LeBoeuf Corporation (“Complainant”), represented by Jeffrey M. Rosenfeld of KRONENBERGER ROSENFELD, LLP, California, USA, has just been found guilty of Reverse Domain Name Hijacking on the domain Leboeuf.com
“”The three member panel of the Honorable Karl V. Fink (Ret.) (Chair), David J. Steele Esq., and The Hon Neil Anthony Brown QC found that the domain name was generic as the term “le boeuf” is French for “the beef” or “the ox”; found that the complainant had no registered trademark, did not prove a common law mark and despite asking for $500,000 for the domain, the domain holder’s registration of the domain was not in bad faith.
Here are the highlights:
“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.”
“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).
Respondent argues that the term of the 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).
Complainant contends that Respondent uses the 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 domain name in bad faith because the resolving website constitutes an inactive use.
Respondent argues that its registration of the 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 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 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).
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.
Respondent has established Reverse Domain Name Hijacking.”””
