Reed Elsevier Inc. and Reed Elsevier Properties Inc.
v. Domain Administrator
Claim Number: FA1007001334328
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 Domain
Administrator (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <screenlexisnexis.com>, registered with Moniker Online Services, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2010.
On July 15, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <screenlexisnexis.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@screenlexisnexis.com by e-mail. Also on July 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
OnAugust 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <screenlexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <screenlexisnexis.com> domain name.
3. Respondent registered and used the <screenlexisnexis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier
Inc. and Reed Elsevier Properties Inc., is a global provider of online and
software services that has been operating since 1983. Complainant offers risk solutions to
businesses and professionals such as law enforcement, government agencies and
Fortune 500 companies. Complainant owns
several trademark registrations with the United States Patent and Trademark
Office ("USPTO") for its LEXISNEXIS mark (e.g., Reg. No. 2,673,044 issued January 7, 2003).
Respondent, Domain Administrator, registered the <screenlexisnexis.com> domain name on May 6, 2010. Respondent’s disputed domain name resolves to a website that displays various third-party links to risk solution websites that offer background checks, people locators and criminal background checks, some of which are in competition with 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.
The Panel finds that Complainant has established rights in its LEXISNEXIS mark under Policy ¶ 4(a)(i) through it trademark registrations with the USPTO (e.g., Reg. No. 2,673,044 issued January 7, 2003). The Panel further finds that Complainant does not need to own a trademark registration in Respondent’s country of residence for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that the <screenlexisnexis.com> domain name is confusingly similar to its LEXISNEXIS mark because the domain name contains Complainant’s entire mark with the additions of the generic term “screen” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that the additions to its mark are not sufficient to distinguish the domain name from its mark. The Panel agrees and finds that Respondent’s <screenlexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <screenlexisnexis.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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)). 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 that Respondent does not have rights and legitimate interests in the <screenlexisnexis.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent has not been licensed or otherwise authorized to use the LEXISNEXIS mark in any way. The WHOIS information identifies “Domain Administrator” as the registrant of the domain name and Respondent has not come forward with evidence indicating that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <screenlexisnexis.com> domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and Complainant’s assertions. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s <screenlexisnexis.com> domain name
resolves to a website that features third-party hyperlinks to both competing
and unrelated businesses under topic headlines including “Background check,”
“People Locator,” and “Criminal Background Check.” Complainant contends that Respondent receives
click-through fees for the businesses that have links displayed on Respondent’s
website. The Panel finds that Respondent
is using the disputed domain name to maintain a directory website containing
links to Complainant’s competitors and to unrelated businesses, presumably for
financial gain, and that such use does not constitute 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 Summit Group,
LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the
complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s
own website for commercial gain does not constitute either 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)); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the <screenlexisnexis.com> domain name to
display third-party links to Complainant’s competitors in the risk solution,
background check and identity services industries. Complainant alleges that such use interferes
with Complainant’s online business because potential customers who are seeking
Complainant’s products and services are being diverted to Complainant’s
competitors. The Panel finds that
Respondent’s use of the disputed domain name to display third-party hyperlinks
to Complainant’s competitors is evidence of Respondent’s bad faith registration
and use 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 confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users
seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent
is attempting to attract Internet users to its website that displays
third-party links that Complainant’s customers may be interested in to profit
commercially, and that such use is further evidence of Respondent’s bad faith
registration and use. Complainant
alleges that Respondent receives click-through fees for the third-party links
displayed on Respondent’s website. The
Panel agrees and finds that Respondent’s use of the disputed domain name to
display third-party links to competing and unrelated websites, presumably for
financial gain, is further evidence that Respondent registered and is using the
<screenlexisnexis.com> domain name in bad faith under
Policy ¶ 4(b)(iv). See 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)); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
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 <screenlexisnexis.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 21, 2010
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