Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Elusive Leads and Chadd Deo
Claim Number: FA0608000766447
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”), represented by Amy L. Kertgate, of Fulbright & Jaworski, 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondents are Elusive Leads and Chadd Deo (collectively “Respondent”), 350 Bay St, Suite 100, San Francisco, CA 94133.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lexisnexisinc.com> and <lexisnexisworldwide.com>, registered with Go Daddy Software, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2006.
On August 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 2006 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@lexisnexisinc.com and postmaster@lexisnexisworldwide.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 (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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names are confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names.
3. Respondent registered and used the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Inc., and Complainant, Reed Elsevier Properties Inc., are involved with a wide range of computer software, computer research services and other computer related services. These two entities shall be referred to collectively as “Complainant.” Complainant holds multiple registrations of the LEXISNEXIS mark with the United States Patent and Trademark Office (“USPTO”), for example Reg. No. 2,673,044 issued on January 7, 2003. Complainant uses the LEXISNEXIS mark in connection with providing computer search services, particularly to the legal profession. Complainant has registered the <lexisnexis.com>, <lexis.com>, <lexis.org> and <lexisone.com> domain names in order to provide Internet users with access to its goods and services.
Respondent registered the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names on April 20, 2006. Respondent is using the <lexisworldwide.com> domain name to redirect Internet users to Respondent’s website composed entirely of links to third-party websites, including those of Complainant’s competitors. There is no evidence that Respondent has made any demonstrable preparations to use the <lexisnexisinc.com> domain name, and the domain name currently resolves to a “Website is Coming Soon” message.
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.
Complainant has established rights in the LEXISNEXIS mark
through registration of the mark with the USPTO. Complainant’s registration of the mark pre-dates Respondent’s
registration of the <lexisnexisinc.com> and <lexisnexisworldwide.com>
domain names. Thus, the Panel finds
that Complainant has established rights in the LEXISNEXIS mark pursuant to
Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Respondent’s <lexisnexisinc.com>
and <lexisnexisworldwide.com> domain names are confusingly similar
to Complainant’s LEXISNEXIS mark. The
disputed domain names contain Complainant’s mark in its entirety and add the
term “inc” or the term “worldwide.” The
terms “inc” and “worldwide” are generic terms that describe aspects of
Complainant’s business. The term “inc”
implies that Complainant is incorporated and the term “worldwide” describes the
geographic scope of Complainant’s business.
The Panel finds that the addition of terms describing Complainant’s
business to Complainant’s mark does not distinguish the disputed domain names
from Complainant’s mark and the disputed domain names are confusingly similar
to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to establish identity [sic] or
confusing similarity for purposes of the Policy despite the addition of other
words to such marks.”); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names, thus establishing a prima facie case. With the creation of a prima facie case the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to avail itself of the opportunity to submit a Response in order to present the Panel with evidence or arguments in support of its rights or legitimate interests suggests to the Panel that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will examine the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
Respondent’s <lexisnexisinc.com> domain name currently does not resolve to any content and there is no available evidence of any demonstrable preparations for use. In L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002), the panel found that the respondent lacked rights or legitimate interests where there was no evidence of demonstrable preparations for use of the disputed domain name, stating that “a Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.” Respondent is using the other disputed domain name, <lexisnexisworldwide.com>, to redirect Internet users to Respondent’s website which features links to third-party websites, including links to commercial websites in competition with Complainant. Presumably, the links are generating pay-per-click fees for Respondent. In Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000), the panel found that the respondent’s website, which was blank but for links to other websites, was not a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names. Similarly, in TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel held that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Thus, the Panel finds that Respondent’s use of the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii).
There is no available evidence that Respondent is commonly known by the <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names. Respondent’s WHOIS information identifies Respondent as “Elusive Leads.” Complainant asserts that Respondent is not affiliated with Complainant and does not have authorization to reflect Complainant’s LEXISNEXIS mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name and lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <lexisnexisworldwide.com> domain name to redirect Internet users to Respondent’s website which features links to third-party websites, including websites offering goods and services in competition with Complainant. Internet users seeking Complainant’s genuine website in order to do business with Complainant may insert Complainant’s LEXISNEXIS mark into a web browser or Internet search engine and find themselves misdirected to Respondent’s website. Internet users finding themselves redirected to Respondent’s website may follow a link to a website of Complainant’s competitors and do business with those competitors, instead of doing business with Complainant, thus disrupting Complainant’s business. The Panel finds that Respondent’s use of the <lexisnexisworldwide.com> domain name to divert business away from Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <lexisnexisworldwide.com> domain
name is confusingly similar to Complainant’s LEXISNEXIS mark. Internet users may easily be redirected to
Respondent’s webpage when trying to reach Complainant’s genuine website. Once at Respondent’s website, because of the
confusing similarity between the disputed domain name and Complainant’s mark,
Internet users may mistakenly believe that Respondent’s website is in some way
affiliated with Complainant. Respondent
is presumably capitalizing on this confusion by collecting pay-per-click
referral fees from the links on its website.
The Panel finds that such use is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel is not limited to the
circumstances described in Policy ¶ 4(b)(i)-(iv) in finding evidence of bad
faith registration and use. The Panel
may take into account other circumstances including whether there is evidence
of any demonstrable preparations by Respondent to use the disputed domain
name. In this case, nothing indicated
that Respondent is using or planning to use the <lexisnexisinc.com> domain
name. The disputed domain name
currently resolves to a holding page with the message “Website is Coming
Soon.” The Panel finds that
Respondent’s failure to demonstrate preparations to use the <lexisnexisinc.com>
domain name is further evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples
[of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in bad faith); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug.
30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to
use the domain name, in addition to the passive holding of the domain name,
reveal that Respondent registered and uses the domain name in bad
faith.”).
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 <lexisnexisinc.com> and <lexisnexisworldwide.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 15, 2006
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