NATIONAL ARBITRATION FORUM

DECISION

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Montanya lLtd

Claim Number:  FA0612000874482

PARTIES

Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Amy L. Kertgate, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004.  Respondent is Montanya Ltd.[1] (“Respondent”), represented by Paul Raynor Keating, of Balmes 173 2 2, Barcelona 08006, Spain.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <matindale-hubbell.com>, registered with Name.net LLC.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sally M. Abel is assigned as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.

On December 28, 2006, Name.Net LLC confirmed by e-mail to the National Arbitration Forum that the <matindale-hubbell.com> domain name is registered with Name.net LLC and that Respondent is the current registrant of the name.  Name.net LLC has verified that Respondent is bound by the Name.net LLC 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 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2007 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@matindale-hubbell.com by e-mail.

A Response was timely received and determined to be complete on January 19, 2007.

On January 29, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sally M. Abel as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

1.      Respondent’s <matindale-hubbell.com> domain name is confusingly similar to Complainant’s MARTINDALE-HUBBELL marks.

2.      Respondent does not have any rights or legitimate interests in the <matindale‑hubbell.com> domain name.

3.      Respondent registered and used the <matindale-hubbell.com> domain name in bad faith.

B.  Respondent does not deny or respond substantially to Complainant’s contentions.  Rather, Respondent requests that the domain name be transferred to Complainant, by “stipulation,” without findings of fact or liability.

FINDINGS

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-HUBBELL, MARTINDALE.COM, and MARTINDALE-HUBBELL DISPUTE RESOLUTION DIRECTORY, which it has used in commerce since 1931.  Complainant has owned the U.S. federal trademark registration of MARTINDALE-HUBBELL since 1988 (Reg. No. 1542506).  Complainant also maintains a sizeable presence on the Internet through its MARTINDALE-HUBBELL related domain names, including <martindale‑hubbell.com>, which experience over 15 million hits per month.

Respondent registered the disputed domain name on March 20, 2006.  Respondent uses the domain name to operate a website that features links to attorney directory services which directly compete with Complainant’s services.

DISCUSSION

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.”

As an initial matter, the Panel addresses Respondent’s submission.  Respondent filed a Response termed “Stipulation of Transfer,” in which Respondent requests that the domain name be transferred to Complainant without further findings of fact or liability.

The Panel disagrees with Respondent’s argument that this “Stipulation of Transfer” precludes the Panel from ruling on the merits of this dispute.  There has been no transfer of the domain, and Respondent, a seemingly unabashed typosquatter, continues to use the domain to try to drive traffic to advertisers for legal referral services other than Complainant.  Complainant, who has been put to unnecessary expense and possibly suffered monetary loss and damage to its well-established trademark rights and brand, has requested, and is entitled to a decision on the merits.  The Response does not counter or deny any of the statements or allegations contained in the Complaint, nor include any justification for Respondent’s typosquatting and domain parking activities.  The Panel will therefore decide this matter on the basis of the uncontested 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;

(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.

Identical and/or Confusingly Similar

Complainant owns trademark rights in MARTINDALE-HUBBELL.  While the domain name in question is not identical to this mark, it is virtually identical in that it contains Complainant’s mark in its entirety with the exception of the letter “r.”  This deliberate misspelling of a known mark by omission of a single letter is not sufficient to distinguish the domain name from Complainant’s.  It is beyond question that the domain name is confusingly similar to Complainant’s mark.

Complainant has met its burden on this factor.

Rights or Legitimate Interests

There is nothing in the record to suggest that Respondent has any legitimate rights or legitimate interests in the domain name.  Complainant has not authorized or licensed Respondent’s activities.  The domain name does not comprise Respondent’s legal name or a name by which it is known, nor did it use the domain in connection with a bona fide offering of goods or services prior to the dispute.

Complainant has met its burden on this factor.

Registration and Use in Bad Faith

Respondent’s registration and use of the domain name in question is in bad faith pursuant to Paragraph 4(b)(iv) of the Policy.  For commercial gain, Respondent intentionally has used and uses the domain name intentionally to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s mark.  Respondent obtained and uses the domain to wrongfully capitalize on a computer user’s typographical error in inputting “matindale-hubbell” instead of “martindale-hubbell” in his or her web browser.  Respondent has not claimed any legitimate use of the domain, and, in fact, offers to transfer the domain.  The Panel cannot concede of a legitimate use of this domain by Respondent.

In addition to agreeing with Complainant that Respondent’s behavior constitutes bad faith pursuant to Paragraph 4(b)(iv) of the Policy, the Panel also finds bad faith registration and use on another, separate basis not raised by Complainant.  The categories of bad faith articulated in Paragraph 4(b) are exemplary only, and not exclusive of other circumstances that may also constitute bad faith registration and use.  Such is the case here.

Respondent is no stranger to deliberately obtaining domain names comprising other’s trademarks or variants of those marks.  E.g., Sanofi-aventis v. Montanya ILtd., D2006-1079 (WIPO Dec. 22, 2006)(<sanofiaventissalesjewlery.com> based on SANOFI – AVENTIS mark), Herbalife Int’l of Am. v. Montanya ILtd., FA 0606000733012 (Nat. Arb. Forum Aug. 8, 2006) (<hlcmyherbalife.com> based on HERBALIFE mark).[2]  In both Sanofi-aventis and Herbalife, Respondent was ordered to transfer the domain names at issue after the respective Panels found Respondent used the domains to divert consumers to competitors of Complainant.  The Panel finds that Respondent has engaged in a cybersquatting and domain parking campaign that in and of itself is evidence of bad faith registration and use pursuant to Paragraph 4 of the Policy.

Complainant has met its burden on this factor.

DECISION

Complainant has established all three elements required under the ICANN Policy; accordingly, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <matindale-hubbell.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Sally M. Abel, Panelist
Dated:  February 16, 2007

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