Reed Elsevier
Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT Lexis
Claim Number: FA0107000098249
PARTIES
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc., Newton, Massachusetts, USA (“Complainant”) represented by Stacey H. King of Howrey Simon Arnold & White. Respondent is Carlos M. Alvarez d/b/a IT Lexis, Bogata, Columbia.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <itlexis.com>, registered with Iholdings.com, Inc. d/b/a DotRegistrar.com.
PANEL
On August 16, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 20, 2001; the Forum received a hard copy of the Complaint on July 23, 2001.
On July 23, 2001, Iholdings.com Inc., d/b/a DotRegistrar.com confirmed by e-mail to the Forum that the domain name <itlexis.com> is registered with Iholdings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a DotRegistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a DotRegistrar.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 July 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 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@itlexis.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
1. the <itlexis.com> domain name is confusingly similar to its family of LEXIS marks of which Complainant has numerous registrations;
2. Respondent has no rights or legitimate interests in the <itlexis.com> domain name; and
3. Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
No Response was received.
FINDINGS
Complainants,
through one of its operating divisions, LEXIS-NEXIS, is in the business
of offering a wide range of computer software, computer assisted research
services, and other computer-related services under the marks LEXIS, NEXIS and
LEXIS-NEXIS and/or a family of “LEX” prefix marks (collectively the “LEXIS
Marks”). Complainant,
Reed Elsevier Properties Inc. is the owner and Complainant, Reed Elsevier Inc.
is the licensee of all rights in and to the trademarks by assignment, of the
numerous U.S. registrations and Columbia applications. Some of Complainant's US registrations are
incontestable. Complainant's LEXIS
marks have achieved international notoriety in connection with its services
within the legal industry. Respondent
registered the <itlexis.com>
on November 7, 2000. The <itlexis.com> domain name resolves to
a website that promotes the Respondent as an expert in the field of ecommerce
law.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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
Complainant's rights to the LEXIS marks are well established through the multiple registrations, international reputation and worldwide use of the marks. The <itlexis.com> domain name is confusingly similar to Complainant's LEXIS marks in that it incorporates the entire LEXIS mark with the addition of the generic term "it" which is a well-known acronym for intellectual technology. There is ample authority for the finding that a domain name consisting of a famous mark with a generic descriptive term is confusingly similar for the purposes of Policy ¶ 4(a)(i). E.g., Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).
Additionally, the disputed domain name is so confusingly similar a reasonable Internet user would assume that the domain name is 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent is using
the <itlexis.com> domain name
to promote its services within the same general field as Complainant. Using an infringing domain name to offer
competing goods or services does not constitute a bona fide offering of goods
or services within the meaning of Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed
domain names to sell competing goods was an illegitimate use and not a bona
fide offering of goods); cf. America Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that "it would be unconscionable to find a
bona fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the complainant’s mark and for the
same business”).
Furthermore, Complainant asserts, and Respondent fails to refute, that Respondent is not authorized nor licensed to use Complainant's LEXIS mark for any purpose. In light of this lack of authorization, coupled with the worldwide fame of its LEXIS marks, Complainant alleges that Respondent cannot be commonly known by the <itlexis.com> domain name pursuant to Policy ¶ 4(c)(ii). In the absence of a Response, the Panel finds the allegations of Complainant to be true and further finds that Respondent is not commonly known by the disputed domain name. Compare Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true), with Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Finally, Respondent's infringing use of Complainant's LEXIS marks to provide similar services to those offered by Complainant do not constitute a legitimate noncommercial nor fair use of the <itlexis.com> domain name pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Complainant
asserts, and Respondent fails to refute, that Respondent registered the <itlexis.com> domain name with an
intent to attract, for commercial gain, Internet users to its online location,
by creating a likelihood of confusion with Complainant's LEXIS marks as to the
source, sponsorship, affiliation, or endorsement of Respondent's services. Such an intention constitutes bad faith
registration under Policy ¶ 4(b)(iv). See State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where the Respondent registered the domain name
<bigtex.net> to infringe on the Complainant’s good will and attract
Internet users to the Respondent’s website); see also State Farm Mut.
Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding
that the Respondent registered the domain name <statefarmnews.com> in bad
faith because Respondent intends to use Complainant’s marks to attract the
public to the web site without permission from Complainant).
Complainant also contends, and Respondent does not dispute, that Respondent is using the <itlexis.com> domain name in an attempt to falsely gain credibility for the services Respondent offers through misleading users into believing there is an association with Complainant, a known expert in the same field. This is further evidence of bad faith use under Policy ¶ 4(b)(iv). E.g., Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).
The Panel finds that Complainant has met its burden under Policy ¶4(a)(iii).
DECISION
Having satisfied all three elements of the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <itlexis.com> domain name be tranferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated August 20, 2001
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