Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Domain Deluxe
Claim
Number: FA0402000234414
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”), of
Newton, MA represented by J. Paul
Williamson, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington,
DC 20004. Respondent is Domain Deluxe (“Respondent”), PO Box
7628, Central Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <marindale.com>, registered with The
Registry At Info Avenue, LLC d/b/a IA Registry.
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 (the "Forum")
electronically on February 2, 2004; the Forum received a hard copy of the
Complaint on February 3, 2004.
On
February 6, 2004, The Registry At Info Avenue, LLC d/b/a IA Registry confirmed
by e-mail to the Forum that the domain name <marindale.com> is
registered with The Registry At Info Avenue, LLC d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue,
LLC d/b/a IA Registry has verified that Respondent is bound by the The Registry
At Info Avenue, LLC d/b/a IA Registry 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
February 9, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 1, 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@marindale.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
March 12, 2004, 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."
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.
A. Complainant makes the following assertions:
1. Respondent’s <marindale.com>
domain name is confusingly similar to Complainant’s MARTINDALE marks.
2. Respondent does not have any rights or
legitimate interests in the <marindale.com> domain name.
3. Respondent registered and used the <marindale.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through one of its operating divisions, Martindale-Hubbell, is in the business
of providing information and directory services in the fields of law and
business under the marks MARTINDALE.COM
(Reg. No. 2796593, Dec. 23, 2003), MARTINDALE-HUBBELL (Reg. No. 1542506,
June 6, 1989 and Reg. No. 2057030, Apr. 29, 1997) and MARTINDALE-HUBBELL
DISPUTE RESOLUTION DIRECTORY (Reg. No. 2724776, June 10, 2003), which were all
registered with the United States Patent and Trademark Office (“USPTO”).
Through
Martindale-Hubbell and its predecessors in interest, Complainant has offered
printed information and directory services under the MARTINDALE mark since as
early as 1868 and under the MARTINDALE-HUBBELL mark since as early as
1931. Complainant asserts that its
USPTO registration number 1542506 for the MARTINDALE-HUBBELL mark is now
incontestable under U.S. Trademark Law 15 U.S.C. § 1065.
Complainant also
maintains a sizeable presence on the Internet through its MARTINDALE.COM
related websites, which result in over 15 million hits per month.
As a result of
Complainant’s extensive marketing efforts, the MARTINDALE products, marks, and
domain names have become recognized by consumers throughout the world as
designating Complainant as the source of the products.
Respondent
registered the disputed domain name on April 25, 2003. Respondent uses the domain name to direct
users to a general directory portal page and search engine that contains a
number of popular online searching categories such as “travel,” “shopping,”
“finance,” “entertainment,” etc. The
attached website also lists a number of topics on the left hand side of the
site that relate to the legal field including, “California incorporation,”
“Attorney in California,” “California injury lawyer,” and “California
lawyer.” Some of these links resolve to
websites that offer legal directory services.
The website attached to the disputed domain name also displays at least
one pop-up advertisement.
In the past,
Respondent has been forced to transfer domain names that infringed upon
third-party trademarks. E.g. Groupe Lactalis & BSA v. Domain Deluxe,
D2003-0314 (WIPO June 23, 2003); Z-Tel Tech. v. Domain Deluxe,
D2001-1427 (WIPO Feb. 20, 2002).
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 MARTINDALE related marks through
multiple registrations with the USPTO and continuous use in commerce since as
early as 1868. Specifically, the MARTINDALE.COM mark has been used since 2001,
prior to the disputed domain name registration. See Park 'N Fly, Inc. v.
Dollar Park and Fly, Inc., 469 U.S. 189, 196 (1985) (“With
respect to incontestable marks [15 U.S.C. § 1115(b)] provides that registration
is conclusive evidence of the registrant's exclusive right to use the
mark,” subject to certain conditions and defenses.); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves.”).
Respondent has
merely omitted the letter “t” from Complainant’s MARTINDALE.COM mark. The removal of a letter from a registered
mark has consistently been held to be insufficient to distinguish the name from
the mark under the Policy; thus, the disputed domain name is confusingly
similar to Complainant’s mark pursuant to 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 Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks); see also State Farm Mut.
Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> is confusingly similar
to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P.
v. Seocho , FA 103879 (Nat. Arb.
Forum Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to Complainant’s COMPAQ mark because the omission of the
letter “a” in the domain name does not significantly change the overall
impression of the mark); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
that the domain names, <davemathewsband.com> and
<davemattewsband.com>, are common misspellings and therefore confusingly
similar).
Thus,
Complainant has established Policy ¶ 4(a)(i).
The Panel may
construe Respondent’s failure to respond to the Complaint as an admission that
Respondent lacks rights to and legitimate interests in the name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard.”);
see also Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the
Panel to draw adverse inferences from Respondent’s failure to reply to the
Complaint).
The record fails
to indicate that Respondent is commonly known by the disputed domain name. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS
information, and its failure to imply that Respondent is commonly known by the
disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
Furthermore,
Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent is using the domain name to
direct Internet users to a search engine, which displays pop-up advertisements
presumably for purposes of earning revenue.
The site also contains links to other services that compete with
Complainant’s business. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA
154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have
rights or legitimate interests in a domain name that used Complainant’s mark
and redirected Internet users to website that pays domain name registrants for
referring those users to its search engine and pop-up advertisements); see
also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003)
(holding that Respondent’s use of the disputed domain name, a simple
misspelling of Complainant’s mark, to divert Internet users to a website that
featured pop-up advertisements and an Internet directory, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation
of Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant,
had no rights or legitimate interests in a domain name that utilized
Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Thus,
Complainant has established Policy ¶ 4(a)(ii).
Respondent has
registered and used the disputed domain name in bad faith by registering the
domain name confusingly similar to Complainant’s mark. The domain name is merely a common
misspelling of the MARTINDALE.COM mark.
The fact that the domain name resolved to a site that offered legal
services in competition with Complainant is evidence that Respondent likely
intentionally misspelled Complainant’s mark in order to siphon off traffic from
unsuspecting Internet users. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting is the intentional misspelling of words with intent
to intercept and siphon off traffic from its intended destination, by preying
on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA
124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting
to reach a complainant’s website in order to gain a profit off of a complainant
is one example of bad faith use and registration under the Policy.”).
By using the
disputed domain name to host links that offer services that compete with
Complainant’s business, Respondent has registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attracting, presumably
for commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s MARTINDALE.COM mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website); see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name, for commercial
gain, to intentionally attract users to a direct competitor of Complainant).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <marindale.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 18, 2004
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