Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. S & A Media
Claim Number: FA0809001222957
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively,
“Complainant”), represented by Tara M. Vold, of Fulbright &
Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lexislinks.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.
On September 4, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexislinks.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 September 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 30, 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@lexislinks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant offers a wide
range of computer software, online computer assisted research and information
services, as well as other computer-related services direct to the legal field
under the LEXIS service mark.
Complainant owns numerous
registrations for the LEXIS service mark with the United States Patent and
Trademark Office (“USPTO”) (including Registry No. 1,020,214, issued September
9, 1975).
Respondent registered the disputed <lexislinks.com> domain name on July 23, 2008, and is currently using the disputed domain name to resolve to an adult content website.
Respondent’s <lexislinks.com> domain name is confusingly similar to Complainant’s LEXIS mark.
Respondent does not have any rights to or legitimate interests in the <lexislinks.com> domain name.
Respondent registered and uses the <lexislinks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no to rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established its rights in the LEXIS service mark
pursuant to Policy ¶ 4(a)(i) through registration of the mark with the
USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” See also 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.”
Respondent’s domain name contains Complainant’s entire LEXIS mark, and merely adds the generic term “links” and the generic top-level domain “.com.” Because these differences, whether taken singly or together, carry insufficient weight under Policy ¶ 4(a)(i), we conclude that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant asserts that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant has established a prima facie case supporting its allegations, as it has here, the burden shifts to Respondent to prove that it nonetheless has rights to or legitimate interests in its domain name pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent offers no evidence to permit a conclusion that it
is commonly known by the disputed domain name. Moreover, the pertinent WHOIS domain
registration information offers no support for such a conclusion. Finally, there are no facts in the record to
suggest that Respondent ever acquired a license to use Complainant’s mark. Thus, Respondent has not established rights to
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where a respondent was not commonly known by a
mark and never applied for a license or permission from a complainant to use
the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of a
complainant; (2) that complainant’s prior rights in its mark precede that
respondent’s domain registration; (3) that respondent is not commonly known by
the domain name in question); further 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.”
We also take note of the
undisputed allegation of the Complaint to the effect that Respondent’s disputed
domain name resolves to a commercial website that features adult-oriented
content. This use of the domain constitutes
neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use of a domain name under Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that a respondent’s use of
its domain name to link unsuspecting Internet traffic to an adult-oriented
website, containing images of scantily clad women in provocative poses, did not
constitute a connection with a bona fide offering of goods or services
or a noncommercial or fair use); see also
Target Brands, Inc. v. Bealo Group
S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of
the <targetstore.net> domain
name to direct Internet users to an adult-oriented website did not equate to a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent’s use of the disputed domain name as alleged creates a likelihood of confusion between the mark in question and the disputed domain name and its corresponding website for Respondent’s presumed commercial gain. This use constitutes evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that a respondent’s use of the <googlesex.info> domain name to attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use of the domain under Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003):
[W]hatever the motivation of Respondent, the diversion of the domain
name to a pornographic site is itself certainly consistent with the finding
that the Domain Name was registered and is being used in bad faith.
In addition, it appears that Respondent registered the <lexislinks.com> domain name with at least constructive knowledge of
Complainant’s rights in the LEXIS service mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <lexislinks.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 22, 2008
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