Reed Elsevier Inc., Reed Elsevier
Properties Inc. and Seisint, Inc. v. DO NOT DISCLOSE
Claim
Number: FA0508000536271
Complainants are
Reed Elsevier Inc., Reed Elsevier
Properties Inc. and Seisint, Inc. (collectively
“Complainant”), represented by Tara M.
Vold of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is DO NOT DISCLOSE (“Respondent”), 15511 N. Hayden Rd., Ste 160, PMB
353, Scottsdale, Arizona 85260.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lexisnexisonline.com> and <acurint.com>,
registered with Go Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 10, 2005.
On
August 11, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <lexisnexisonline.com> and <acurint.com>
domain names are registered with Go Daddy Software, Inc. and that Respondent is
the current registrant of the names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. 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
August 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 2005 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@lexisnexisonline.com and postmaster@acurint.com
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 7, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr. as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lexisnexisonline.com>
and <acurint.com> domain names are confusingly similar to
Complainant’s LEXISNEXIS and ACCURINT marks.
2. Respondent does not have any rights or
legitimate interests in the <lexisnexisonline.com> and <acurint.com>
domain names.
3. Respondent registered and used the <lexisnexisonline.com>
and <acurint.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Through its
LexisNexis operating division, Complainant, Reed Elsevier Inc., offers a wide range of comptuer software, computer
assisted research services and other computer-related services under its
LEXISNEXIS family of marks.
Complainant, Reed Elsevier Properties Inc., owns numerous registrations
with the United States Patent and Trademark Office (“USPTO”) for the LEXISNEXIS
mark (including Reg. No. 2,673,044 issued January 7, 2003; Reg. No. 2,670,069
issued December 31, 2002; and Reg. No. 2,670,068 issued December 31, 2002),
which it licenses to Complainant Reed Elsevier Inc. Complainant has used its LEXISNEXIS mark since at least as early
as 1983.
Complainant,
Seisint, Inc., is a wholly-owned subsidiary of Reed Elsevier Inc. Complainant provides individual background
information services under its ACCURINT mark.
Complainant holds registrations with the USPTO for the ACCURINT mark
(Reg. No. 2,624,319 issued September 24, 2002, filed June 20, 2001 and Reg. No.
2,941,345 issued April 19, 2005, filed January 29, 2004). Complainant began using its ACCURINT mark in
commerce in April 2001.
Complainant has
spent tens of millions of dollars promoting its LEXISNEXIS and ACCURINT marks
and the products and services associated therewith. Complainant offers its products and services via websites at the
<lexis.com>, <nexis.com>, <lexisnexis.com> and
<accurint.com> domain names.
Respondent
registered the <acurint.com> domain name on October 28, 2001 and
the <lexisnexisonline.com> domain name on April 16, 2005. The disputed domain names divert Internet
users to a third-party website of one of Complainant’s competitors.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
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
asserts rights in the LEXISNEXIS and ACCURINT marks based on its registrations
of the marks with the USPTO. It is well
established under the Policy that a complainant’s registration of a mark with a
federal authority establishes a prima facie case of the complainant’s
rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“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.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <lexisnexisonline.com> domain name differs from Complainant’s LEXISNEXIS
mark with the addition of the common or descriptive term “online,” while the <acurint.com>
domain name simply omits one letter “c” from Complainant’s ACCURINT mark. It is well-established under the Policy that
the addition of a common or descriptive term to or the omission of a letter
from a mark is inadequate to negate the confusing similarity between a domain
name and a mark. See Christie’s
Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001)
(finding that the domain name
<christiesauction.com> is confusingly similar to the complainant's
mark since it merely adds the word “auction” used in its generic sense); see
also Guinness UDV N. Am., Inc. v. Dallas
Internet Servs., D2001-1055 (WIPO Dec. 12,
2001) (finding the <smirnof.com> domain name confusingly similar to the
complainant’s SMIRNOFF mark because merely removing the letter “f” from the
mark was insignificant). Additionally,
adding the generic top-level domain “.com” to Complainant’s marks is irrelevant
in making a determination of similarity under Policy ¶ 4(a)(i). See Isleworth Land Co. v.
Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it
is a “well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis”).
Thus, the Panel finds that the disputed domain names are confusingly
similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Complainant
has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach
is for respondents to seek to bring themselves within one of the examples of
paragraph 4(c) or put forward some other reason why they can fairly be said to
have a relevant right or legitimate interests in respect of the domain name in
question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain names under
Policy ¶ 4(c).
Nothing
in the record suggests that Respondent is commonly known by the <lexisnexisonline.com> and <acurint.com> domain
names, and Complainant asserts that Respondent is not licensed or otherwise
authorized to use Complainant’s LEXISNEXIS and ACCURINT marks for any
purpose. Additionally, Complainant
asserts that its marks are unique and arbitrary, so it is unlikely that
Respondent would have coined the terms on its own for use in the domain
names. Because Respondent has failed to
respond to any of Complainant’s contentions, the Panel is left with no evidence
to rebut Complainant’s assertions that Respondent is not commonly known by the
disputed domain name. Thus, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark) see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”); see also
Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum
Feb. 6, 2003) (“Considering the nonsensical nature of the
[<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent”).
Furthermore,
Complainant maintains that Respondent is using the <lexisnexisonline.com>
and <acurint.com> domain names to divert Internet users searching
for Complainant’s websites to a third-party website that offers competing
services, presumably so that Respondent can earn referral fees for diversions
through its domain names. Respondent
cannot establish that it is making a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when Respondent is
using confusingly similar domain names to redirect Internet users to a
competing website for Respondent’s commercial gain. See WeddingChannel.com Inc. v. Vasiliev, FA 156716
(Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”). Moreover, Respondent has not provided a response and, therefore, has
neglected to provide any evidence that would challenge Complainant’s prima
facie case. Consequently, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(i) or (iii). See Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence,
the complainant and the panel must resort to reasonable inferences from
whatever evidence is in the record. In
addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such
inferences from respondent’s failure to respond ‘as it considers
appropriate.’”).
Complainant
has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the <lexisnexisonline.com> and <acurint.com> domain
names to resolve to a website that offers products and services that compete
with those of Complainant. The Panel
infers that Respondent receives referral fees for forwarding Complainant’s
potential customers to a competitor’s website.
Respondent’s use of Complainant’s well-known and distinctive LEXISNEXIS
and ACCURINT marks in the domain names creates a likelihood of confusion and
suggests an attempt on the part of Respondent to attract Internet users to
Respondent’s competing website for Respondent’s commercial gain. The Panel finds that there is sufficient
evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the 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 the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent registered a domain name confusingly similar to the
complainant’s mark and the domain name was used to host a commercial website
that offered similar services offered by the complainant under its mark); see
also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the complainant).
Furthermore,
Respondent’s registration of the <lexisnexisonline.com> and <acurint.com> domain
names, which contain confusingly similar versions of Complainant’s distinctive
LEXISNEXIS and ACCURINT marks, and Complainant’s registration of its marks with
the USPTO suggest that Respondent knew of Complainant’s rights in the
marks. Complainant has spent millions
of dollars to advertise and promote its marks and has acquired substantial
goodwill in its marks, causing the public to associate the LEXISNEXIS and
ACCURINT marks with Complainant’s goods and services. In light of these circumstances, the Panel finds that Respondent
chose the disputed domain names due to the distinctive qualities of
Complainant’s marks. Respondent’s
registration of domain names that contain Complainant’s marks despite
Respondent’s knowledge of Complainant’s rights in the marks is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and
constructive knowledge of the complainant’s EXXON mark given the worldwide
prominence of the mark and thus the respondent registered the domain name in
bad faith); see also Victoria’s Cyber
Secret Ltd. v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072).
Furthermore, the <acurint.com> domain name registered by Respondent consists of a misspelled version
of Complainant’s well-known ACCURINT mark.
Thus, Respondent is engaging in the practice of “typosquatting” by
taking advantage of a potential typographical error made by Internauts
intending to reach Complainant’s website at the <accurint.com> domain
name, who inadvertently forget to type the letter “c.” Under the Policy, typosquatting is
sufficient evidence of bad faith registration and use of the disputed domain
name. The Panel, therefore, finds that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See Canadian
Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of
bad faith.”).
Complainant
has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <lexisnexisonline.com> and <acurint.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 21, 2005
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