DECISION

 

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Jason Palmese

Claim Number: FA0208000118183

 

PARTIES

Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc., Newton, MA (“Complainant”) represented by Tara M. Vold, of Howrey Simon Arnold & White LLP.  Respondent is Jason Palmese, Parkland, FL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <lexisusa.com>, registered with Tucows.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 12, 2002; the Forum received a hard copy of the Complaint on August 15, 2002.

 

On August 13, 2002, Tucows confirmed by e-mail to the Forum that the domain name <lexisusa.com> is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 5, 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@lexisusa.com by e-mail.

 

A timely Response was received and determined to be complete on September 5, 2002.

 

Complainant submitted a timely Additional Submission on September 10, 2002.

 

On September 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <lexisusa.com> domain name is confusingly similar to Complainant’s LEXIS marks.

 

Respondent has no rights or legitimate interests in the <lexisusa.com> domain name.

 

Respondent registered and used the <lexisusa.com> domain name in bad faith. 

 

B. Respondent

The response alleges solely that Lexis International, Inc. is a Florida corporation, which performs legal services for the fashion industry. 

 

C. Additional Submissions

Complainant contends that the existence of Lexis International as an incorporated entity does not support Respondent’s claim that it has a legitimate right and interest in the domain name.

 

FINDINGS

Complainants are Elsevier, Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”).

 

Complainant, through one of its operating divisions, LexisNexis, is in the business of offering a wide range of computer software, computer assisted legal research services, and other computer-related services under the marks LEXIS, NEXIS, LEXIS-NEXIS and LEXISNEXIS (collectively the “LEXIS Marks”).

 

Complainant, through LexisNexis, has offered computer-assisted legal research services under the mark LEXIS continuously since at least as early as 1972, and has offered software products under the mark LEXIS since at least as early as 1983, and has offered legal database, including private litigation support databases under the LEXIS marks since 1980.

 

Complainant, through LexisNexis, has offered computer assisted and on-line legal research services under the marks LEXIS-NEXIS and LEXISNEXIS since at least as early as 1983, has offered software products under the marks LEXIS-NEXIS since at least as early as 1985, and has offered consulting services under the marks LEXIS-NEXIS since at least as early as 1984.  As part of its consulting services, LexisNexis provides various types of technology management support, including web page development and customization.

 

Reed Elsevier Properties Inc. is the owner (and Reed Elsevier Inc., through its LexisNexis division, is the licensee of all rights in and to the marks) outright or by assignment of the numerous United States trademark registrations for LEXIS and LEXIS-NEXIS, including LEXIS.COM.  Some of these registrations are incontestable under U.S. Law 15 U.S.C. § 1065.  Complainant also has numerous pending applications for the mark LEXISNEXIS. 

 

Complainant also has developed a formidable international presence on the Internet, with its web sites accessible through the addresses <lexis.com>, <lexisnexis.com> and <lexis-nexis.com>, among others (the “LEXIS domain names”).  Over 2.5 million persons worldwide obtain access to Complainant’s services on-line through the web sites connected with these domain names. 

 

For over twenty-five years, Complainant has prominently and extensively used, promoted, and advertised its LEXIS mark and more recently its NEXIS, LEXIS and LEXISNEXIS marks and LEXIS domain names.  LEXIS.COM is used as a mark, and is registered in the U.S.  Complainant has spent tens of millions of dollars internationally promoting its services through varied promotional and advertising media.

 

By virtue of Complainant’s extensive marketing of its LEXIS, NEXIS, LEXIS-NEXIS and LEXISNEXIS branded products and services, Complainant’s LEXIS marks and domain names have become recognized by consumers throughout the world as designating Complainant as the source of the products and services so marked.  Accordingly, the aforementioned marks and domain names are extremely valuable to Complainant.

 

Respondent registered the domain name <lexisusa.com> on September 19, 2001, long after the LEXIS marks achieved worldwide consumer recognition.  Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s marks for any purpose.

 

Respondent is not commonly known by the domain name in question.

 

The <lexisusa.com> domain name currently resolves to a promotional site for AnythingEmail.com, which appears to be a domain name ownership and website development services provider. 

 

The site makes no use of the term “lexisusa” or <lexisusa.com> other than the simple inclusion of the typed term in the upper left-hand corner of the site’s home page.

 

Complainant became aware of Respondent’s registration of the <lexisusa.com> domain name registration as a result of an ongoing investigation regarding the registration and use of the domain name <lexisinternational.com> by Lexis International, Inc., a purported provider of “on-line legal question analysis services.”  At the time Respondent registered the <lexisusa.com> domain name, Complainant had made repeated contacts with Lexis International to inform the company of its prior rights in the LEXIS mark and of its objection to the company’s use of “lexisinternational” as a tradename or domain name.  The domain name <lexisinternational.com> is the subject of a separate ICANN proceeding.  See Reed Elsevier Inc., et al. v. Lexis Int’l, FA 118182 (Nat. Arb. Forum October 2, 2002).

 

Respondent was the original billing contact for the domain name <lexisinternational.com>.  Although the address for Respondent listed in the <lexisinternational.com> domain name registration was different than that listed for him in the <lexisusa.com> domain name registration, the unusual nature of Mr. Palmese’s name and the connotation similarities of the terms “lexisinternational” and “lexisusa” strongly suggests a relationship between the two registrations.  Further, the email address used by Respondent for the <lexisusa.com> domain name is in the same format as that provided by him for at least one of the NSI handles he used for Lexis International.  Complainant recently learned that Mr. Palmese was removed as the billing contact for the <lexisinternational.com> domain name.

 

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

The domain name registered by Respondent <lexisusa.com> is confusingly similar to the LEXIS marks and domain names in which Complainant has rights.  Respondent’s <lexisusa.com> domain name contains a complete and exact reproduction of Complainant’s LEXIS mark.

 

Complainant’s LEXIS mark has been recognized as a famous mark, particularly in the legal field.  See Reed Elsevier Inc. et al. v. Pacific Coast Studios, FA 95747 (Nat. Arb. Forum October 27, 2000) (“It is well settled under UDRP decisions that incorporation of a famous trademark into a domain name together with a generic term satisfies the requirements of ICANN Policy ¶ 4(a)(i)”); see also Reed Elsevier Inc. et al. v. Andrew Christodoulou, FA 97321 (Nat. Arb. Forum June 26, 2001); see also Reed Elsevier Inc. et al. v. Reginaldo Cepeda, FA 97689 (Nat. Arb. Forum July 27, 2001).  LEXIS, NEXIS, LEXIS-NEXIS, and LEXISNEXIS are arbitrary terms, which have no meaning in the legal field or in the English language outside their use as brands to identify Complainant as a source of certain products and services.

 

Furthermore, the combination of a geographic prefix or suffix to a famous mark does not prevent the domain name from being found confusingly similar.  See Net2phone Inc v. Netcall Sagl, D2000-0666 (WIPO September 26, 2000) (finding as to the domain name <net2phone-europe.com> that "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Cellular One Group v. Paul Brien, D2000-28 (WIPO March 10, 2000) (finding that the registration of <cellularonechina.com> clearly violates Paragraph 4(a)(i) of the Policy in that CELLULARONE is unique and inherently distinctive coined word and that respondent had not been known as Cellularone or Cellularonechina); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO August 8, 2000) (finding that <cmgiasia.com> is confusingly similar to complainant's CMGI mark); and Wal-Mart Stores, Inc. v. Lars Stork, D2000-0628 (WIPO August 11, 2000) (finding the domain name <wal-mart-europe.com> confusingly similar to complainant's mark, that persons perusing the website of <wal-mart-europe.com> could easily conclude that registrant of domain name was associated with Wal-Mart's operation in Europe.  "Geographical destinations can be irrelevant to users of the Internet").  Respondent's registration of the domain name <lexisusa.com> with the addition of the suffixes "usa" to a registered mark does not add any uniqueness or distinguishing features to the existing trademark LEXIS.

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

The fame and recognition associated with Complainant’s established LEXIS marks creates a presumption that Respondent does not have any rights or legitimate interests in the marks pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Nike, Inc. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant’s distinct and famous NIKE trademark).

 

Respondent’s use of the famous LEXIS mark to provide similar services would not be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant was insufficient for a finding of bona fide offering of goods or services); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist with Complainant’s mark Caterpillar). 

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent registered and used the domain name <lexisusa.com> in bad faith with knowledge of Complainant’s rights in the famous LEXIS marks.  See Reed Elsevier Inc. et al. v. Pacific Coast Studios, supra (when Respondent registered and began using the domain name <lexistech.com> to promote law-related products and services, Respondent knew or should have known that use of the domain name in this fashion would violate Complainant’s trademark rights in LEXIS); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).  Given the widely recognized fame of the LEXIS mark, particularly in the legal field, Respondent had constructive, if not actual, knowledge of Complainant’s rights in the LEXIS marks and domain names well prior to the registration of the <lexisusa.com> domain name in 2001.

 

The LEXIS marks and domain names are arbitrary and famous marks which have enjoyed worldwide recognition and valuable good will, and Respondent has registered a domain name which incorporates a portion of that mark without any bona fide use of the mark.  The domain name is so obviously connected with Complainant and its services that its use by someone with no connection to Complainant suggests opportunistic bad faith.  See Veuve Cliguot Pongardin Maison, Fondée en 1772 v. The Polygenix Group, D2000-163 (WIPO May 1, 2000); see also Deutchebank AG v. Giego-Arhro Bruckner, D2000-277 (WIPO May 30, 2000).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

 

Accordingly, it is Ordered that the domain name <lexisusa.com> be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 2, 2002

 

 

 

 

 

 

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