Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Softech Ltd. c/o DNS Administrator
Claim Number: FA0712001122612
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Amy L. Kertgate of Fulbright & Jaworski, 801 Pennsylvania Avenue, N.W., Washington, DC, 20004. Respondent is Softech Ltd. c/o DNS Administrator (“Respondent”), PO Box 10509 APO, Grand Cayman KY1-1005, KY.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexisnexisone.com>, registered with Name.com LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 18, 2007; the National Arbitration Forum received a hard copy of the Complaint December 19, 2007.
On December 19, 2007, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <lexisnexisone.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC verified that Respondent is bound by the Name.com LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2008, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <lexisnexisone.com>, is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent has no rights to or legitimate interests in the <lexisnexisone.com> domain name.
3. Respondent registered and used the <lexisnexisone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), offers a wide range of computer software, computer assisted research services, and other computer-related services through its operating division, LexisNexis. These services are marketed under the LEXIS, NEXIS, and LEXISNEXIS marks. Since 1972, Complainant has marketed its computer-assisted research services for the legal field under the LEXIS mark. Complainant has offered computer-assisted and online research software products under the LEXISNEXIS mark since 1983, and software products since 1985. Complainant has specifically marketed its legally-related and public database services under the LEXISNEXIS mark since 1985. Complainant currently offers public databases in the areas of assets, bankruptcy filings, business and corporate information, judgment, tax and UCC liens, licenses, personal and business locators, and verdicts and settlements. Complainant registered the LEXISNEXIS mark with the United States Patent and Trademark Office (“USPTO”) on June 6, 2000 (Reg. No. 2,354,849). Complainant has also registered the LEXIS-NEXIS mark with the USPTO on August 28, 2001 (Reg. No. 2,481,254) and the LEXISONE.COM mark on December 17, 2002 (Reg. No. 2,644,022). Furthermore, Complainant owns and markets its products on the websites that resolve from the <lexis.com> and <lexisnexis.com> domain names.
Respondent registered the <lexisnexisone.com> domain name August 22, 2007. Respondent is using the disputed domain name to operate a portal website, displaying links to search categories including “Lexisnexis,” “Travel,” “Online Dating,” “Insurance,” “Jobs,” and “Health and Beauty.” The website that resolves from the disputed domain name also displays links to lawyer locator services and credit risk assessment services, categories directly related to Complainant’s business.
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 will draw such inferences as the Panel 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 Complainant to 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 registered the LEXISNEXIS mark with the USPTO several years before Respondent registered the <lexisnexisone.com> domain name. Under Policy ¶ 4(a)(i), the Panel finds that Complainant established rights to the mark as a result of its registration of the mark with the USPTO. 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The disputed domain name contains Complainant’s mark in its entirety and includes the additional generic term “one.” Respondent also included the generic top-level domain (“gTLD”) “.com” when it registered the disputed domain name. Respondent’s additions to the LEXISNEXIS mark, however, are inconsequential in the determination of whether the disputed domain name is confusingly similar to Complainant’s mark. Generic terms added to a registered mark are insufficient to distinguish the mark. Here, the generic term “one” may relate to Complainant’s since it also owns the LEXISONE.COM mark. Moreover, top-level domains are required in all domain names, thus the inclusion of a gTLD does not distinguish a disputed domain name from a registered mark. The Panel finds that the <lexisnexisone.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also 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).
The Panels finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the disputed domain name. After Complainant makes a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. Here, the Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii) See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to respond to the Complaint allows the Panel to presume that Respondent lacks all rights and legitimate interests in the <lexisnexisone.com> domain name. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Although Respondent did not respond, this Panel examines all evidence in the record to determine if the evidence suggests that Respondent has such rights or legitimate interests under Policy 4(c).
Complainant asserts that Respondent is not a licensee of Complainant and has never been otherwise authorized to use the LEXISNEXIS mark. In addition to Respondent’s failure to receive authorization to use Complainant’s mark, according to the WHOIS information, Respondent is not commonly known by the <lexisnexisone.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using the disputed domain name to host a website that displays both related and unrelated links to search headings, Complainant contends that Respondent is misleadingly diverting Complainants’ customers and potentially tarnishing the LEXISNEXIS mark. In addition, the website that resolves from the disputed domain name is programmed to generate at least one pop-up advertisement each time the site is accessed. Complainant asserts that Respondent’s uses are not in connection with a bona fide offering of goods or services. The Panel finds that Respondent has not demonstrated rights or legitimate interests in the <lexisnexisone.com> domain name because the display of related and unrelated search headings does not demonstrate a bona fide offering under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant maintains that Respondent is generating revenue
in connection with the website that resolves from the <lexisnexisone.com> domain name by
receiving compensation for searches, pop-up advertisements and user links to
the websites advertised on Respondent’s website. Complainant also contends that Respondent is
creating a likelihood of confusion with Complainant’s LEXISNEXIS mark as to the
source of the website that resolves from the disputed domain name and the search
headings on that website. The Panel
finds that Respondent’s use of its website to attract Internet users for
commercial gain, benefiting from the likelihood of confusion, evidences
registration and use in bad faith under Policy ¶ 4(b)(iv). See
State Fair of
Respondent’s conduct evidences an intention to disrupt Complainant’s business by advertising links to websites related to Complainant’s business. The Panel finds that Respondent’s conduct evidences registration and use in bad faith under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds that Complainant 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 <lexisnexisone.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 14, 2008.
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