WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FTR v. Synopsys Inc.

Case No. D2010-1264

1. The Parties

The Complainant is FTR of Bondues, France represented by BRM AVOCATS of France.

The Respondent is Synopsys Inc. California, United States of America represented by Fenwick & West, LLP of United States of America.

2. The Domain Name and Registrar

The disputed domain name <lmc.com> is registered with CSC Corporate Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email to CSC Corporate Domains, Inc. a request for registrar verification in connection with the disputed domain name. On August 18, 2010, CSC Corporate Domains, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 7, 2010. The Response was filed with the Center on September 7, 2010. On September 29, 2010, the Complainant submitted a Supplemental Filing, receipt of which the Center acknowledged on the same day. The Panel accepts this Supplemental Filing for its consideration.

The Center appointed John Swinson, Michelle Brownlee and Christophe Caron as panelists in this matter on September 23, 2010. 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 is a holding company with four subsidiaries, LMC Ile de France, LMC Region Sud, LMC Benelux and Etablissements LEON MASSON. The Complainant did not provide any information about its business. From a brief review of the Complainant’s website, the Panel understands it to be a French company selling items such as kitchen cabinets, light fixtures and blinds.

The Complainant is the owner of French trademark registration no. 1360521 for LMC, filed on June 24, 1986. This trademark was originally registered by one of its subsidiaries, Etablissements LEON MASSON, and was assigned to the Complainant on June 1, 2010. The Complainant also owns two other trademarks for LMC.

The Respondent sells software for the design of integrated circuits.

The disputed domain name was registered on April 29, 1992 by Logic Modeling Corporation, which was acquired by the Respondent in 1994. The disputed domain name resolves to the website “www.synopsys.com”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

The Complainant has intellectual property rights in the following trademarks:

- French trademark registration no. 1360521 for LMC filed on June 24, 1986 (originally registered by one of the Complainant’s subsidiaries);

- French trademark registration no. 10/3750320 for LMC, filed on June 30, 2010; and

- Community Trade Mark registration no. 009213729 for LMC filed on June 30, 2010.

The Complainant has licensed its subsidiaries to use French trademark registration no. 1360521 for LMC. The Complainant is also owner of the domain name, <lmc.tm.fr>, which resolves to a website that sells products from the Complainant’s companies.

The disputed domain name reproduces trademarks in which the Complainant has rights.

The Respondent does not own any rights in the LMC mark. Since the merging of the company, the Logic Modeling Corporation and the Respondent, the disputed domain name has not been used by the Respondent; instead the disputed domain name resolves to the website “www.synopsys.com”. The Respondent does not use the LMC mark, and does not hold a trademark for this term. Therefore the Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith, as the Respondent is prepared to sell it for USD125,000. This shows that the Respondent’s intent was to parasitize the activities of the Complainant and to take advantage of the sale of the domain name. The Respondent has not made commercial use of the disputed domain name in good faith. The Respondent has continued to renew the disputed domain name, however has never used it.

Due to the fact that both parties have been in communication earlier this year, the Respondent is unable ignore the existence of the trademarks. The Respondent has attempted to block an attempt by the Complainant to develop internationally, by preventing it from using the generic level domain “.com”. Together all of these elements show the bad faith of the Respondent’s actions.

In its Supplemental Filing, the Complainant again states that as the Respondent does not use the disputed domain name, it does not have rights or legitimate interests in the disputed domain name. The Complainant concedes that the Logic Modeling Corporation did not register the disputed domain name in bad faith. Rather it contents that the renewal of the disputed domain name by the Respondent after acquiring the disputed domain name was in bad faith. The Complainant further contents that the Respondent’s behaviour prevents it from developing internationally on-line.

B. Respondent

The Respondent makes the following submissions and arguments:

The Respondent acknowledges the Complainant’s trademarks.

The Respondent acquired the disputed domain name as part of its acquisition of the Logic Modeling Corporation in 1994. The Logic Modeling Corporation had rights or legitimate interests in the disputed domain name, firstly because they obtained and used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services eighteen years prior to this dispute, and secondly, because they were known by the initials “LMC”.

The Respondent has used and maintained the disputed domain name since acquiring it from the Logic Modeling Corporation. It is the Respondent’s policy, consistent with industry practice, to keep and maintain key domain names that are obtained via mergers and acquisitions. The disputed domain name resolves to the Respondent’s website, “www.synopsys.com”. Such use is practical, customary in the technology field and reflective of residual goodwill, as users seeking information about the acquired company or any related technology must use the disputed domain name. In fact, the Logic Modeling Corporation’s technology is still an active part of the Respondent’s business.

Given the disputed domain name is a properly acquired asset of the Respondent, it is entitled to use the disputed domain name as it sees fit. The Respondent is under no obligation to use the disputed domain name in any particular manner in order to maintain its rights. The Complainant is not the exclusive owner of the acronym “LMC” and its trademark is not famous or entitled to any additional scope of protection. There are 54 listings for “LMC” on the “Acronym Finder” website alone.

The Policy requires that a domain name be both registered and used by the respondent in bad faith (see e-Dunction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369). The Respondent has not used the disputed domain name in bad faith and it is extremely clear that neither the Respondent or the Logic Modeling Corporation registered the disputed domain name in bad faith. The Logic Modeling Corporation registered the disputed domain name in 1992 and the Respondent acquired it in 1994. The Logic Modeling Corporation had rights to register the domain as an acronym of itself, and the Respondent had the right to register the disputed domain name due to its acquisition in good faith. Therefore there can be no finding of bad faith registration and use under the Policy.

It is also clear that none of the four circumstances of bad faith outlined in the Policy apply. In particular, in reference to the asserted offer to sell the disputed domain name, the Respondent contents that it is entitled to sell the disputed domain name as it is a legitimately obtained corporate asset. Furthermore, the Complainant contacted the Respondent in relation to the sale of the disputed domain name, not the other way around. The disputed domain name was not registered in order to prevent the Complainant for using it. Nor was it registered to disrupt the business of a competitor. The Complainant and the Respondent could not be considered competitors as they sell different products.

While the Respondent acknowledges that laches is not widely recognized by panel members, it should nonetheless consider the Complainant’s delay in bringing this Complaint.

The Respondent requests that the Panel make a finding of reverse domain name hijacking.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of a registered trademark in France for LMC. For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The disputed domain name reproduces the Complainant’s trademark in its entirety. The Respondent concedes that the Complainant is the owner of a trademark which is identical or confusingly similar to the disputed domain name.

The Panel therefore finds that the disputed domain name is confusingly similar to a registered trade mark in which the Complainant has rights.

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

The Respondent acquired the disputed domain name as part of its merger with the Logic Modeling Corporation on April 28, 1994. The Logic Modeling Corporation registered the disputed domain name on April 29, 1992 because “LMC” was the acronym for “Logic Modeling Corporation”.

The Respondent contended that it systematically keeps and maintains key domain name registrations that are obtained via mergers and acquisitions. The Respondent uses the disputed domain name to redirect users to its main website. Products acquired under the Logic Modeling Corporation acquisition are still an active part of the Respondent’s business.

As a consequence, the Panel finds that the Respondent has a legitimate interest in using the disputed domain name, even though “LMC” is not a brand that is currently used by the Respondent. Furthermore, the redirection of a domain name to a main site is, in the present circumstances, consistent with a legitimate use of the domain name which the evidence indicates the Respondent acquired legitimately as part of its merger with the Logic Modeling Corporation.

On the evidence provided, the Panel finds that the Respondent has shown rights and legitimate interests in the disputed domain name.

Accordingly, the Complainant has not met the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

As stated above, the Logic Modeling Corporation registered the domain name because “LMC” is the acronym for the “Logic Modeling Corporation”. Registration of the domain name in this manner cannot be considered registration in bad faith. It is clear that the Logic Modeling Corporation registered the disputed domain name for business purposes. Furthermore, the Complainant has conceded that the Logic Modeling Corporation did not register the disputed domain name in bad faith.

Acquisition through merger of Logic Modeling Corporation (and therefore the disputed domain name) by the Respondent was for a legitimate business purpose. Therefore, there was no bad faith when the Respondent acquired its registration of the disputed domain name as part of this acquisition.

The Respondent uses the disputed domain name to redirect to its main website, “www.synopsys.com”. Products acquired under the Logic Modeling Corporation acquisition are still an active part of the Respondent’s business. Therefore, the disputed domain name is useful for the Respondent’s business activity.

Although the Respondent asked for a seemingly large sum of money to sell the disputed domain name when approached by the Complainant, this alone is not sufficient to demonstrate bad faith as required under the Policy given the Respondent’s preceding and apparently legitimate merger with the original domain name registrant Logic Modeling Corporation.

On the evidence provided, the Panel finds that the Complainant has not succeeded in proving that the disputed domain name was registered and used in bad faith by the Respondent.

Accordingly, the Complainant has not met the third element of paragraph 4(a) of the Policy.

D. Delay in commencement of proceedings

In view of the outcome, the Panel has not found it necessary in this case to consider the effect (if any) under the Policy of any purported delay in the commencement of proceedings.

E. Reverse Domain Name Hijacking

The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant. The Panel finds that the Complainant clearly possesses relevant and (through a subsidiary) longstanding trademark rights, and although the Respondent was ultimately able to establish rights or legitimate under the Policy, the Panel is not satisfied that the Complaint was brought in bad faith and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

John Swinson
President Panelist

Michelle Brownlee
Panelist

Christophe Caron
Panelist

Dated: October 7, 2010