Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Softech ltd. c/o DNS Administrator
Claim Number: FA0709001075410
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Amy
L. Kertgate, of Fulbright & Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <martendalehubble.com>, registered with Spot Domain Llc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 10, 2007.
On September 11, 2007, Spot Domain Llc confirmed by e-mail to the National Arbitration Forum that the <martendalehubble.com> domain name is registered with Spot Domain Llc and that Respondent is the current registrant of the name. Spot Domain Llc has verified that Respondent is bound by the Spot Domain Llc 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 September 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 4, 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@martendalehubble.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant, through its
operating-division, Martindale-Hubbell, provides business and law information
and directory services.
Complainant, through its
predecessors, has operated its services under a family of MARTINDALE marks,
including MARTINDALE.COM and MARTINDALE-HUBBELL, since as early as 1868.
Specifically, Complainant has
offered online information and directory services under the MARTINDALE-HUBBELL
mark since as early as 1990.
Further, Complainant holds
several registrations for its MARTINDALE family of marks with the United States
Patent and Trademark Office (“USPTO”) (including trademark Reg. No. 1,542,506,
issued June 6, 1989; and trademark and service mark Reg. No. 2,057,030, issued
April 29, 1997).
Complainant also operates
several websites at domain names incorporating its family of MARTINDALE marks,
including at the <martindale.com> and <martindalehubbell.com>
domain names.
Respondent, Softech ltd. c/o DNS Administrator, registered the domain name <martendalehubble.com> on July 23, 2007.
The disputed domain name resolves to a portal website
featuring pop-up advertising and hyperlinks to third-party websites, including
those of Complainant’s competitors, through which Respondent generates
click-through revenue.
Respondent’s <martendalehubble.com> domain name is confusingly similar to Complainant’s MARTINDALE-HUBBELL mark.
Respondent does not have any rights or legitimate interests in the domain name <martendalehubble.com>.
Respondent registered and uses the disputed <martendalehubble.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant must first establish rights in the MARTINDALE-HUBBELL pursuant to Policy ¶ 4(a)(i). Its registration of the mark with the USPTO satisfies this requirement. See 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.” See also 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, ….”
The disputed domain name incorporates Complainant’s entire mark and simply substitutes an “e” for the “i,” removes the hyphen, deletes the last “l,” and adds the generic top-level domain (“gTLD”) “.com”. Such common misspellings of a mark and the addition of a gTLD are insufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). We conclude, therefore, that the disputed domain name is confusingly similar to Complainant’s MARTINDALE-HUBBELL mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to a complainant’s HEWLETT-PACKARD mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in a domain name is not sufficient to differentiate the domain from a mark); further see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain, such as “.net” or “.com”, does not affect the domain for the purpose of determining whether it is identical or confusingly similar under the Policy).
The Panel therefore concludes that Complainant has met its
burden under Policy ¶ 4(a)(i).
Complainant’s allegation that Respondent lacks rights and legitimate interests in the disputed domain name sufficiently satisfies Policy ¶ 4(a)(ii)’s prima facie proof requirement and shifts the burden to Respondent to prove that it holds rights and legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Because Respondent failed to submit a response to the Complaint, we may presume that it lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in a domain name because that respondent never submitted a response or provided a panel with evidence to suggest otherwise). We need make no further analysis. Nonetheless, we will examine the evidence to determine if there is any basis for determining that Respondent holds rights or legitimate interests to the disputed domain under Policy ¶ 4(c).
In this regard, we first note that there is no evidence,
including in the WHOIS record, suggesting that Respondent, “Softech ltd. c/o DNS Administrator,” is commonly known
by the the <martendalehubble.com> domain name. Therefore, Respondent has failed to establish
rights under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating that the fact that “nothing in Respondent’s WHOIS information implies
that Respondent is ‘commonly known by’ the disputed domain name” is a factor in
determining that Policy ¶ 4(c)(ii) does not apply);
see also Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003): “Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”
Further, Respondent’s undenied use of the disputed domain name presumably to generate click-through revenue by displaying pop-up advertising and hyperlinks to third-party websites, including those of Complainant’s competitors, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. We therefore conclude that Respondent is also unable to establish rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant there presumably received compensation for each misdirected Internet user); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that a respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from a complainant's competitor).
The Panel thus concludes that Complainant has met its burden
under Policy ¶ 4(a)(ii).
From the undisputed record before us, it is evident that Respondent is using the disputed domain name to confuse Internet users as to Complainant’s affiliation with the disputed domain name for commercial gain through the generation of click-through revenue. This behavior is indicative of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, it appears that Respondent registered the <martendalehubble.com> domain name with
at least constructive knowledge of Complainant’s rights in the
MARTINDALE-HUBBELL trademark and service mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel concludes that Complainant has
met its burden under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <martendalehubble.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 17, 2007
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