Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. dnb8
Claim Number: FA0902001247535
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara
M. Vold, of Fulbright & Jaworski L.L.P., Washington
DC, USA. Respondent is dnb8 (“Respondent”),
REGISTRAR
The domain name at issue is <lexis.info>, 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.
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On
On February 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 9, 2009 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@lexis.info 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lexis.info> domain name is identical to Complainant’s LEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexis.info> domain name.
3. Respondent registered and used the <lexis.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Reed Elsevier
Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”), offers a
wide range of computer software, online computer assisted research and
information services, and other computer-related services directed 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. 1,020,214 issued
Respondent registered the <lexis.info> mark 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.
The Panel finds that Complainant has established rights in
the LEXIS mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Metropolitan
Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum
Complainant argues that Respondent’s <lexis.info> domain name is identical to Complainant’s LEXIS mark
pursuant to Policy ¶ 4(a)(i). Respondent’s
disputed domain name contains Complainant’s mark in its entirety and adds the
generic top-level domain (“gTLD”) “.info.”
The Panel finds that the addition of a gTLD to a complainant’s identical
mark fails to distinguish a disputed domain name from the mark. See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <lexis.info> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has establised a prima facie case. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Because Respondent has failed to respond to the Complaint, the Panel may assume that Respondent has not met its burden of establishing rights or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel will examine the evidence on record against the applicable Policy ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.
Complainant contends that Respondent is neither commonly
known by, nor licensed to register, the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “dnb8.” The Panel finds that Respondent’s failure to
respond to the Complaint and the WHOIS information demonstrates that Respondent
is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii),
Respondent lacks rights and legitimate interests in the disputed domain
name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the <lexis.info>
domain name to display links advertising third-party websites, some of which
are in competition with Complainant. The
Panel infers that Respondent is using the disputed domain name to earn
click-through fees, and thus finds that Respondent has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up advertisements
and links to various third-party websites is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <lexis.info> domain name to intentionally divert Internet users to the associated website, which displays third-party links to competing websites. Respondent is presumably collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s mark and the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
In addition, the Panel finds that Respondent’s use of the <lexis.info> domain name to disrupt the business of Complainant by
offering links to competitors is further evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC
v. Interlock Indus., Ltd., FA 724554 (Nat. Arb.
Forum Aug. 1, 2006) (finding that the respondent registered and used the
<classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶
4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
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 <lexis.info> domain name be TRANSFERRED from Respondent to Complainant.
Dated: March 30, 2009
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