Reed Elsevier Inc. & Reed Elsevier
Properties Inc. v. Amcore & Company for Sale Domains $250 or best offer
Claim
Number: FA0402000236555
Complainants are
Reed Elsevier Inc. and Reed Elsevier Properties Inc. (hereinafter “Complainant”), represented
by Tara M. Vold of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC, 20004. Respondent
is Amcore & Company For Sale Domains
$250 or best offer (“Respondent”), 166 Sohrevardi Shomali Record Building
Second Floor, Tehran, Iran Postal District, U.S.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwlexisnexis.com>, registered with Bulkregister.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 9, 2004; the Forum received a hard copy of the
Complaint on February 10, 2004.
On
February 13, 2004, Bulkregister.com confirmed by e-mail to the Forum that the
domain name <wwwlexisnexis.com> is registered with Bulkregister.com
and that Respondent is the current registrant of the name. Bulkregister.com has
verified that Respondent is bound by the Bulkregister.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
February 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 2004 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@wwwlexisnexis.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.
On
March 18, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant, Reed Elsevier Inc. c/o LexisNexis.
A. Complainant makes the following assertions:
1. Respondent’s <wwwlexisnexis.com>
domain name is confusingly similar to Complainant’s LEXIS-NEXIS marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwlexisnexis.com> domain name.
3. Respondent registered and used the <wwwlexisnexis.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through its LexisNexis operating division, has used the LEXIS mark (e.g. U.S.
Reg. No. 1,020,214, registered on September 9, 1975) since as early as 1972 in
connection with the offering of computer-assisted research services.
Complainant has also obtained numerous registrations for the LEXIS-NEXIS mark (e.g.
U.S. Reg. Nos. 2,354,849; 2,337,918; and 2,370,256) on the Principal
Register of the U.S. Patent and Trademark Office, and has used this mark since
as early as 1980 for services such as, inter alia, computer-assisted
reseach in the field of legal directories and general business directories.
Notably, Complainant operates a website at the <lexisnexis.com> domain
name incorporating its LEXIS-NEXIS mark.
Respondent,
named “Amcore & Company for Sale Domains $250 or best offer” in the WHOIS
contact information for the <wwwlexisnexis.com> domain name,
obtained its registration on May 12, 1998 without license or authorization to
use Complainant’s LEXIS-NEXIS mark for any purpose. The disputed domain name
resolves to a “Top 10 Sites” portal page which is followed by a series of
random pop-up advertisements.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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
established rights in the arbitrary LEXIS-NEXIS mark through continuous use of
the mark in commerce since as early as 1980. See British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established).
Respondent’s <wwwlexisnexis.com>
domain name is confusingly similar to
Complainant’s LEXIS-NEXIS mark. Except for the elimination of the hyphen in
Complainant’s LEXIS-NEXIS mark, Respondent has only affixed the prefix “www” to
Complainant’s mark, and this is insufficient to create a domain name that is
distinct from Complainant’s mark. See Dana Corp. v. $$$ This Domain
Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding
Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature); see also Neiman Marcus Group, Inc. v. S1A, FA 128683
(Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark).
Accordingly, the
Panel finds that the <wwwlexisnexis.com> domain name is confusingly similar to Complainant’s LEXIS-NEXIS mark under
Policy ¶ 4(a)(i).
Respondent’s
placement of the “www” prefix in front of Complainant’s LEXIS-NEXIS mark is a
well-known tactic for ensnaring Internet users who misspell a website’s address
by failing to type the period between the abbreviation for the world-wide web
and the second-level domain name. Such an underhanded tactic is evidence in and
of itself that Respondent lacks rights and legitimate interests in the disputed
domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the
name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat.
Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate
interests in the <wwwremax.com> domain name as it is merely using
Complainant’s mark to earn profit from pop-up advertisements).
Further evidence that Respondent lacks rights and legitimate interests
in the disputed domain name exists in Respondent’s unauthorized use of
Complainant’s arbitrary LEXIS-NEXIS mark to generate advertising revenue.
Respondent’s use of Complainant’s mark, and the goodwill surrounding that mark,
for commercial gain is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii). See FAO Schwarz v.
Zuccarini, FA 95828
(Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in
the domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website); see also Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<wwwlexisnexis.com> domain
name under Policy ¶ 4(a)(ii).
Respondent’s
typosquatted version of Complainant’s arbitrary LEXIS-NEXIS mark will create
confusion in the minds of Internet users who attempt to access Complainant’s
website at the <lexisnexis.com> domain name and end up at Respondent’s
website. Such confusion commercially benefits Respondent through its generation
of revenue with pop-up advertisements, and is thus evidence that the domain
name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See
Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net
1111111111, D2003-0232 (WIPO May 22, 2003) (holding that the absence of a
dot between the “www”and “canadiantire.com” in the <wwwcanadiantire.com>
domain name was likely to confuse Internet users and evidences bad faith
registration and use of the domain name); see also Bank of Am. Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (Finding that
the domain names were registered and used in bad faith, “[s]ince the disputed
domain names contain entire versions of Complainant’s marks and are used for
something completely unrelated to their descriptive quality”); see also
Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that
Respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name).
Additional
evidence of Respondent’s bad faith use and registration of the disputed domain
name can be found through Respondent’s method of naming itself “Amcore &
Company for Sale Domains $250 or best offer.” As the only party that would be
conceivably interested in a domain name that fully incorporates Complainant’s
arbitrary LEXIS-NEXIS mark would be Complainant, it appears that Respondent’s
ultimate goal in registering the disputed domain name was to sell its domain
name registration to Complainant. Rather than contact Complainant with an offer
to sell its domain name registration, Respondent offers its registration for
sale with its very name, evidence that the domain name was registered and used
in bad faith pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO
Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify
itself and its administrative and billing contacts both conceals its identity
and unmistakably conveys its intention, from the date of the registration, to
sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp.,
D2000-0022 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS
registration information contained the words, “This is domain name is for
sale”).
The Panel thus
finds that Respondent registered and used the <wwwlexisnexis.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <wwwlexisnexis.com> domain name be TRANSFERRED
from Respondent to Complainant, Reed
Elsevier Inc. c/o LexisNexis.
Louis E. Condon, Panelist
Dated:
March 23, 2004
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