Lexia Learning Systems Inc. v. Nuruddin Suleman
Claim Number: FA0207000117309
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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).
Complainant’s request for cancellation or transfer of <lexia.com> is DENIED.
Honorable Paul A. Dorf,
Dated: September 25, 2002
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