Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Lu Lan
Claim Number: FA0912001297147
Complainant is Reed
Elsevier Inc. and Reed Elsevier
Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski, Washington D.C.,
USA. Respondent is Lu Lan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lexixnexus.com> and <nexisuk.com>, registered with Above, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2009.
On December 2, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexixnexus.com> and <nexisuk.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names. Above, Inc. has verified that Respondent is bound by the Above, 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 December 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 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@lexixnexus.com and postmaster@nexisuk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 <lexixnexus.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
Respondent’s <nexisuk.com> domain name is confusingly similar to Complainant’s NEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names.
3. Respondent registered and used the <lexixnexus.com> and <nexisuk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers a wide range of computer software, computer assisted research services, content-driven workflow solutions, and other computer-related services under the LEXISNEXIS and NEXIS marks. Complainant has offered these services since 1972, and has offered software products as early as 1983. The products and services offered by Complainant are promoted or sold in over 100 countries. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NEXIS (Reg. No. 1,166,744 issued August 25, 1981) and LEXISNEXIS (Reg. No. 2,354,849 issued June 6, 2000) marks.
Respondent registered the <lexixnexus.com> and <nexisuk.com> domain names no earlier than October 7, 2009. The disputed domain names resolve to parked websites featuring advertisements and hyperlinks resolving to third-parties unrelated to Complainant.
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 registered its NEXIS (Reg. No. 1,166,744 issued
August 25, 1981) and LEXISNEXIS (Reg. No. 2,354,849 issued June 6, 2000) marks
with the USPTO. While Respondent resides
in
Complainant contends Respondent’s <lexixnexus.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark. The disputed domain name contains a common misspelling of Complainant’s mark by replacing the letters “s” with “x” and “i” with “u.” The disputed domain name also contains the addition of a generic top-level domain (“gTLD”). The Panel finds the misspelling of a complainant’s mark and the addition of a gTLD to a mark fail to adequately distinguish the disputed domain name from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <lexixnexus.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark under Policy ¶ 4(a)(i).
Complainant alleges Respondent’s <nexisuk.com> domain name is confusingly similar to
Complainant’s NEXIS mark. The disputed
domain name contains Complainant’s entire NEXIS mark and simply adds the
geographic term “
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) after Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”).
Complainant asserts that Respondent has never been authorized to use the LEXISNEXIS or NEXIS marks. Respondent has failed to provide evidence that it is commonly known by the <lexixnexus.com> and <nexisuk.com> domain names. The WHOIS information lists Respondent as “Lu Lan.” Furthermore, the Panel fails to find evidence in the record suggesting that Respondent is commonly known by the <lexixnexus.com> and <nexisuk.com> domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <lexixnexus.com> and <nexisuk.com> domain names resolve to parked websites containing hyperlinks and advertisements resolving to third-parties unrelated to Complainant. Respondent likely receives click-through fees from the contained hyperlinks and advertisements. The Panel finds Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Finally, the Panel
finds that Respondent is engaged in typosquatting because Respondent is taking
advantage of a common misspelling of Complainant’s aforementioned marks by
diverting Internet users. Therefore, the
Panel finds that Respondent’s engagement in typosquatting is further evidence
that Respondent lacks rights and legitimate interests in the <lexixnexus.com>
and <nexisuk.com>
domain names under Policy ¶
4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <lexixnexus.com> and <nexisuk.com> domain names to host parked websites that feature hyperlinks and advertisements. The links and advertisements resolve to third-parties unrelated to Complainant. The Panel infers, and the Complainant alleges, that Respondent receives click-through fees. Internet users interested in Complainant’s computer assisted research products and services may become confused as to Complainant’s association with and sponsorship of the disputed domain names and resolving websites. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the confusingly similar disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds
that Respondent’s aforementioned engagement in typosquatting is further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged
in typosquatting, which is evidence of bad faith registration and use under
Policy ¶ 4(a)(iii)); see also Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is
the intentional misspelling of words with [the] intent to intercept and siphon
off traffic from its intended destination, by preying on Internauts who make
common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexixnexus.com> and <nexisuk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 15, 2010
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