Reed Elsevier Inc. and Reed
Elsevier Properties Inc. v. Pushkin Gupta
Claim Number: FA0704000967682
PARTIES
Complainant is Reed Elsevier Inc. and Reed Elsevier
Properties Inc. (“Complainant”),
represented by Amy L. Kertgate, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nexisglobal.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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.
Alan L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 23, 2007.
On April 23, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <nexisglobal.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 April 26, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 16, 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@nexisglobal.com by e-mail.
A timely Response was received
electronically on May 17, 2007. It has
been deemed deficient pursuant to Supplemental Rule 5 because the National
Arbitration Forum did not receive a hard copy of the Response. However, in the interests of ensuring each
party a fair hearing, the Panel has taken the Response into account.
On May 18, 2007, Complainant filed
an Additional Submission with the National Arbitration Forum.
On May 24, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the disputed domain name, which was
registered on December 29, 2005, is identical or confusingly similar to Complainant’s
well-known United States registered service mark NEXIS, used in its information
technology business and registered initially in stylized form on August 25,
1981 (No. 1,166,744) and more recently in word form on April 4, 2000 (Nos.
2,337,747 and 2,334,748); that Respondent has no rights or legitimate interests
in relation to the domain name, which he registered and is using in bad faith. The domain name, after a period of apparent
non-use, resolves to a website offering IT services under the name “Nexxus Data
and Network Solutions.”
B. Respondent
Respondent says he registered the disputed domain name in 2005 but heard nothing from Complainant for more than 15 months. He never had any intentions of violating Complainant’s name and has no association with Complainant. He is willing to transfer the domain name provided Complainant compensates him. However, agreement had not been reached on an appropriate amount when the Complaint was filed. He says:
If the domain name is part of LexisNexis, then it should have been owned by them and not by me and the domain name shouldn't have been available for buying. Apparently this domain name was available and since we are a global company, we wanted to put that word in there as well.
C. Additional Submission
Complainant says the Response does not dispute the first two elements
of its case (identity and lack of legitimacy) and fails to explain why
Respondent chose the word “nexis” when his claimed IT business, which overlaps
with that of Complainant, is conducted under the name “Nexxus Data and Network
Solutions.”
FINDINGS
Complainant is entitled to the relief it
seeks.
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.”
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 has rights
in the registered trademark NEXIS, which it has used for many years in
connection with its worldwide IT business. The NEXIS mark is inherently distinctive and very
well known.
The test of identity or confusing
similarity under the Policy is confined to a comparison of the disputed domain
name and the trademark alone, independent of the products for which the domain
name is used or other marketing and use factors, usually considered in trademark
infringement. See Arthur Guinness Son & Co. (
The specific top-level
domain “.com” is to be disregarded. See Magnum Piering, Inc. v.
The Mudjackers & Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO
Case No. D2000-0429.
The addition of the word “global” does nothing to distinguish the disputed
domain name from Complainant’s famous mark.
The disputed
domain name is confusingly similar to Complainant’s NEXIS mark.
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy. See Cassava Enters. Ltd. v. Victor Chandler Int’l Ltd., WIPO Case No. D2004-0753.
Complainant asserts and Respondent concedes that he has no association with Complainant. Complainant has not licensed Respondent or otherwise authorized him to register the disputed domain name. These circumstances suffice to shift the burden of proof to Respondent.
There is no evidence that Respondent is known by the disputed domain name. He has used it for a website offering IT services for which Complainant’s trademark is registered. It is inconceivable that Respondent was unaware of Complainant’s NEXIS mark when he registered the disputed domain name and Respondent makes no such assertion. The Panel finds that he intended to trade off Complainant’s reputation. His offering of IT services cannot be regarded as a bona fide offering of services. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. See Madonna v. Dan Parisi & “Madonna.com,” WIPO Case No. D2000-0847.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds Respondent registered the
disputed domain name with knowledge of Complainant’s mark and with the
intention to trade off Complainant’s reputation. He has used the disputed domain name to offer
services that compete with those of Complainant. Internet users seeking Complainant’s services
would be likely to be confused into believing the Respondent’s website was associated
with Complainant. These circumstances fall
within paragraph 4(b)(iv) of the Policy and constitute
evidence of both bad faith registration and bad faith use.
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 <nexisglobal.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 29, 2007
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