Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Janice Liburd
Claim Number: FA1007001334323
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara
M. Vold, of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lexisnex.com>, registered with MONIKER ONLINE SERVICES, INC.
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 National Arbitration Forum electronically on July 8, 2010.
On July 14, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <lexisnex.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2010 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@lexisnex.com by e-mail. Also on July 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lexisnex.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexisnex.com> domain name.
3. Respondent registered and used the <lexisnex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier
Inc. and Reed Elsevier Properties Inc., is a global provider of content-enabled
workflow solutions for law firms, corporations, government, law enforcement, tax,
accounting, academic institutions and risk and assessement under the LEXISNEXIS
marks. Complainant owns several
trademark registrations with the United States Patent and Trademark Office
("USPTO") for its LEXISNEXIS mark (e.g., Reg. No. 2,673,044 issued January 7, 2003).
Respondent, Janice Liburd, registered the <lexisnex.com> domain name on May 12, 2010. Respondent’s disputed domain name resolves to a website that displays, among other things, links to risk and credit related topics, some of which are in competition with Complainant.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in its LEXISNEXIS mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,673,044 issued January 7, 2003). The Panel further finds that Complainant does not need to possess a trademark registration in Respondent’s country for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <lexisnex.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark. Complainant argues that the disputed domain name contains a misspelled version of its mark by omitting the letters “i” and “s.” Previous panels have determined that omitting letters from a complainant’s mark and adding the generic top-level domain (“gTLD”) “.com” to a mark are not sufficient to distinguish the domain name from the mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <lexisnex.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <lexisnex.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the <lexisnex.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent has not been authorized to use the LEXISNEXIS mark in any way. The WHOIS information identifies “Janice Liburd” as the registrant of the domain name and Respondent has not come forward with evidence indicating that she is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <lexisnex.com> domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and Complainant’s assertions. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s <lexisnex.com> domain name resolves
to a website that features third-party hyperlinks to both competing and
unrelated businesses under the headings “related,” “Equifax,” “Payroll
Services,” “online credit report,” as well as others. Complainant contends that Respondent receives
click-through fees for the businesses that have links displayed on Respondent’s
website. The Panel finds that
Respondent’s use of the disputed domain name to maintain a links directory both
of Complainant’s competitors and of unrelated businesses, presumably for
financial gain, is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi,
FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s
contention of rights and legitimate interests in the <bravoclub.com>
domain name because the respondent was merely using the domain name to operate
a website containing links to various competing commercial websites, which the
panel did not find to be a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the <lexisnex.com> domain name to display
third-party links to Complainant’s competitors in the data risk solution, fraud
detection and preventions services and identity services industries. Complainant alleges that such use interferes
with Complainant’s business and causes a disruption as such. The Panel finds that Respondent’s use of the
disputed domain name to display third-party hyperlinks to the competitors of
Complainant results in a disruption of Complainant’s business and is evidence
of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)); see
also St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users
seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”).
Complainant further argues
that Respondent receives click-through fees from the third-party links
displayed on Respondent’s website.
Complainant argues that Respondent is attempting to attract Internet
users to its website to display third-party links that Complainant’s customers
may be interested in to profit commercially, and that such use is further
evidence of Respondent’s bad faith registration and use. The Panel agrees and finds that Respondent’s
use of the disputed domain name to display third-party links to both competing
and unrelated websites, presumably for financial gain, is further evidence that
Respondent registered and is using the <lexisnex.com>
domain name in bad faith under Policy ¶ 4(b)(iv). See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexisnex.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 24, 2010
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