Reed Elsevier Inc. and Reed
Elsevier Properties Inc. v. Secure Whois Information Service c/o DNS Admin
Claim Number: FA0701000900310
PARTIES
Complainant is Reed Elsevier Inc. and Reed
Elsevier Properties Inc. (“Complainant”), represented by Amy L. Kertgate, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <martendalehubbell.com>, registered
with Name.Net
Llc.
PANEL
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.
Calvin A. Hamilton as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 24, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 26, 2007.
On February 2, 2007, Name.Net Llc confirmed by e-mail to the
National Arbitration Forum that the <martendalehubbell.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 February 2, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 22, 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@martendalehubbell.com
by e-mail.
A timely Response was received and determined to be complete on February 20, 2007.
On February 22, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Subsequent to the aforestated appointment, the parties to the dispute
mutually agreed to enter into a Stay of Arbitration for the purposes of
attempting to achieve a settlement in the matter. The Stay was granted by an Order dated
February 25, 2007 for a one-time period of forty-five (45) days until April 12,
2007.
Complainant filed a request to Remove the Stay of Arbitration and to
continue with the Administrative Proceedings. Complainant’s request was granted and the Stay
was lifted on April 12, 2007.
Complainant then filed a timely Additional Submission on April 12,
The Panel requested an extension of the period to render the award
until May 8, 2007.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The
domain name <martendalehubbell.com> is identical and/or confusingly
similar to a trademark or service mark in which Complainant has trademark rights;
2.
Respondent
has no rights or legitimate interests in respect of the domain name that is
subject to the Complaint;
3.
Respondent
registered and used the domain name in bad faith.
B. Respondent
1.
Respondent
is more than willing to transfer the domain name to Complainant.
2.
Respondent
believes that the domain name was registered in error.
3.
Respondent
expressly stipulates and agrees that the Domain Name be transferred to
Complainant.
4.
Respondent
requests that the domain name be transferred to Complainant without further findings
of fact or liability, including those related to the elements set forth in
Paragraph 4(a) of the Policy.
C. Additional Submissions
1.
Complainant
asserts that the filing of a stipulation of transfer does not preclude the
Panel from ruling on the merits of the case.
2.
The
express requirements of the Policy support the issuance of fact and liability.
3.
Complainant
requests that the Panel renders a decision whereby the domain name be
transferred to Complainant after reviewing the merits of the case and determining
Complainant’s satisfaction of its burden of proving the three requisite
elements of Policy ¶ 4(a).
FINDINGS
1.
Reed
Elsevier Inc., 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, MARTINDALE-HUBBELL,
MARTINDALE-HUBBELL DISPUTE RESOLUTION DIRECTORY.
2.
Reed
Elsevier Properties Inc. is the owner, and Reed Elsevier Inc. is the licensee
of all rights in and to, and to the trademarks reflected by the
3.
Complainant
has developed an enormous presence on the Internet and its websites accessible
through the MARTINDALE domain names receive over 500,000 hits per day.
4.
By
virtue of Complainant’s extensive marketing efforts, Complainant has become
recognized by consumers throughout the world.
5.
Respondent
registered the domain name <martendalehubbell.com> on August 1,
2006, long after the MARTINDALE-HUBBELL mark achieved worldwide consumer
recognition and well after Complainant commenced to use the mark
MARTINDALE.COM.
6.
The <martendalehubbell.com>
domain name is identical or confusingly similar to Complainant’s marks.
7.
Respondent
has no rights or legitimate interests in respect of the domain name <martendalehubbell.com>.
8.
Registration
and use of the <martendalehubbell.com> domain name was
made in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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, without
denying any of the statements or allegations contained in the Complaint,
requests that the domain name be transferred to Complainant without further
findings of fact or liability.
Respondent argues that the Stipulation of Transfer precludes the Panel from ruling on the merits of the dispute. The Panel disagrees with Respondent’s argument.
When a respondent does not dispute the allegations
contained in the complaint but, instead, acknowledges its consent to the
transfer of the disputed domain name, numerous panels have consistently held
that the requirements of Policy ¶ 4(a) are simply satisfied.
Such panels have issued findings of fact to that effect, i.e., that all
three requirements of the Policy ¶ 4(a) have been fulfilled, and have ordered
the transfer of the disputed domain name to the complainant on this basis.
However, other panels have gone further to
consider the merits of the dispute and have issued the pertinent finding of
facts with regard to substantive allegations as a prerequisite to the issuance
of an order transferring the disputed domain name. This is possible even under circumstances
where a respondent consents to the transfer of the disputed domain name. See Reed Elsevier Props. Inc. v. Montanya 1 Ltd.,
FA 874482 (Nat. Arb. Forum Feb. 16, 2007); see
also The State of the Netherlands v.
Goldnames Inc., D2001-0520 (WIPO June 3, 2001), where the Panel makes the
following assertions: “[T]he Respondent’s email of May 14, 2001,
constitutes a concession that arguably provides a sufficient basis for
resolving this case without the necessity to make any further factual findings.
[…]. However, in light of the fact that
the domain name has not been transferred and in the interest of reaching a
definitive resolution in this matter, the Panel deems it prudent to proceed to
make findings on the merits of the case.”
In the case before the Panel, Respondent did not
transfer the disputed name and therefore, the Panel shall proceed to pronounce
on the merits of the case.
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.
Complainant asserts rights in the MARTINDALE-HUBBELL mark through registration with the United States Patent and Trademark Office. Complainant’s registration and use of the MARTINDALE-HUBBELL mark is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. Respondent has the burden of refuting this presumption).
Complainant claims that
Respondent’s disputed domain name is confusingly similar to Complainant’s
mark. Respondent’s disputed domain name
replaces the “i” in Complainant’s mark with an “e.” The disputed domain name also omits the
hyphen in Complainant’s protected mark.
Small grammatical changes made to a protected mark, leaving the disputed
domain name phonetically identical to the mark, are not sufficient to distinguish
the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Nat’l Cable Satellite
Corp. v. Black Sun Surf Co., FA
94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see also Hewlett-Packard Co. v.
According to the
abovementioned reasoning, the Panel
finds that the disputed domain name <martendalehubbell.com> is identical, and
confusingly similar, to Complainants' mark under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges that Respondent has used the disputed domain name to redirect Internet users to Respondent’s website offering competing and non-competing services for Respondent’s commercial gain, which evidence may be found in Exhibit 10, whereby Complainant shows that the disputed domain name resolved to a directory portal website containing active links to popular online searching categories, including “travel,” “finance,” “business,” “entertainment” and “lifestyle,” for which Respondent presumably received referral or click-through fees.
Under these circumstances,
Respondent’s use of the disputed domain is not a use in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See EarthSky Comms., Inc. v. eCommerce
Advertising, FA 944811 (Nat. Arb. Forum Apr. 26, 2007); see
also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent 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).”).
Further, Complainant contends that Respondent is not commonly known by the disputed domain name. There is nothing in the record to show that Respondent has established rights or a legitimate interest in the disputed domain name 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 DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).
Based on the above, the Panel finds that
Complainant has satisfied the burden of proof under Policy ¶ 4(a)(ii).
Complainant contends that
Respondent knowingly registered the disputed domain name as a common
misspelling of Complainant’s mark to capitalize on consumer recognition of
Complainant’s mark, attempting to intentionally attract for commercial gain
internet users to its website by creating a likelihood of confusion with
Complainant’s marks as to the source of the website or of a product or service
on that website. Examples of the
abovementioned arguments may be found in documentation provided by Complainant
as Exhibits 9 to 13. The Panel
understands that this practice, commonly referred to as “typosquatting,”
evinces bad faith registration and use in accordance with Policy ¶¶ 4(a)(iii), and
4(b)(iii) and (iv). See Sports
Respondent’s registration and use
of the disputed domain name to offer unsuspecting Internet users links to
various third-party websites, presumably with the intent of receiving
commercial benefit, constitutes registration and use in bad faith pursuant to
Policy ¶ 4(b)(iv). See State Fair of
The Tribunal considers that Policy 4(a)(iii) has been satisfied in order to establish that Respondent registered and used the disputed domain name in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <martendalehubbell.com> domain name
be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: May 8, 2007
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum