National Arbitration Forum

 

DECISION

 

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Law Office of Jessie Lyons Crawford, LLC

Claim Number: FA1001001304933

 

PARTIES

Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski L.L.P., Washington D.C., USA.  Respondent is Law Office of Jessie Lyons Crawford, LLC (“Respondent”), Maryland, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <martindalehubbellmaryland.com>, <martindalehubbellmd.com>, and <martindalehubbleinbaltimore.com>, registered with Godaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Joel M. Grossman, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 27, 2010.

 

On January 27, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <martindalehubbellmaryland.com>, <martindalehubbellmd.com>, and <martindalehubbleinbaltimore.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  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 January 29, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2010 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@martindalehubbellmaryland.com, postmaster@martindalehubbellmd.com, and postmaster@martindalehubbleinbaltimore.com by e-mail.

 

Respondent did not indicate assent to participate in an electronic process; therefore Respondent’s submission was required to be sent in hard copy per the version of UDRP Rule 5 currently in effect.

 

A Response was received and determined to be deficient pursuant to ICANN Rule #5 because it was received in hard copy only prior to the February 18, 2010 Response deadline.

 

On March 1, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of the registered trademark Martindale-Hubbell, and contends that each of the three domain names in dispute is identical to, or confusingly similar to, this mark. Complainant notes that the misspelling of part of the mark in one of the domain names is of no consequence. The use of the mark with an additional geographic term, such as Maryland or Baltimore, does nothing to avoid the confusion. Complainant next contends that Respondent has no rights or legitimate interests in the domain names. Complainant notes that Respondent is not a licensee of Complainant, is not commonly known by any of the domain names, and is not using the domain names for the bona fide offering of goods or services, or for any other legitimate purpose. Finally, Complainant asserts that the domain names were registered and are being used in bad faith. In this regard Complainant contends that Respondent is using the names, which are confusingly similar to Complainant’s mark, to intentionally attract –for commercial gain—internet users who are seeking to make use of Complainant’s products. Moreover, due to the fame of the mark, Respondent must have known at the time of registration that the mark belonged to Complainant and that Respondent’s use was infringing.

 

B. Respondent

Respondent states that it is agreeable to transfer the three domain names to Complainant. It is unable to do so immediately because Go Daddy has blocked the account. Respondent does not address the three issues set forth above.

 

PRELIMINARY ISSUE

The Panel notes that Respondent has not complied with the National Arbitration Forum’s rules. Specifically, Respondent has not provided a hard copy of the Response, but only an electronic version of the Response, while at the same time Respondent has not provided an opt-in form to the eUDRP process. While the Panel may, at its discretion, determine to reject the Response, given that the Respondent consents to the transfer of the three domain names at issue, the Panel will accept the Response as submitted.

 

FINDINGS

In light of the fact that Respondent does not contest the transfer of the domain names to Respondent, the Panel is not required to, and determines not to issue findings in this matter, other than to order that the three domain names at issue be transferred from Respondent to Complainant. SeeBoehringer Ingelheim Int’l GmbH v. Modern Ltd.—Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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

 

As set forth above, because Respondent consents to the transfer of the domain names, the Panel will not discuss any of the issues presented.

 

Rights or Legitimate Interests

 

As set forth above, because Respondent consents to the transfer of the domain names, the Panel will not discuss any of the issues presented.

 

Registration and Use in Bad Faith

 

As set forth above, because Respondent consents to the transfer of the domain names, the Panel will not discuss any of the issues presented.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <martindalehubbellmaryland.com>, <martindalehubbellmd.com>, and <martindalehubbleinbaltimore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Joel M. Grossman, Panelist
Dated: March 15, 2010

 

 

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