Reed Elsevier Inc. and Reed Elsevier Properties Inc. v.
Claim Number: FA0706001024242
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively,
“Complainant”), represented by Amy L. Kertgate, of Fulbright &
Jaworski,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lexislawyer.com> and <lexislaw.com>, registered with Go Daddy Software, Inc.
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 electronically on
On
On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 2007 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@lexislawyer.com and postmaster@lexislaw.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <lexislawyer.com> and <lexislaw.com> domain names are confusingly similar to Complainant’s LEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexislawyer.com> and <lexislaw.com> domain names.
3. Respondent registered and used the <lexislawyer.com> and <lexislaw.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is in the business of offering a wide range of computer software, online computer assisted research and information services, and other computer-related services. In connection with the provision of these goods and services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the LEXIS mark (Reg. No. 1,020,214 issued September 9, 1975).
Respondent registered the <lexislawyer.com> domain name on
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 attempts to establish rights in the LEXIS mark
through registration of the mark with the USPTO. The Panel finds that Complainant’s timely
registration of LEXIS mark and subsequent extensive use of the mark for over
thirty years sufficiently establishes rights in the mark pursuant to Policy ¶
4(a)(i). See ESPN, Inc. v. MySportCenter.com,
FA 95326 (Nat. Arb. Forum
Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the
SPORTSCENTER mark through its valid trademark registrations with the USPTO and
similar offices around the world); see
also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
The disputed domain names contain Complainant’s LEXIS mark in its entirety and add either the descriptive term “law” or the descriptive term “lawyer,” both of which directly relate to Complainant’s business, as well as the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD and descriptive terms relating to Complainant’s business to a protected mark indicate that Respondent’s disputed domain names are confusingly similar to Complainant’s protected mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the 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.
In instances where Complainant has made a prima facie case in support of its
allegations, the burden of proof shifts to Respondent to set forth concrete
evidence indicating that it has rights or legitimate interests in accordance
with Policy ¶ 4(a)(ii). See
SEMCO Prods., LLC v. dmg world media (
Respondent’s WHOIS information
does not indicate, and there is nothing further in the record to suggest, that
Respondent is commonly known by the disputed domain names. In addition,
Respondent is not authorized or licensed by Complainant to use the LEXIS mark
for any purpose. Thus, Respondent lacks
rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Respondent’s <lexislawyer.com> domain name resolves to a website offering products and services that compete with Complainant’s business. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Respondent’s <lexislaw.com>
domain name resolves to a website featuring advertisements for the
registrar. The Panel finds that
Respondent’s use of the <lexislaw.com>
domain name is neither a bona fide
offering of goods or services in accordance with Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See De La Rue Holdings PLC v. Video
Images Prods. L.L.C., FA
196054 (Nat. Arb. Forum Oct.
27, 2003) (finding that the respondent was not using the <delaru.com>
domain name for a bona fide offering of goods or services or a
legitimate noncommercial or fair use because the respondent was using the
domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up]
advertisements,” presumably for commercial benefit); see also Bank of Am. Corp. v.
Respondent is using the <lexislawyer.com> domain name to
redirect Internet users to a website featuring products and services in
competition with Complainant. This
constitutes a disruption of Complainant’s business and qualifies as bad faith
registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
The Panel presumes that Respondent benefits commercially
when consumers are redirected to Respondent’s confusingly similar domain
names. Respondent is therefore
capitalizing on the likelihood that consumers will confuse the source of the
disputed domain names as being affiliated with Complainant. This is further evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel thus finds that Policy ¶ 4(a)(iii) has been 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 <lexislawyer.com> and <lexislaw.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 9, 2007
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