LE TIGRE 360 GLOBAL, LLC v. LeTigre
Claim Number: FA1606001681089
Complainant is LE TIGRE 360 GLOBAL, LLC (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is LeTigre (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <letigre.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2016; the Forum received payment on June 24, 2016.
On June 27, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <letigre.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 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2016 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 postmaster@letigre.com. Also on June 28, 2016, 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 15, 2016.
Additional Submissions were received from both Parties on June 20 and 25, 2016 in accordance with Supplemental Rule 7.
On July 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
A. Complainant
Complainant is the owner by assignment of the LE TIGRE brand. Complainant’s predecessor registered the LE TIGRE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,186,863, registered Jan. 19, 1982). Complainant owns numerous other registrations for the LE TIGRE mark, including Denmark Reg. No. VR 199304124 for the LE TIGRE word mark registered in 1993. As the LE TIGRE mark is completely included in the disputed domain, the <letigre.com> domain is identical and confusingly similar to the mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <letigre.com> domain name. There is no evidence that suggests Respondent is commonly known by the disputed domain name. Currently, Respondent is not associating the disputed domain with any content, which fails to amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used the disputed <letigre.com> domain in bad faith. The disputed domain “unquestionably” changed ownership since it was first created. Respondent has demonstrated Policy ¶¶ 4(b)(iii) and (iv) through its inactive holding. Respondent had knowledge of the LE TIGRE mark at the time of registration.
B. Respondent
LE TIGRE is a common phrase in French, and constitutes a generic term. Complainant’s LE TIGRE mark is a stylized mark.
Respondent operates as an integrated technology sales and business practices consulting company in Texas. Until recently, Respondent was commonly known by “LeTigre Solutions, Inc.” as a corporate name, and has been in business since 1995. Respondent has used the disputed domain for business inbound and outbound email, ftp, for more than 20 years, and does not need to associate the website with active content to establish rights and legitimate interests.
Respondent did not register and use the disputed domain in bad faith. Respondent has been approached by many third parties, including Complainant, proposing to buy the domain. Respondent notified all interested parties that it did not want to sell the domain. Respondent has not prevented Complainant from reflecting its mark online or conducting business online. Respondent has not competed with Complainant, or intended to confuse Internet users. Respondent did not know of Complainant at the time of registration.
C. Additional Submission—Complainant
Respondent misstates Complainant’s rights in the LE TIGRE mark, distilling Complainant’s showing to only a design mark. Complainant owns a number of registrations for the mark, which include word and design marks.
Respondent provides no evidence that LE TIGRE is a generic phrase, and in fact is an arbitrary mark when used in connection with retail services related to the mark. Respondent’s claimed company, “LeTigre Solutions, Inc.,” is a prior name, the current name is “Exebridge, Inc.,” which took effect November 25, 2014. For a period of time, the disputed domain redirected to <exebridge.com>, while the resolving page stated, “LSI evolved into Exebridge.
While Respondent ceased operating as LeTigre Solutions, Inc., changing its name to Exebridge, Inc., Complainant states, “[A]ny rights Respondent may have had were abandoned at that time.”
D. Additional Submission—Respondent
Respondent did not know of Complainant at the time of registration because it operates in a different geographic region and offers goods/services that differ from Complainant.
While records for Respondent’s registration of the disputed domain are not available prior to 2003, Respondent provides documentation of payments made for the disputed domain since 2003.
Respondent operated for 19 years under the name LeTigre Solutions, Inc. and officially changed its name in 2014 to “Exebridge, Inc. (FKA) (formally known as) LeTigre Solutions, Inc.”
Complainant, LE TIGRE 360 GLOBAL, LLC, is the owner by assignment of the LE TIGRE brand. Complainant’s predecessor registered the stylized LE TIGRE mark with the USPTO (Reg. No. 1,186,863, registered Jan. 19, 1982). Complainant owns numerous other registrations for the LE TIGRE mark, including Denmark Reg. No. VR 199304124 for the LE TIGRE word mark registered in 1993. Complainant has rights in the stylized LE TIGRE mark dating back to 1982 through registration with the USPTO and rights in the LE TIGRE word mark dating back to 1993 through registration in Denmark. Respondent’s <letigre.com> domain name is identical to the LE TIGRE word mark under Policy ¶ 4(a)(i).
The <letigre.com> domain name was registered on October 3, 1995.
Respondent, LeTigre, operates as an integrated technology sales and business practices consulting company in Texas. For over 20 years, Respondent used the <letigre.com> domain name that in its business, LeTigre Solutions, Inc., as an inbound and outbound email, ftp. Respondent has never developed a website with active content.
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 has rights in the stylized LE TIGRE mark dating back to 1982 through registration with the USPTO. However, Panels have concluded that stylized marks cannot be considered confusingly similar to the plain text of a domain name. See Advanced Educ. Sys., LLC v. Bean FA 948593 (Forum May 23, 2007) (“Although Complainant possesses federal registrations for the marks … the rights conferred by these [sic] USPTO are limited to the distinctive graphical manner in which the marks are actually depicted and do not confer exclusive rights to the ‘traingingpro’ in other forms and styles and most certainly do not confer exclusive rights in the common, descriptive phrase ‘training pro.’”).
However, Complainant has rights in the LE TIGRE word mark dating back to 1993 through registration in Denmark . Respondent’s <letigre.com> domain name is identical to the LE TIGRE word mark under Policy ¶ 4(a)(i). The only changes to the mark are omitted spacing and adding a TLD.
While Respondent contends that the <letigre.com> domain name is comprised of a common and generic term and as such cannot be found to be identical to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the <letigre.com> domain name, nor has Complainant given Respondent authorization or permission to use its marks in the registration of domain name. Complainant also notes that Respondent ceased operating as LeTigre Solutions, Inc., changing its name to Exebridge, Inc. in 2014, and Complainant contends that “[A]ny rights Respondent may have had were abandoned at that time.”
Additionally, as the disputed domain name fails to resolve to an active website, Complainant argues Respondent’s failure to make an active use demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Panels have found no rights or legitimate interests where a respondent has failed to make an active use of a disputed domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Respondent claims it operates as an integrated technology sales and business practices consulting company in Texas. Respondent argues that it is commonly known by “LeTigre Solutions, Inc.” as a corporate name, and has been in business since 1995. Respondent claims it has used the disputed domain for business inbound and outbound email, ftp, for more than 20 years, and does not need to associate the website with active content to establish rights and legitimate interests.
For more than 20 years, Respondent used the <letigre.com> domain name for an email address corresponding to the distinctive portion of its business name. See Wilserve Corporation v. Willi Kusche, D2007-0004 (WIPO Feb. 26, 2007) (Although the respondent never created a website using the disputed domain name, the panel stated “The policy, paragraph 4(c), does not require that the Domain Name be used for a website; using the Domain Name for business email addresses also satisfies the letter and spirit of the Policy.”); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). Therefore, the Panel concludes that Complainant has failed to make out a prima facie showing under Policy ¶ 4(a)(ii).
Complainant has also failed to show that Respondent’s use of the <letigre.com> domain name amounts to bad faith registration and use under Policy ¶ 4(a)(iii). See Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where the respondent was using the domain name in connection with its business even though no website was yet developed); see also Wilserve Corporation v. Willi Kusche, D2007-0004 (WIPO Feb. 26, 2007).
Complainant 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 <letigre.com> domain REMAIN WITH Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 8, 2016
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