Lexia Learning Systems Inc. v. Nuruddin Suleman
Claim Number: FA0207000117309
PARTIES
Complainant is Lexia
Learning Systems Inc., Lincoln, MA (“Complainant”) represented by Perry
L. Bent, of Lexia Learning Systems Inc. Respondent is Nuruddin Suleman, Austin, TX (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <lexia.com>, registered with Verisign, Inc.
PANEL
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.
Honorable Paul A. Dorf,
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on July
29, 2002; the Forum received a hard copy of the Complaint on August 5, 2002.
On August 6, 2002, Verisign,
Inc. confirmed by e-mail to the Forum that the domain name <lexia.com>
is registered with Verisign, Inc. and that the Respondent is the current
registrant of the name. Verisign, Inc.
has verified that Respondent is bound by the Verisign, Inc. 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 August 13, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 3, 2002 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@lexia.com by e-mail.
A timely Response was
received and determined to be complete on September 3, 2002.
On September 11, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) as
Panelist.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that the domain name at issue is identical to Complainant’s registered
trademark; that Respondent has no rights or legitimate interests in the domain
name at issue; and that Respondent registered the domain name in bad faith.
B. Respondent
Respondent contends that
it has rights and legitimate interests in the domain name at issue, and that it
did not register the domain name in bad faith.
FINDINGS
Complainant holds the
LEXIA trademark for reading skills development software and assessment
software, and professional development services such as training. The mark was first used in commerce in 1989
and the trademark application was filed January 7, 2000, and the trademark was
registered January 2, 2001.
Respondent is the
developer of a web-based search engine and database. The Respondent’s company, Lexia Informatics, Inc., was
incorporated in Delaware in November, 2000, and a provisional patent was filed
in February, 2001.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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
There is no question
that the domain name at issue is identical to Complainant’s trademark.
Rights or Legitimate
Interests
Respondent intends to
use the domain name at issue for its search engine and database. Currently,
Respondent is testing a beta version of its service at <ilea.com>, as Respondent felt that
putting up the beta site at the domain name at issue would invite unwanted
solicitations, and could potentially help sprout up new competitors. See
Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000)
(finding rights and legitimate interests in the domain name where Respondent
sought to develop a bona fide business use for the domain name).
Further, Respondent
operates and has incorporated his business under the name Lexia Informatics,
Inc. See VeriSign Inc. v. VeneSign
C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights
and a legitimate interest in the domain name since the domain name reflects
Respondent’s company name)
Registration and Use in
Bad Faith
As stated above, it is
Respondent’s intent to use the domain name at issue after the testing phase of
its search engine and database. See
Penguin Books Ltd. v. The Katz Family, D2000-0204 (WIPO May 20, 2000)
(finding no bad faith registration or use where the Respondent did not
extensively develop the website).
Further, Complainant did
not provide any evidence to support its bad faith registration claims. See Asphalt Research Tech., Inc. v
Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (finding that Complainant has
failed to prove that the domain name <ezstreet.com> was registered and is
being used in bad faith or held passively for use by Respondent in bad faith).
DECISION
Complainant’s request
for cancellation or transfer of <lexia.com> is DENIED.
Honorable Paul A. Dorf,
Panelist
Dated: September 25, 2002
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