Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. domain finders llc
Claim
Number: FA0401000226438
Complainants are
Reed Elsevier Inc. and Reed Elsevier Properties Inc. (hereinafter “Complainant”), represented
by J. Paul Williamson, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is domain finders llc (“Respondent”), 7665 E. 75th Street,
Indianapolis, IN 46256.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lexinexis.com>, registered with Fabulous.Com
Pty Ltd.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 12, 2004; the Forum received a hard copy of the
Complaint on January 13, 2004.
On
January 13, 2004, Fabulous.Com Pty Ltd. confirmed by e-mail to the Forum that
the domain name <lexinexis.com> is registered with Fabulous.Com
Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.Com
Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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
January 19, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 9, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities
and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@lexinexis.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
February 16, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 Reed Elsevier Inc.
A. Complainant makes the following assertions:
1. Respondent’s <lexinexis.com>
domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or
legitimate interests in the <lexinexis.com> domain name.
3. Respondent registered and used the <lexinexis.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through its LEXISNEXIS operating division, offers a range of computer software
and computer assisted research services under the LEXISNEXIS mark. Complainant
began offering services under the LEXISNEXIS mark as early as 1983, and has
obtained numerous registrations for the mark in the United States, such as U.S.
Reg. Nos. 2,673,044; 2,670,069; and 2,670,068, all granted registration prior
to Respondent’s registration of the disputed domain name. In connection with
its services, Complainant operates a website at, inter alia, the
<lexisnexis.com> domain name.
Respondent
registered the <lexinexis.com> domain name on December 11, 2003,
without license or permission to use Complainant’s LEXISNEXIS mark for any
purpose. As of the date that Complainant filed the Complaint, Respondent used
the disputed domain name to display a directory portal webpage containing links
to popular Internet search topics such as gambling, shopping, travel and games.
This portal webpage is followed by a “Popular Searches” webpage operated in
connection with DomainSponsor.com, which utilizes an “Auto Optimized Domain
Revenue Agreement” whereby domain name owners share advertising revenue with
DomainSponsor.com.
Although
Respondent did not file an official Response to the Complaint, it did submit an
“Informal Response” to the Panel which stated, in part, that “the domain name
was auto-registered and once made aware of the infringement (by arb-forum
first) respondent immediately re-directed the domain to complainants website
and proceeded to do everything in his power to transfer over the domain with
his company’s sincear [sic] apologies during his 20 response period, to no
avail.”
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.
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
established rights in the highly distinctive LEXISNEXIS mark through
registration of the mark on the Principal Register of the U.S. Patent and
Trademark Office, as well as through continuous use of the mark in commerce
since as early as 1983.
Respondent’s <lexinexis.com>
domain name is confusingly similar to
Complainant’s LEXISNEXIS mark, as it only eliminates the letter “s” from the
word LEXIS in the mark, and the deletion of one letter is an insignificant
change for the purposes of Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive; see also
Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) finding that deleting the
letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the
overall impression of the mark and thus made the disputed domain name
confusingly similar to it.
Accordingly, the
Panel finds that the <lexinexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark under
Policy ¶ 4(a)(i).
In its unofficial correspondence Respondent makes clear that it
attempted to do everything in its power to transfer the disputed domain name
registration to Complainant. These efforts alone are strong evidence that
Respondent lacks rights or legitimate interests in the disputed domain name.
See
Marcor Int’l v. Langevin,
FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer
the domain name at issue indicates that it has no rights or legitimate
interests in the domain name in question); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum
Feb. 23, 2001) finding that Respondent’s willingness to transfer upon
notification of the Complaint is evidence of its lack of legitimate interests
or rights.
However,
sufficient evidence that Respondent lacks rights or legitimate interests in the
disputed domain name can be gathered from Respondent’s use of the domain name
to attract advertising revenue. In using Complainant’s highly distinctive
LEXISNEXIS mark to draw Internet users towards websites where Respondent will
presumably earn referral fees is not a situation that would vest rights or
legitimate interests in the disputed domain name with Respondent. See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) finding that Respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to Complainant’s mark, websites where
Respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy; see also Black &
Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24,
2002) holding that Respondent’s use of the disputed domain name to redirect
Internet users to commercial websites, unrelated to Complainant and presumably
with the purpose of earning a commission or pay-per-click referral fee did not
evidence rights or legitimate interests in the domain name.
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<lexinexis.com> domain
name under Policy ¶ 4(a)(ii).
The Panel views Respondent’s tacit admission that its domain name
registration was infringing on Complainant’s marks and its subsequent effort to
transfer its domain name registration to Complainant as evidence that the
domain name was registered and used in bad faith. See
Global Media Group, Ltd. v. Kruzicevic,
FA 96558 (Nat. Arb. Forum Mar. 7, 2001) finding Respondent’s failure to address
Complainant’s allegations coupled with its willingness to transfer the names is
evidence of bad faith registration and use; see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) finding that Respondent’s failure to submit a
formal response combined with its agreement at the onset of the Complaint to
transfer the disputed names satisfies the requirements of 4(a)(iii).
Additionally, Respondent’s registration of a domain name that differs
by only one letter from Complainant’s distinctive LEXISNEXIS mark supports the
inference that Respondent had actual knowledge of Complainant’s rights in that
mark when it registered the disputed domain name. Respondent’s attempt to
capitalize on the goodwill that Complainant has built up around its mark to
profit from online advertising is evidence that the domain name was registered
and used in bad faith. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding
that the ICQ mark is so obviously connected with Complainant and its products
that the use of the domain names by Respondent, who has no connection with
Complainant, suggests opportunistic bad faith; see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) finding bad faith when (1) the domain name contains
Complainant’s mark in its entirety, (2) the mark is a coined word, well-known
and in use prior to Respondent’s registration of the domain name, and (3)
Respondent fails to allege any good faith basis for use of the domain name.
The Panel thus
finds that Respondent registered and used the <lexinexis.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is 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 <lexinexis.com> domain name be TRANSFERRED
from Respondent to Complainant, Reed
Elsevier Inc.
Sandra Franklin, Panelist
Dated:
March 1, 2004
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