a prior registrant.
In view of the above, the Respondent requests that the Complaint be dismissed.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark LERINS based on the trademark registration cited under section 4 above, the related trademark certificate submitted as annex 3 to the Complaint and the transfer agreement along with the request for recordal of assignment of the trademark submitted as annex 16 to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Complainant’s trademark LERINS is entirely reproduced in the disputed domain name, with the mere addition of the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.”
In the case at hand, the Complainant states that the Respondent was not authorized to use the Complainant’s trademark, has not been commonly known by the name “Lerins” and has not been using the disputed domain name in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.
The Respondent has rebutted the Complainant’s contentions stating that it had purchased the disputed domain name in good faith for its intrinsic value as a French or Scottish surname, since it was simply fulfilling its business objectives, namely purchasing and offering for sale to the general public, domain names composed of generic terms (dictionary or common words, phrases, acronyms, family names) that it believes are marketable to future brand owners and others for commercial or private addresses on the Internet. In support of such claims, the Respondent cited additional worldwide trademark registrations encompassing the term “Lerins”, particularly a trademark registration, now expired, in the fictitious name “Claude Lerins”.
Based on the documents and statements submitted by the Parties, the Panel finds that the Complainant has failed to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name as it did not demonstrate that the Respondent intended to target the Complainant’s trademark. Indeed, the Panel finds that the Complainant has not proved that its trademark LERINS has been registered outside France and has been benefiting of an international notoriety which could have been known and not ignored by the Respondent. Moreover, there is no evidence that the Respondent may have targeted the Complainant in the use of the disputed domain name, as the correspondent website features pay-per-click links unrelated to the Complainant and its business.
As highlighted in section 2.9 of the WIPO Overview 3.0, the use of a domain name to host a page comprising pay-per-click links would be permissible and, therefore consistent with respondent rights or legitimate interests under the Policy, where “the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. While the pay-per-click links in the present case do not appear to be related to the family name “Lerins”, they do not appear to trade off the Complainant’s (or a competitor’s) trademark.
On the other hand, the Panel finds that the Respondent has demonstrated that, on balance of probabilities, it has a legitimate interest in the disputed domain name, that it registered for investment purposes due to its own intrinsic value as a domain name of potential interest for several third parties, being also corresponding to a common family name. The Panel also notes that – although the Parties did not mention such circumstance -, the term “Lerins” encompassed in the disputed domain name corresponds, amongst others, to the name of a geographic archipelago off the coast of Cannes, i.e. the Lérins Islands, to which some of the sponsored links displayed on the Respondent’s website refer.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that the Complainant has failed to demonstrate that the disputed domain name was registered and used by the Respondent in bad faith, since there is no element in this case that could demonstrate that the Respondent, on balance of probabilities, intended to target the Complainant and its trademark though the registration and use of the disputed domain name.
Indeed, the Panel notes that the Complainant supplied no proof as to the Respondent’s prior knowledge of the Complainant and its trademark, of the Respondent’s intent to target the Complainant’s rights or of its alleged online presence, nor is there any evidence of the Complainant’s prominence in the Respondent’s location, which could have justified in any way the Respondent’s knowledge of the Complainant and its trademark. Moreover, there is no evidence that the international fame of the Complainant’s trademark transcends its value as a surname and that that disputed domain name might have been used to target legal services, whether through pay-per-click links or otherwise.
Furthermore, as highlighted above, the circumstances of the case are consistent with the proposition that the Respondent registered the disputed domain name for its inherent value as a surname.
In view of the circumstances of the case, in particular the nature of the term incorporated in the disputed domain name, the Respondent’s offer for sale of the disputed domain name does not demonstrate that it registered and is using the disputed domain name in bad faith, i.e., with a view to selling it to the Complainant. In addition, the Complainant’s bad faith argument merely relies on an offer received from the disputed domain name exceeding an aftermarket valuation, which was transmitted to the Complainant by a Respondent’s predecessor in title and is not sufficient to demonstrate that the Respondent intended to sell the disputed domain name to the Complainant.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking for the following reasons:
i) the Complainant should have appreciated the weakness of its case and the fact that the term “Lerins” encompassed in the disputed domain name cannot be exclusively referable to the Complainant;
ii) the Complainant’s case is based on the argument that offering a disputed domain name for sale for an amount exceeding the related out-of-pocket costs, independently of any awareness of the Complainant and its trademark, is of itself evidence of bad faith. The Panel finds that the Complainant should have contemplated that it could not succeed with such an argument;
iii) the circumstances of the case clearly show that this is a speculative case brought by the Complainant after its failure to purchase the disputed domain name from the Respondent’s predecessor in title (see, for example Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 on this topic).
Accordingly, the Panel finds that the Complaint was brought in bad faith in an attempt to deprive the Respondent of the disputed domain name.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: August 7, 2021