Reed Elsevier Inc and Reed Elsevier Properties Inc v. Brad Magee
Claim Number: FA0110000100311
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc., Newton, MA (“Complainant”) represented by Stacey H. King, of Howrey, Simon, Arnold & White. Respondent is Brad Magee, Vancouver, BC, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexissystems.com>, registered with Network Solutions, Inc.
On November 6, 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 4, 2001; the Forum received a hard copy of the Complaint on October 4, 2001.
On October 8, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <lexissystems.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 October 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 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 firstname.lastname@example.org by e-mail.
Having received no timely 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.
On November 8, 2001, Respondent sent a brief email concerning the registration of the domain name. Although it was ten days late, and did not conform to the requirements for a Response as set forth in the Rules, the Panel did consider it.
Complainant subsequently filed an additional submission in response on November 14, 2001.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <lexissystems.com> domain name is confusingly similar to Complainant's LEXIS and LEXIS-NEXIS marks.
Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name has been registered and used in bad faith.
The Respondent failed to submit a timely Response. The late Response states the Respondent did not act in bad faith.
Since as early as 1972 Complainant has offered computer-assisted research services under the mark LEXIS. From as early as 1980 until the present, Complainant has offered and continues to offer software products and private litigation support databases under the name LEXIS. Since 1983 until the present, Complainant has offered on-line legal research services under the LEXIS-NEXIS mark.
Complainant is the owner of 17 U.S. Trademark registrations incorporating the mark LEXIS. Complainant also has a formidable presence on the Internet consisting of on-line legal resources at <lexis.com>, <lexis.org>, <lexisone.com>, and <lexis-nexus.com>. Over 2.3 million persons obtain access to Complainant's services on-line via websites connected to these domain names.
Complainant has expended tens of millions of dollars internationally promoting its services. Complainant's marks and domain names have become recognized by consumers throughout the world as designating Complainant as the source of services marked with LEXIS.
Respondent registered the <lexissystems.com> domain name on February 3, 2000, many years after Complainant's mark and services achieved world-wide recognition. Respondent's domain name does not resolve to an active website even though Respondent has held the domain for almost two years. Respondent emailed Complainant and offered the domain for sale for a price it deemed "both fair and reasonable." Complainant offered to reimburse Respondent for documentable out-of-pocket expenses and Respondent replied that it would be open to "monetary offers from Complainant toward the domain name's purchase." Complainant offered $500, and Respondent replied that it would consider $10,000, a figure in excess of out-of-pocket expenses.
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.”
A review of Respondent's late response, states that he is prepared to release the domain name to the Complainant. The Complainant's representations would remain substantively undisputed even if the late response were accepted, which the panel declines to do.
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 through its numerous registrations and continuous use has established that it has rights in the LEXIS and LEXIS-NEXUS marks. Furthermore, Respondents <lexissystems.com> domain name is confusingly similar to Complainant's marks because it incorporates the entirety of one of Complainant's marks and merely adds the generic term "systems" to the end. The term "systems" is synonymous with the computer/software field in which Complainant is engaged and therefore it is also descriptive of Complainant. It has been found that the use of a generic term descriptive of Complainant's business does not create a distinct mark nor overcome a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <lexissystems.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, Respondent claims that he obtained the website on behalf of his former employer, however it is noted that the domain name was registered in Respondents own name and address. Respondent has failed to establish a website at the disputed domain name even though it has owned <lexissystems.com> for almost two years. Respondent has not established any rights or legitimate interests in said domain name.
Respondent's offer to sell the disputed domain name is not a legitimate noncommercial, or fair use of the <lexissystems.com> domain name. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <lexissystems.com> domain name is confusing similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar <lexissystems.com> domain name is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, Respondent's offer to sell the disputed domain name to the Complainant for $10,000 a sum exceeding out-of-pocket expenses resulting from registration, is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).
Furthermore, Respondent's registration and passive holding of the <lexissytems.com> domain name supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
And finally, registration of a principal’s domain name by an agent in his or her own name is evidence of bad faith. See Fishtech, Inc. v Rossiter, FA 92976 (Nat. Arb. Forum March 10, 2000)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <lexissystems.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 23, 2001
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