Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Maria Tecarro
Claim Number: FA0809001222977
Complainant is Reed
Elsevier Inc. and Reed Elsevier
Properties Inc. (collectively, “Complainant”), represented by J. Paul Williamson, of Fulbright & Jaworski LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <martindale-hubbell.org>, <lexis-nexislaw.com>, <lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>, <lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net> and <lexisnexisresearch.org>, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On September 4, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <martindale-hubbell.org>, <lexis-nexislaw.com>, <lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>, <lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net> and <lexisnexisresearch.org> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 7, 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@martindale-hubbell.org, postmaster@lexis-nexislaw.com, postmaster@lexis-nexislaw.info, postmaster@lexis-nexislaw.net, postmaster@lexis-nexislaw.org, postmaster@lexislaw.info, postmaster@lexislaw.net, postmaster@lexislaw.org, postmaster@lexisnexislaw.info, postmaster@lexisnexislaw.net, postmaster@lexisnexislaw.org, postmaster@lexisnexisresearch.com, postmaster@lexisnexisresearch.info, postmaster@lexisnexisresearch.net, and postmaster@lexisnexisresearch.org 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <martindale-hubbell.org> is identical to Complainant’s MARTINDALE-HUBBELL mark. Respondent’s <lexis-nexislaw.com>, <lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>, <lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net> and <lexisnexisresearch.org> domain names are confusingly similar to Complainant’s LEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <martindale-hubbell.org>, <lexis-nexislaw.com>, <lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>, <lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net> and <lexisnexisresearch.org> domain names.
3. Respondent registered and used the <martindale-hubbell.org>, <lexis-nexislaw.com>, <lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>, <lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net> and <lexisnexisresearch.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Inc. and Reed Elsevier Properties
Inc., offers a wide range of computer software, online computer assisted
research and information services, and other computer-related services direct
to the legal field under the LEXIS mark, as well as a variety of other
marks. Complainant owns numerous
registrations for the LEXIS marks with the United States Patent and Trademark
Office (“USPTO”) (e.g. Reg. No. 1,020,214 issued
Respondent registered the <martindale-hubbell.org>, <lexis-nexislaw.com>, <lexis-nexislaw.info>,
<lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>,
<lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>,
<lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>,
<lexisnexisresearch.info>, <lexisnexisresearch.net>
and <lexisnexisresearch.org> domain names 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.
Complainant has demonstrated its trademark registrations for
the LEXIS and MARTINDALE-HUBBELL marks with the USPTO. The Panel finds that Complainant has
sufficient rights in the marks under Policy ¶ 4(a)(i). See Miller Brewing
Respondent’s <martindale-hubbell.org>
domain name includes Complainant’s entire MARTINDALE-HUBBELL mark and merely
adds the generic top-level domain “.org.”
Such an addition is irrelevant, and therefore the Panel finds that the
disputed domain name is identical to Complainant’s mark under Policy ¶
4(a)(i). See Calcar, Inc. v.
Future Media Architects, Inc., FA 1080147 (Nat. Arb. Forum Nov. 6, 2007)
(finding the <calcar.org> domain name identical to the complainant’s
CALCAR mark pursuant to Policy ¶ 4(a)(i) because it is well-established that
the addition of the gTLD “.org” is irrelevant); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar.
27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to
Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is
irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent’s <lexis-nexislaw.com>,
<lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>,
<lexislaw.info>, <lexislaw.net>, <lexislaw.org>,
<lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>,
<lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net>
and <lexisnexisresearch.org> domain names include
Complainant’s LEXIS mark, while adding generic words such as “law” or
“research.” Some of the disputed domain
names also include the word “nexis” and a hyphen. The addition of “nexis” fails to offer any
distinction, as that word is used extensively by Complainant in its
business. Moreover, the words “law” and
“research” describe Complainant’s business.
Finally, the addition of hyphens and generic top-level domains is
irrelevant under Policy ¶ 4(a)(i).
Therefore, the Panel finds that these disputed domain names are
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. The Panel finds that Complainant has established a prima facie case based on the allegations in the Complaint. While Respondent has failed to respond to these proceedings, the Panel chooses to examine the evidence against the Policy ¶ 4(c) elements. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts
that Respondent is not commonly known by the disputed domain names. The Panel finds that the WHOIS information
lists Respondent as “Maria Tecarro.”
Based on this evidence, the Panel concludes that Respondent is not
commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum
Complainant also alleges that Respondent’s disputed domain names resolve to a website that features “click-through” advertisements to third-party websites designed to create commercial gain for Respondent. Complainant asserts that these advertisements lead to Complainant’s direct competitors, as well as unrelated third parties. The Panel finds that Respondent has not created 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to resolve to a website
that features products and services in direct competition with
Complainant. The Panel thus finds that
Respondent engaged in bad faith registration and use of the disputed domain
names, as it was intended to disrupt Complainant’s business under Policy ¶
4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
Respondent intentionally diverts Internet users seeking Complainant’s business to its own website and corresponding services by way of the disputed domain names. Such diversion creates a likelihood of confusion with Complainant’s marks as to the source, affiliation, or endorsement of the website or disputed domain names. The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv), as it attempts to capitalize on Complainant’s goodwill surrounding its marks. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <martindale-hubbell.org>, <lexis-nexislaw.com>, <lexis-nexislaw.info>, <lexis-nexislaw.net>, <lexis-nexislaw.org>, <lexislaw.info>, <lexislaw.net>, <lexislaw.org>, <lexisnexislaw.info>, <lexisnexislaw.net>, <lexisnexislaw.org>, <lexisnexisresearch.com>, <lexisnexisresearch.info>, <lexisnexisresearch.net> and <lexisnexisresearch.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 22, 2008
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