Complainant is Lex Mundi, Ltd, Houston, TX (“Complainant”) represented by John L. Welch, of Foley Hoag LLP. Respondent is Chris Truax, La Mesa, CA (“Respondent”).
The domain name at issue is <lexmundi.com>, registered with Network Solutions.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 6, 2002; the Forum received a hard copy of the Complaint on September 13, 2002.
On September 9, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <lexmundi.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 7, 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 email@example.com by e-mail.
A late Response was received and determined to be complete on October 8, 2002.
Complainant’s additional submissions were timely received on October 14, 2002.
On October 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
[a.] Complainant Lex Mundi, Ltd. is the owner of the following registered mark, among others: LEX MUNDI, Reg. No. 1,610,249, registered in the United States of America on August 14, 1990 as a collective membership mark for indicating membership in an organization providing the professional exchange of information about the local and global practice and development of law.
[b.] Complainant Lex Mundi, Ltd. is a well-known corporation that has since 1989 used marks consisting of or containing the term LEX MUNDI, in connection with offering membership in an organization providing the professional exchange of information about the local and global practice and development of law. Complainant now has 159 member law firms and more than 14,000 attorneys, in more than 155 countries, states and provinces. Complainant maintains its primary website at <lexmundi.org>, where a wealth of information regarding the organization may be found. It also owns the following domain names, all of which are linked to the <lexmundi.org> website:
[c.]Complainant has invested substantial time, expense, and effort in promoting its LEX MUNDI mark by, inter alia, the operation of an extensive website at <lexmundi.org>, by direct mailings to corporate counsel and law firms, by participation in corporate counsel events (such as the annual meeting of the American Corporate Counsel Association (ACCA)), by sponsorship of events at the meetings of the International Bar Association and the American Bar Association, by the presentation of four legal conferences per year on various topics, by way of press releases and other media-directed public relations efforts, and through use of the LEX MUNDI trademark by law firm members on their websites, letterhead, and promotional materials. By virtue of these extensive activities of Complainant, the mark LEX MUNDI has become a strong and distinctive source indicator for Complainant’s services and products.
[d.] Complainant also owns common law rights in the trademark and service mark LEX MUNDI based on its widespread use of the mark to identify and distinguish the source of its products and services. Those products and services are described at the LEX MUNDI website at <lexmundi.org>. The products include guides to doing business in numerous jurisdictions, international tax and intellectual property deskbooks, and reports on various legal topics prepared by its members. Its services include comprehensive membership services, hosting of an extensive website for members and non-members, and the offering of numerous seminars and meetings on legal topics. Complainant prominently features its LEX MUNDI mark on its websites, promotional materials, and products.
[e.] Complainant’s use of the foregoing marks in the United States, and indeed worldwide, has been continuous and extensive. As a result, the LEX MUNDI trademark, service mark, and collective membership mark has become a strong indicator of the source of Complainant’s services and products.
[f.] Respondent’s domain name <lexmundi.com> is substantially identical and thus confusingly similar to Complainant’s registered collective membership mark LEX MUNDI, its common law trademark and service mark LEX MUNDI, and its registered Internet domain names listed above.
[g.] On information and belief, Respondent Chris Truax registered the domain name <lexmundi.com> to divert or frustrate Internet users attempting to access Complainant’s website, <lexmundi.org>. Users who type in <lexmundi.com> on their Internet browser receive an error message because Respondent has not connected <lexmundi.com> to a website.
[h.] The term “Lex Mundi” (or any iteration thereof) is not used as a mark on Respondent’s website because no website has been created by Respondent during the more than two (2) years since Respondent registered the <lexmundi.com> domain name.
[i.] Lex Mundi is not a name by which Respondent is known or in which he has any trademark or service mark rights, and Respondent has not used the name Lex Mundi in connection with a bona fide offering of goods or services. Respondent has operated a website called LexLaw, offering a service somewhat similar to that of Complainant, at the Internet website <lexlaw.com>. LexLaw claimed to provide a “coordinated network of legal professionals with members in several countries around the world”. Because Respondent thus has essentially been in competition with Complainant, he is undoubtedly aware of Complainant’s well-known LEX MUNDI mark.
[j.] The mere fact that Respondent registered the domain <lexmundi.com> is insufficient to convey to him a right to use it.
[k.] Respondent Chris Truax is an attorney based in California who has operated a service called LexLaw, a “coordinated network of legal professionals with members in several countries around the world”. Respondent is also closely associated with Domain Name Clearing Company, LLC (DNCC), the named respondent in several recent Administrative Panel decisions. Respondent Truax has represented DNCC as its attorney in its domain name disputes.
[l.] Respondent has registered and used the domain name in bad faith because he has hindered customers and members of the LEX MUNDI organization in their efforts to contact Lex Mundi and has denied Complainant the opportunity to use the “.com” TLD in connection with its business.
[m.] Respondent has registered and used the domain name in bad faith in view of the fact that Respondent has disrupted the business of its competitor, Complainant. LexLaw, Respondent’s business, purports to offer services that are substantially similar to those of Complainant. Respondent has prevented his competitor, Complainant, from utilizing its trademark LEX MUNDI in connection with offering a valuable “.com” web address for its business, thereby preventing hindering and frustrating customers of Complainant in their attempts to reach the Complainant’s website. Therefore, Respondent has registered and used the domain name <lexmundi.com> in bad faith.
Respondent's brief was received one day after the deadline for response. Nevertheless, the following contentions of Respondent have been considered:
[a.] The domain name at issue was originally registered by Chris Truax in 1996.
[b.] Respondent did not know of the existence of the LEX MUNDI registration with the Patent and Trademark Office prior to his registration of the domain name.
[c.]Respondent used the name in connection with his own legal practice for a time until he became aware of the existence of LEX MUNDI. He then voluntarily ceased using the trade name.
C. Additional Submissions
Complainant's additional submissions raised the following additional arguments, which were influential in this Panel's decision:
[a.] As a trademark attorney, who, at the same time was in competition with Complainant, Mr. Truax must have known of the Lex Mundi organization. Mr. Truax would have checked the Trademark Register before adopting the <lexmundi.com> domain name.
[b.] Respondent's assertion that he registered the <lexmundi.com> domain name in 1996 is contradicted by WHOIS records for that domain indicating that it was registered on February 3, 2000.
[c.]Assuming, arguendo, that Respondent did register the <lexmundi.com> domain name in 1996, it would mean that Respondent had held the domain name for six years without ever connecting it to a website. That itself would constitute bad faith.
Respondent claims that he did not know of the existence of the LEX MUNDI collective membership mark registration with the U.S. Patent and Trademark Office at the time of registration. However, as both an attorney and a competitor of Complainant, Respondent knew or should have known of this mark through personal knowledge or should have conducted a trademark/service mark search before adopting this domain name. Further, by his own admission, Respondent has continued to maintain this domain registration without a website for several years after having been informed by Complainant of its LEX MUNDI registration.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy 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 <lexmundi.com> is nearly identical to Complainant's mark LEX MUNDI, except for the elimination of the space between the two words. Therefore, Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent has not established any trademark or service mark rights in the term, “lexmundi,” nor has Respondent shown that he is known by that name in connection with a bona fide offering of goods or services. Thus, Respondent has not demonstrated rights or legitimate interests in the term at issue. Complainant has therefore satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
As a competitor and attorney, Respondent knew or should have known of the existence of the collective mark registration for LEX MUNDI, either through personal knowledge or through a search of the records of the U.S. Patent and Trademark Office. His maintaining of the registration for several years without ever connecting it to a website is further indication of his bad faith. Therefore, Complainant has satisfied Policy ¶ 4(a)(iii).
As all three elements required by the ICANN Policy paragraph 4(a) have been satisfied, it is the decision of this Panelist that the requested relief be GRANTED.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name <lexmundi.com> be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 8, 2002
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