national arbitration forum

 

DECISION

 

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Lawriter LLC

Claim Number: FA0908001281588

 

PARTIES

Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski LLP, Washington D.C., USA.  Respondent is Lawriter LLC (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lexisnexis.tv>, registered with Network Solutions, Inc.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 27, 2009.

 

On August 26, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexisnexis.tv> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 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@lexisnexis.tv by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 21, 2009, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is in the business of offering informational products and services for the legal, business, and government fields under the LEXISNEXIS trademark. 

 

Complainant is the owner of multiple registrations for its LEXISNEXIS trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,337,918, issued April 4, 2000).

 

Respondent did not have permission to use Complainant’s LEXISNEXIS trademark.

 

Respondent registered the disputed <lexisnexis.tv> domain name on March 3, 2004. 

 

The disputed domain name resolves to a website displaying click-through links that further resolve to various third-party websites, including some that are in competition with the business of Complainant. 

 

Currently, the links displayed at the disputed domain name’s resolving website include “Lexis,” “LexisNexis Athens,” and “Lexis Law School.”  

 

Respondent’s <lexisnexis.tv> domain name is identical to Complainant’s LEXISNEXIS trademark.

 

Respondent does not have any rights to or legitimate interests in the <lexisnexis.tv> domain name.

 

Respondent registered and uses the <lexisnexis.tv> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to 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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence of its registration of its LEXISNEXIS trademark with the USPTO.  Previous panels have routinely upheld complainants’ rights in their respective marks under Policy ¶ 4(a)(i) acquired through such registration with a governmental trademark authority.   Similarly, we conclude that Complainant has satisfactorily demonstrated its rights in the LEXISNEXIS mark pursuant to Policy ¶ 4(a)(i).  See, for example, Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007): “Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”  See also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007):  “Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).” 

 

Respondent’s <lexisnexis.tv> domain name incorporates Complainant’s LEXISNEXIS mark in its entirety with the mere addition of the top-level domain “.tv.”  This addition is insufficient to distinguish Respondent’s domain name from Complainant’s LEXISNEXIS mark.  Therefore, we conclude that Respondent’s <lexisnexis.tv> domain name is identical to Complainant’s LEXISNEXIS mark under Policy ¶ 4(a)(i).  See Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to a complainant’s CLAIROL marks);  see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name. 

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(i). 

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name.  Once Complainant has made a sufficient showing, the burden shifts to Respondent to establish that it has rights to or legitimate interests in the disputed domain name.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)). 

Complainant has sufficiently made out a prima facie showing under Policy ¶ 4(a)(ii) in this proceeding.  Respondent’s failure to respond to the allegations of the Complaint therefore allows us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii). 

We will nevertheless inspect the record to determine whether it reveals any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain meeting the tests set out in Policy ¶ 4(c). 

We begin by noting that there is no dispute as to Complainant’s allegation to the effect that Respondent’s <lexisnexis.tv> domain name resolves to a website featuring click-through links that further resolve to various third-party websites, including websites of businesses that compete with the business of Complainant in the legal services industry.  We presume from the circumstances presented that Respondent generates revenue through the receipt of click-through fees associated with visits mistakenly made to these websites by Internet users seeking information or services offered by Complainant.  Accordingly, we find that Respondent’s use of the disputed domain name does not represent a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain under Policy ¶ 4(c)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to a complainant’s customers, and presumably receiving “click-through fees” in the process);  see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain by maintaining a web page with misleading links to a complainant’s competitors in the financial services industry). 

We also observe that the pertinent WHOIS information for the <lexisnexis.tv> domain name identifies the registrant as “Lawriter LLC.”  Moreover, Complainant contends that Respondent does not have permission to use Complainant’s LEXISNEXIS mark.  Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the domain name there in issue, taken together with the pertinent WHOIS information and a complainant’s assertion that it did not authorize or license that respondent’s use of its mark in a domain name);  see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest in a contested domain name where a respondent was not commonly known by the mark of a complainant and never applied for a license or permission from that complainant to use the trademarked name). 

The Panel thus finds that Complainant has satisfied its obligations under Policy ¶ 4(a)(ii).   

Registration and Use in Bad Faith

Respondent’s use of the <lexisnexis.tv> domain name to redirect Internet users to the websites of Complainant’s business competitors constitutes disruption of Complainant’s business.   We therefore conclude that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a competing mark to attract Internet users to a directory website containing commercial links to the websites of a complainant’s business competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii));  see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the disputed domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).

Moreover, Respondent’s undenied use of the <lexisnexis.tv> domain name and the aforementioned hyperlinks to collect click-through fees allows Respondent to gain commercially from the goodwill surrounding Complainant’s LEXISNEXIS mark.  Thus we conclude that Respondent’s actions constitute bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See Univ. 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).

See also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by using the domains to operate a commercial search engine with links to the products of a complainant and that complainant’s business competitors).

For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 

DECISION

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 <lexisnexis.tv> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  October 13, 2009

 

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