WIPO Domain Name Decision D2009-1589 for leyton.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra Case No. D2009-1589 1. The Parties

The Complainants are Leyton & Associés (SAS) of Saint Cloud, France; Thésée (SAS) of Saint Cloud, France; Leyton Consulting UK and Ireland Limited of Dublin, Ireland; Leyton Maroc of Casablanca, Morocco; Leyton Belgium of Bruxelles; Belgium and Leyton UK Limited of London, United Kingdom of Great Britain and Northern Ireland, collectively represented by IXAS Conseil of France.

The Respondent is Drela Mateusz, Elephant Orchestra of Prague, Czech Republic, represented by Greenberg & Lieberman of United States of America. 2. The Domain Name and Registrar

The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2009. On November 26, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 30, 2009, Network Solutions, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2009. The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 24, 2009.

On December 9, 2009, the Respondent's representative sent an email to the Center requesting a twenty day extension of the due date for Response. On December 10, 2009, the Complainant objected to such request, which was declined by the Center on December 11, 2009. The Response was filed with the Center on December 22, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on January 6, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background

The Complainants (hereinafter also referred to as the “Complainant”) are providing consultancy services in the field of business organization, tax consulting and financing innovation. The Complainant maintains offices in Ireland, the United Kingdom, France, Belgium and Canada. The name “Leyton” was first used by the Complainant in September 2006.

The Complainant owns the following trademark applications containing the term LEYTON:

- French trademark application no. 09/3644968 LEYTON, filed on April 20, 2009;

- French trademark application no. 09/3678731 LEYTON and device, filed on September 24, 2009;

- Community trademark application no. 008442881 LEYTON, filed on July 22, 2009;

- Canadian trademark application no. 1444858 LEYTON, filed on July 15, 2009; and

- French trademark application no. 053349736 LEYTON & ASSOCIÉS, filed on March 17, 2005.

The Complainant maintains several websites to advertise its services on the Internet, using the domain names , , , , , and .

The disputed domain name was first registered in 1997 and expired on September 16, 2009. The Respondent acquired the disputed domain name on October 25, 2009 at a price of USD 1,800.

On October 27, 2009, the Complainant's representative contacted the Respondent and wanted to buy the disputed domain name for the amount of EUR 1,000. Having been asked for a higher offer by the Respondent (“a mid five figure”), the Complainant then offered EUR 10,000. The negotiations failed when the Respondent stated that he would accept an offer of EUR 40,000 for the disputed domain name.

The disputed domain name was first used in connection with a domain parking website and a “coming soon” page on November 23, 2009. 5. Parties' Contentions A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is confusingly similar to the Complainant's trademarks and company names. The Complainant claims that it owns several LEYTON trademarks.

(2) The Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to register a domain name incorporating its trademark, that the Respondent does not hold any trademark rights in respect of the disputed domain name, that the Respondent is not commonly known by the disputed domain name or a name corresponding to the disputed domain name, that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services as the domain name is used in connection with a parking website, and, finally, that the domain name is not used in a non commercial way.

(3) The Complainant finally claims that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant states that the Respondent has acquired or registered the disputed domain name in bad faith after having identified the Complainant's prior trademark rights. Furthermore, the Complainant contends that the Respondent is a domain name trader acquiring and registering a large number of domain names and as such is under an obligation to verify the absence of prior trademark rights and that the failure of such verification can be an indication of bad faith. The Complainant further submits that the Respondent is acting in a pattern of registering third parties' trademarks as domain names as he was already ordered to transfer a domain name in a previous UDRP proceeding. The Complainant finally contends that the Respondent's offer to sell the domain name to the Complainant for EUR 40,000 is further evidence of bad faith registration and use. B. Respondent

The Respondent denies the Complainant's allegations. The Respondent states that he is in the business of buying generic domain names and creating websites based on the meaning of such domain names with a particular focus on names with geographical significance. The Respondent submits that Leyton is a place in the northern part of Greater London and therefore a geographical identifier and generic. The Respondent further contends that the term Leyton is substantially used by third parties as a surname and trademark, and that a search for Leyton on Google yields 3.5 million hits, most of which have nothing to do with the Complainant.

The Respondent alleges that he registered the disputed domain name to use it in connection with a website providing information on the Leyton area. After acquiring the disputed domain name he first gained access to the disputed domain name (including the possibility to modify the DNS and change the website at such domain name) on November 16, 2009.

With regard to the Complainant's alleged rights in Leyton, the Respondent asserts that such term is not inherently distinctive and that the Complainant did not provide evidence that it acquired any secondary meaning therein or that its trademarks are well-known.

As to the Respondent's own rights or legitimate interests in the disputed domain name, the Respondent submits that he has a legitimate interest based on the fact that Leyton is a geographical identifier and that he acquired the domain name at a price of USD 1,800 with the intention of building a website related to the Leyton area.

Finally, with regard to bad faith registration and use, the Respondent contends that he had no knowledge of the Complainant or its marks when he obtained the disputed domain name but registered such domain name because of its geographical significance. The Respondent further explains that he did not acquire the disputed domain name with the intent to sell it to the Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers. The Respondent submits that it was the Complainant who initiated the Respondent's offer to sell the disputed domain name and that the Complainant is therefore precluded from claiming that the Respondent forfeited any rights to such domain name.

The Respondent asks for a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings

The individual Complainants all belong to the Leyton group of companies and may therefore constitute a single entity for the purposes of the UDRP (see L'ORÉAL SA and L ancôme Parfums et Beaute et Compagnie v. MyFashionF LLC, Will Turnage,WIPO Case No. D2009-0729; L'Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix,WIPO Case No. D2006-0869; Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling,WIPO Case No. D2008-0226).

Under paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the complainant's trademark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant's LEYTON trademark applications.

There is no evidence on the case file that any of the above-listed applications (cf. 4.) matured to registration. Still, the Complainant claims trademark rights under paragraph 4(a)(i) of the Policy.

As to the name LEYTON, again based on the evidence before the Panel, the Complainant has not established that it has become a distinctive identifier associated with the Complainant or its goods and services, thereby conferring trademark rights under paragraph 4(a)(i) of the Policy on the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Uitgeverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575; Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322).

However, in the light of the Panel's finding below (cf. 6.C.) it is not necessary to decide whether the Complainant owns trademark rights in LEYTON under paragraph 4(a)(i) of the Policy, and the Panel has therefore refrained from issuing a Panel Order asking the Complainant to supply evidence of its trademark rights in LEYTON. B. Rights or Legitimate Interests

In the light of the Panel's finding below (cf. 6.C.) it is not necessary for the Panel in this regard either to come to a decision. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive. The Complainant must show that the domain name was registered in bad faith and is being used in bad faith (see Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).

The Complainant alleges the following with regard to the Respondent's bad faith: The Respondent knew of the Complainant's prior trademark rights when registering the disputed domain name, as a domain name trader the Respondent was under an obligation to verify the absence of third parties' trademark rights, the Respondent was already ordered to transfer a domain name in a previous UDRP proceeding, and the Respondent offered to sell the domain name to the Complainant at a price of EUR 40,000. Having carefully considered the facts presented in the case file, on the balance of evidence, the Panel is not satisfied that the Respondent registered the disputed domain name in bad faith for the following reasons:

The Complainant did not provide any evidence that the Respondent registered the disputed domain name with knowledge of the Complainant's possible rights in the term Leyton. The Complainant neither claims business activities in the Czech Republic, where the Respondent is located, nor any other circumstances supporting the assumption that the Respondent should have been aware of the Complainant and its possible rights in the term Leyton at the time of the registration of the disputed domain name. The Complainant does not indicate the size of its consultancy business by supplying e. g. annual turnover figures or the number of its employees, nor does it mention any expenditure related to advertising in relation to the name or mark Leyton, which was first used by the Complainant only in 2006. Moreover, Leyton also is an area of East London and therefore a geographical identifier as well as a fairly common surname in the English language. To sum up, there are no facts or compelling evidence in this proceeding indicating why the public should identify the term Leyton with the Complainant. It seems to this Panel at least as likely as not that the Respondent, who is doing online business in the United Kingdom, acquired the disputed domain name because of its generic meaning and not with a view to the Complainant's possible rights, and in that sense, the benefit of the doubt on the present record must be afforded to the Respondent.

The fact that the Respondent is a professional domainer does not automatically lead to the assumption that the disputed domain name was registered in bad faith either; Some evidence is required, and the standard tends to be somewhat higher in cases involving geographical identifiers and marks that are less distinctive. There are cases where a finding of bad faith registration can indeed be confirmed by the specific circumstances of a respondent's so-called ‘wilful blindness', even if the respondent did not specifically know of the complainant or of its trademark rights when it registered the disputed domain name (see Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI),WIPO Case No. D2008-1216). However, theses decisions must be distinguished from cases like the present where the disputed second level domain name is a geographical identifier and where the complainant's trademark rights are on the weaker end of the spectrum, in particular as they are neither internationally known nor appear as the prominent result of a Google search (see Mahindra & Mahindra Limited v. Portfolio Brains LLC,WIPO Case No. D2009-0209). After all, the registration of domain names because of their attraction as generic terms is a business model permitted under the Policy, and there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties' rights.

The Respondent Elephant Orchestra was involved in one earlier UDRP proceeding resulting in the transfer of the disputed domain name. In the view of the Panel, this fact is on its own (without any other evidence supporting bad faith registration) not sufficient to establish bad faith through a pattern of conduct where the domain name was registered in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name. Such pattern requires a purpose and goal-oriented behavior, which has not been established in the present case, e.g. by quoting numerous earlier decisions against the Respondent under the Policy or by presenting evidence that the Respondent is aiming at activities in the Complainant's field of business. Again taking into account all the facts presented to the Panel, it seems at least plausible that the Respondent registered the disputed domain name in order to build a website related to the Leyton area.

Finally, the Panel finds that the Respondent did not register the disputed domain name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. The Respondent was first contacted by the Complainant asking him to sell the disputed domain name. The fact that when approached by someone you are in principle willing to discuss sale of a domain name does not in itself constitute bad faith (see Pacific Place Holdings Ltd.. v. Richard Greenwood,WIPO Case No. D2000-0089; Open Systems Computing AS v. Alberto degli Alessandri,WIPO Case No. D2000-1393; esop GmbH v. Richard Connolly,WIPO Case No. D2001-1389). There is no evidence in the present case that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant. Therefore, although the Respondent's offer to sell the domain name to the Complainant at a price of EUR 40,000 is in excess of his documented out-of-pocket costs directly related to the domain name, the Panel finds that the Respondent did not act in bad faith under paragraph 4(b)(i) of the Policy.

Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established. This Complaint must therefore fail. 7. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, paragraph 15(e) of the Rules provides as follows: “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.” In the present case, where the Complainant has at least been doing business under a name identical to the second level domain name for several years, Panel finds, insufficient grounds for a reverse domain name hijacking order. 8. Decision

For all the foregoing reasons, the Complaint is denied.

Brigitte Joppich
Sole Panelist

Dated: January 20, 2010

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