DECISION
Reed Elsevier Inc. & Reed Elsevier Properties Inc. v. Ulexis a/k/a Lawfirm
Claim Number: FA0106000097684
PARTIES
Complainant is Reed Elsevier Inc. & Reed Elsevier Properties Inc., Newton, MA, USA ("Complainant") represented by Tara M. Vold, of Howrey Simon Arnold & White. Respondent is Ueli Grueter Ulexis a/k/a Lawfirm, Luzern, CH ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ulexis.com>, <ulexis.net>, <ulexis.org>, <yourlexis.com>, <yourlexis.net>, and <yourlexis.org> registered with Register.Com.
PANEL
The undersigned certifies that he or has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 19, 2001; the Forum received a hard copy of the Complaint on June 20, 2001.
On June 20, 2001, Register.Com confirmed by e-mail to the Forum that the domain name <ulexis.com>, <ulexis.net>, <ulexis.org>, <yourlexis.com>, <yourlexis.net>, and <yourlexis.org> are registered with Register.Com and that the Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com 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 June 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 11, 2001 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@ulexis.com, postmaster@ulexis.net, postmaster@ulexis.org, postmaster@yourlexis.com, postmaster@yourlexis.net, and postmaster@yourlexis.org by e-mail.
A timely response was received and determined to be complete on July 11, 2001.
On July 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the domain names at issue are identical or confusingly similar to their trademark and existing domain name; that the Respondent lacks rights or legitimate interests in the domain names; and that the domain names were registered in bad faith to intentionally attract, for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to the source of the website or service.
B. Respondent
The Respondent contends that the domain names at issue are not identical or confusingly similar to Complainant’s trademarks; that it has an absolutely legitimate and important interest in the domain name and that it did not register the domain names in bad faith.
FINDINGS
One of the Complainant’s operating divisions, Lexis-Nexis, is engaged in the business of computer software, computer assisted research services and other computer-related services. The Complainant has continuously offered its services under the Lexis mark since as early as 1972, under the Lexis-Nexis mark as early as 1983 and under the Nexis mark as early as 1979. The Complainant holds eleven (11) U.S. Trademarks; two (2) Swiss trademarks, and one trademark in the European Union. The earliest mark (Lexis) was registered in 1975.
The Respondent is a registered attorney whose business is providing legal consulting services via the Internet. The Respondent registered the Ulexis trademark on March 15, 2001.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
The domain names at issue appear to incorporate a famous trademark with the letter "u" and/or the word "your" inserted before the mark. See NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the "domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT"); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the "domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark¼"). see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).
In fact, the domain names at issue are so confusingly similar that an Internet user may assume that the domain names are somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).
Rights or Legitimate Interests
The Complainant and Respondent are engaged in similar business and it would appear that the Respondent registered the domain names at issue to divert potential customers to its competing website. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Registration and Use in Bad Faith
As the named Respondent is a registered attorney and engaged in the same type of business as the Complainant, one would think he would be aware of Complainant’s registered trademarks. See generally Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration)
Further, it appears that the Respondent acted in bad faith by registering the domain names to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s family of marks. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
DECISION
As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this Panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names "<ulexis.com>, <ulexis.net>, <ulexis.org>, <yourlexis.com>, <yourlexis.net>, and <yourlexis.org>" be transferred from the Respondent to the Complainant.
Honorable Paul A Dorf, (Ret.) Panelist
Dated: August 3, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page