WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lexon v. Registration Private, Domains By Proxy, LLC / Surety Management

Case No. D2019-2365

1. The Parties

The Complainant is Lexon, France, internally represented.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States“) / Surety Management, United States, represented by Blank Rome, LLP, United States.¹

2. The Domain Name and Registrar

The disputed domain name <lexon.com> (“Disputed Domain Name”) 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 September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 1, 2019, the Registrar 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 October 11, 2019 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 October 15, 2019.

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 October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2019. On November 7, 2019, the Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was November 10, 2019. The Response was filed with the Center on November 10, 2019.

The Center appointed John Swinson as the sole panelist in this matter on November 25, 2019. 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 the Rules, paragraph 7.

4. Factual Background

The Complainant is Lexon, a company incorporated in France. The Complainant sells design products in the fields of electronics, audio, travel accessories, office, and leisure. According to the Complaint, the Complainant has operated since 1991 and has more than 6,000 point of sale.

The Complainant is the owner of a number of different trade marks for LEXON, including French registered trade mark number 1632088, registered on December 7, 1990 (“Trade Mark”).

The respondent in the original complaint was listed as Domains By Proxy LLC. After registration details were revealed, the Complaint was amended to list Surety Management as the respondent. A Response was filed by Endurance U.S. Holdings Corp. Endurance U.S. Holdings Corp acquired the Disputed Domain Name from Surety Management pursuant to the Purchase and Sale Agreement between Endurance U.S. Holdings Corp, Lexon Surety Group, Surety Agency Holding Company, Surety Management Company and Lexon Surety Group. The Purchase and Sale Agreement, which was over 100 pages long, was annexed to the Response.

Endurance U.S. Holdings has submitted that it is the true owner of the Disputed Domain Name after acquiring it from Surety Management, however has not yet undertaken the process of transferring the Disputed Domain Name from Surety Management to Endurance U.S. Holdings. In these circumstances, and as set out further in the Procedural Issues section below, the Panel finds that the true Respondent in this Complaint is Endurance U.S. Holdings (“Respondent”) and the term Respondent in this decision refers to Endurance U.S. Holdings.

The Disputed Domain Name was first registered in October 28, 1995 by Pattco LLC, the previous owner of Lexon Group Surety, LLC. Both Pattco LLC and Lexon Surety Group, LLC used the Disputed Domain Name as a redirect to its main homepage, <lexonsurety.com>. The Disputed Domain Name currently resolves to a website featuring pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or confusingly similar

The Complainant has been in operation since 1991 and has become well known as a design brand worldwide. The Complainant operates in 90 countries with more than 6,000 points of sale.

The Complainant has trade mark rights in the term LEXON. The Disputed Domain Name is identical to the Complainant’s Trade Mark as it incorporates the whole of the Trade Mark with no additional terms. Further, the Disputed Domain Name was registered after the Complainant registered the Trade Mark.

Rights and legitimate interests

The Respondent does not have rights or legitimate interests in the Disputed Domain Name because:

- The Complainant has not licensed or otherwise consented to the Respondent’s use of the Trade Mark in the Disputed Domain Name.

- The Respondent has not used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services.

- The Respondent does not own any trade mark for LEXON and is not commonly known by the term LEXON.

- The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The website contains PPC links and the nature of the links indicate that the Respondent is specifically targeting LEXON consumers.

Registered and used in bad faith

The term LEXON has no meaning in English and was created by the Complainant. The Respondent must have registered the Disputed Domain Name with the Complainant’s Trade Mark in mind.

The website at the Disputed Domain Name contains links to websites selling LEXON products. The Respondent is attempting to obtain improper revenue from the fame and goodwill of the Trade Mark.

The website also contains sponsored links that are likely to generate revenue for the Respondent.

B. Respondent

Identical or confusingly similar

The Respondent does not dispute that the Disputed Domain Name is identical to the Trade Mark. However, as explained in rights and legitimate interests, the Respondent through its predecessors in interest, registered the Disputed Domain Name in good faith in 1995.

Rights and legitimate interests

The Respondent has rights and legitimate interests in respect of the Disputed Domain Name.

The Registrant of the Disputed Domain Name is currently listed as Surety Management. However, on December 19, 2017 Endurance U.S. Holdings (e.g., the Respondent) acquired the Disputed Domain Name from Surety Management pursuant to the Purchase and Sale Agreement.

By way of background, the Disputed Domain Name was first registered in 1995 by Pattco LLC, the previous owner of Lexon Surety Group, for use by its medical billing company, Lexon Medical. Pattco LLC then started Lexon Surety Group in the early 2000s. Both Pattco LLC and Lexon Surety Group used Disputed Domain Name as a redirect to its main homepage at <lexonsurety.com>.

Before the Respondent received any notice of this dispute, the Respondent had well-established common‑law trade mark rights in the term LEXON and registered rights in the terms LEXON INSURANCE COMPANY and LEXON SURETY GROUP. The Respondent and the previous owners of the Disputed Domain Name have used the LEXON mark for over 24 years.

The Respondent intends to use the Disputed Domain Name in a manner consistent with its historical use of marketing surety insurance products. Moreover, the Respondent presently owns a wholly owned subsidiary called Lexon Insurance Company. Therefore, the Disputed Domain Dame accurately reflects the name of the Respondent, its affiliates, and its business and services.

Registered and used in bad faith

The Respondent did not register the Disputed Domain Name in bad faith. The Complainant has not provided any evidence to support this allegation. As explained above, the Disputed Domain Name was purchased to reflect the business name of Lexon Medical and then Lexon Surety and now Lexon Insurance Company.

The use of the Disputed Domain Name has not been in bad faith. The Disputed Domain Name has been used previously to redirect to <lexonsurety.com>. The Respondent intends on using the Disputed Domain Name to redirect to “sompo.intl.com”.

The Respondent did not register or acquire the Disputed Domain Name for the purpose of selling, renting or transferring to the Complainant (or any other party).

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, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.

A. Procedural Issues

Paragraph 1 of the Rules defines the Respondent as "the holder of a domain-name registration against which a complaint is initiated". In this case, the initial complaint was filed against the privacy server, Domains By Proxy. The privacy service revealed that the registrant of the Disputed Domain Name was Surety Management.

The Response was filed by Endurance U.S. Holdings as the successor in interest to the Disputed Domain Name.

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed (see section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the Respondent who has filed a Response is not the listed Respondent in the Complaint nor the registrant as confirmed by the Registrar (i.e., Surety Management). However, the Panel finds it appropriate to accept the Response and name the true Respondent as Endurance U.S. Holdings because:

- The Respondent acquired the Disputed Domain Name from Surety Management.
- The Respondent has provided a copy of the Purchase and Sale Agreement which evidences the acquisition which occurred in 2017.
- The Respondent submits that they have not yet undertaken the transfer of the Disputed Domain Name but intend to do so. They have not been able to do so recently because the Disputed Domain Name is locked due to this dispute.
- The Respondent has control of the Disputed Domain Name.

The Respondent is the true owner of the Disputed Domain Name after the acquisition in 2017. In these circumstances, the Panel finds it appropriate to list Endurance U.S. Holdings as the Respondent. The Panel hereby determines that Endurance U.S. Holdings shall be considered as the Respondent in this proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

In this case, the Complainant argues that the Respondent does not have any rights and legitimate interests in the Disputed Domain Name. The Complainant submits that:

- The Complainant has not licensed or otherwise consented to the Respondent’s use of the Trade Mark in the Disputed Domain Name.

- The Respondent has not used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services.

- The Respondent does not own any trade mark for LEXON and is not commonly known by the term LEXON.

The Respondent has put forward evidence that they do have rights and legitimate interests in the Disputed Domain Name. The Respondent submits that on December 19, 2017 the Respondent acquired the Disputed Domain Name from Lexon Surety Group LLC pursuant to a Purchase and Sale Agreement which is annexed to the Response. Through this Purchase and Sale Agreement, the Respondent also acquired trade mark rights, being:

- United States registered trade mark number. 4,185,285 for L LEXON SURETY GROUP, filed on July 20, 2011, and registered on August 7, 2012; and

- United States registered trade mark number 5,797,831 for LEXON INSURANCE COMPANY filed August 21, 2018, and registered on July 9, 2019.

Panels have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element.

The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). Absent evidence of such circumstances indicating pretext however, panels have been reluctant to reject a respondent trademark registration out of hand (see section 2.12 of the WIPO Overview 3.0).

In this case, the Respondent acquired the trade marks legitimately through the Purchase and Sale Agreement. The Respondent’s trade marks are currently owned by Sompo International Holding Ltd., the intermediate parent company of the Respondent, who was assigned the trade marks from the Respondent after the Respondent acquired the trade marks in December 2017. The Panel finds that the trade mark rights which are now held by the Respondent’s parent company are legitimate and, in the circumstances, confer rights and legitimate interests on the Respondent.

Based on the submissions of the parties, the Panel can find no evidence to support the assertion that the Respondent acquired the Disputed Domain Name to trade off the reputation of the Complainant. Further, the Complainant has not demonstrated that the Respondent was aware of the Complainant’s registered trade mark rights or that the intention was to take unfair advantage of those trade mark rights.

On the contrary, the Panel finds the Respondent’s explanation for its acquisition of the Disputed Domain Name to be entirely credible.

In the circumstances, the Complainant has failed to establish the second element.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

In the light of the Panel’s findings in respect of rights or legitimate interests, the question of registration and use in bad faith does not technically require to be considered. However, the Panel finds no grounds to conclude that the Disputed Domain Name was registered in bad faith because the Disputed Domain Name was acquired as part of a legitimate business transaction when the Respondent purchased the Lexon Surety company and its trade marks.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: December 12, 2019

¹ The Panel notes that the amended Complaint was addressed against Surety Management (i.e., registrant on record of the disputed domain name as disclosed by the Registrar). However, as discussed under section 6.A of this decision, the Panel finds that the Respondent is Endurance U.S. Holdings Corp., United States.