Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. William Vaughan
Claim Number: FA0801001126496
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 <martinhubbel.com>, registered with Goserveyourdomain.com 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 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 postmaster@ martinhubbel.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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <martinhubbel.com> domain name is confusingly similar to Complainant’s MARTINDALE-HUBBEL mark.
2. Respondent does not have any rights or legitimate interests in the <martinhubbel.com> domain name.
3. Respondent registered and used the <martinhubbel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Reed Elsevier Inc. and Reed Elsevier Properties
(“Complainant”) provides information and directory services in the fields of
law and business under the MARTINDALE.COM, MARTINDALE-HUBBELL, and
MARTINDALE-HUBBELL DISPUTE RESOLUTION DIRECTORY marks. Complainant, through its
predecessor-in-interest, has offered printed information and directory services
under the MARTINIDALE mark since 1868 and under the MARTINDALE-HUBBELL mark
since 1931. Complainant registered the
MARTINDALE-HUBBELL mark with the United States Patent and Trademark Office
(“USPTO”) on
Respondent registered the <martinhubbel.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.
By registering the MARTINDALE-HUBBELL mark with the USPTO, Complainant has established rights to the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD 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, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel finds that the
<martinhubbel.com>
domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). The disputed domain name uses the dominant
portion of Complainant’s MARTINDALE-HUBBELL mark, removes the hyphen and four
letters from the mark, and adds the generic top-level domain (“gTLD”) “.com.” None of these factors distinguish the
disputed domain name from Complainant’s mark.
Therefore, the Panel concludes the <martinhubbel.com> domain name is confusingly similar to Complainant’s
MARTINDALE-HUBBEL mark under Policy ¶ 4(a)(i). See Nev. State Bank v.
Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also Ritz-Carlton Hotel Co. v. Club Car Executive
Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a
hyphen in the domain names is not sufficient to differentiate the domain names
from the mark); see also Wellness Int’l Network, LTD v.
Apostolics.com, FA 96189 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has the initial burden of making a prima facie case demonstrating that
Respondent lacks all rights and legitimate interests in the disputed domain
name. The Panel finds that Complainant’s
assertion effectively shifts the burden to Respondent to demonstrate that it
does have rights or legitimate interests in the disputed domain name 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
G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum
Respondent could demonstrate rights and legitimate interests
under Policy ¶ 4(c) by providing evidence in a response to the Complaint. But, here, Respondent has not responded,
therefore, the Panel presumes that Respondent lacks all rights and legitimate
interests under Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom
PLC, FA 361190 (Nat. Arb. Forum
The panel in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum
Furthermore, Respondent is using the disputed domain name to redirect Internet users to Respondent’s website offering competing and unrelated services. The Panel concludes that this use is neither 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 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); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and use in bad faith is evidenced by Respondent’s use of the disputed domain name to redirect Internet users to unrelated and competing websites. The use of a confusingly similar domain name to redirect Internet users demonstrates that Respondent is benefiting from the likelihood of confusion between the disputed domain name and the MARTINDALE-HUBBELL mark. The disputed domain name is capable of creating confusion as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. The Panel finds that Respondent’s use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See 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.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
In addition, by displaying links for competing services,
Respondent’s use further evidences registration and use in bad faith under
Policy ¶ 4(b)(iii).
See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <martinhubbel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 27, 2008
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