Reed Elsevier Inc and Reed Elsevier Properties Inc. and LexisNexis Risk Data Management Inc. v. Vera Zaytseva
Claim Number: FA1010001355041
Complainant is Reed Elsevier Inc and Reed Elsevier Properties Inc. and LexisNexis Risk Data Management Inc. (“Complainant”), represented by Tara M. Vold of Fulbright & Jaworski, Washington, D.C., USA. Respondent is Vera Zaytseva (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accurintlexisnexis.com>, registered with Web Commerce Communications Limited d/b/a Webnic.cc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 27, 2010; the National Arbitration Forum received payment October 28, 2010.
On October 27, 2010, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <accurintlexisnexis.com> domain name is registered with Web Commerce Communications Limited d/b/a Webnic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited d/b/a Webnic.cc verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@accurintlexisnexis.com. Also on November 3, 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.
On November 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. The domain name that Respondent registered, <accurintlexisnexis.com>, is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent has no rights to or legitimate interests in the <accurintlexisnexis.com> domain name.
3. Respondent registered and used the <accurintlexisnexis.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. and LexisNexis Risk Data Management Inc., is a global provider of content-enabled workflow solutions to professionals in law firms, corporations, government, law enforcement, tax, accounting, academic institutions and risk compliance assessment through its LexisNexis operating division. Complainant also offers individual background information services under the ACCURINT mark. Complainant owns multiple trademark registrations for the LEXISNEXIS mark with the United States Patent and Trademark Office (“USPTO”), including:
Reg. No. 2,670,067 issued December 31, 2002;
Reg. No. 2,670,068 issued December 31, 2002;
Reg. No. 2,670,069 issued December 31, 2002;
Reg. No. 2,825,662 issued March 23, 2004;
Reg. No. 2,825,663 issued March 23, 2004;
Reg. No. 2,925,576 issued February 8, 2005; and
Reg. No. 3,762,774 issued March 23, 2010.
Complainant also owns USPTO trademark registrations for the ACCURINT mark, including:
Reg. No. 2,624,319 issued September 24, 2002 and
Reg. No. 2,941,345 issued April 19, 2005.
Respondent, Vera Zaytseva, registered the <accurintlexisnexis.com> domain name August 4, 2010. The disputed domain name resolves to a portal website indicating that the web page is currently under construction and featuring links to related topics like “Lexisnexis,” “Free Credit Report Online,” “Free Auto Insurance Quote,” and “Email Marketing,” among others. Respondent registered the disputed domain name in connection with a phishing scheme seeking to fraudulently acquire the personal information of Internet users who accessed the domain name through the download of a key-logging virus.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Preliminary Issue: Multiple Complainants
Three Complainants filed this matter: Reed Elsevier Inc., Reed Elsevier Properties Inc. and LexisNexis Risk Data Management Inc. Reed Elsevier Properties Inc. is the owner of the LEXISNEXIS marks registered with the United States Patent and Trademark Office (“USPTO”) and Reed Elsevier Inc. is the licensee of all rights in and to the LEXISNEXIS marks. LexisNexis Risk Data Management Inc. is a wholly owned subsidiary of Reed Elsevier Inc. and is the owner of the USPTO trademark registrations for the ACCURINT marks. LexisNexis Risk Data Management Inc. licenses its ACCURINT marks to Reed Elsevier Inc. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states: “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Panel accepts Complainants as one for the purpose of this proceeding.
Complainant alleges that it has rights in the LEXISNEXIS mark by virtue of its multiple trademark registrations with the USPTO, including:
Reg. No. 2,670,067 issued December 31, 2002;
Reg. No. 2,670,068 issued December 31, 2002;
Reg. No. 2,670,069 issued December 31, 2002;
Reg. No. 2,825,662 issued March 23, 2004;
Reg. No. 2,825,663 issued March 23, 2004;
Reg. No. 2,925,576 issued February 8, 2005; and
Reg. No. 3,762,774 issued March 23, 2010.
Complainant also owns USPTO trademark registrations for the ACCURINT mark, including:
Reg. No. 2,624,319 issued September 24, 2002 and
Reg. No. 2,941,345 issued April 19, 2005.
The Panel finds that this extensive evidence of USPTO trademark registration serves as conclusive evidence of Complainant’s rights in both the LEXISNEXIS and ACCURINT marks for the purposes of Policy ¶ 4(a)(i), irrespective of whether Complainant has such registrations in Respondent’s country of residence or business operations. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant urges that Respondent’s <accurintlexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark because the disputed domain name merely combines the LEXISNEXIS mark with Complainant’s other mark, ACCURINT, along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining Complainant’s LEXISNEXIS mark with another of Complainant’s marks fails to distinguish the disputed domain name from Complainant’s marks and may even increase the confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). The Panel finds that the presence of the gTLD also fails to differentiate the disputed domain name from Complainant’s mark. See 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.”).
Therefore, the Panel finds that Respondent’s disputed <accurintlexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark .
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie showing to support its allegations that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant does so, the burden of proof to show such rights and interests shifts to Respondent who is in a better position to provide support for its claim of rights and interests. Complainant met its burden in this regard, but Respondent did not respond or offer such proof. The Panel in such circumstances is permitted to make an inference that Respondent has no such rights and legitimate interests; Complainant’s allegations in the Complaint may be taken as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also 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). In the interest of fairness, however, this Panel still considers the evidence presented in light of the Policy ¶ 4(c) factors before making a determination of rights or interests.
Complainant urges that Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant’s mark in a disputed domain name. Complainant also alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <accurintlexisnexis.com> domain name lists the registrant as “Vera Zaytseva,” which the Panel finds has no nominal relationship to the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain and cannot show rights or legitimate interests in the disputed domain name pursuant to a Policy ¶ 4(c)(ii) analysis. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); 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).
Complainant contends as well that Respondent’s <accurintlexisnexis.com> domain name currently resolves to a website that serves as a portal, displaying links to websites and categories related to the products and services offered by Complainant, including “Lexisnexis,” “Free Credit Report Online,” “Free Auto Insurance Quote,” and “Email Marketing.” The Panel finds that using an infringing domain name to host a pay-per-click website for links related to Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”).
Complainant also asserts that Respondent registered the <accurintlexisnexis.com> domain name as part of a fraudulent phishing scheme designed to collect the personal information of Internet users through the download of a key-logging virus. Complainant argues, and the Panel agrees, that using the disputed domain name in connection with a phishing scheme shows a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly alleges that Respondent registered and used the disputed domain name in bad faith. The disputed <accurintlexisnexis.com> domain name resolves to a directory website that hosts a variety of pay-per-click links, many of which relate to products and services offered by Complainant. The Panel finds that these pay-per-click links to Complainant’s competitors opportunistically facilitate competition with Complainant and thereby disrupt Complainant’s business. The Panel finds that Respondent registered and is using the <accurintlexisnexis.com> domain name in bad faith for the purposes of Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent’s <accurintlexisnexis.com> domain name is designed to create profit for Respondent by attracting Internet users seeking Complainant’s services to Respondent’s website, thereby creating a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website with Complainant. The links displayed on the resolving website are presumably pay-per-click links, which generate revenue for Respondent, likely in increasing amounts as traffic to Respondent’s website increases. The Panel therefore finds that Respondent’s use of the disputed domain name to host such links and profit from a misleading attraction supports findings of bad faith registration and use pursuant to 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)).
Complainant also contends that Respondent registered the <accurintlexisnexis.com> in order to operate a phishing scheme that collects Internet users’ personal information through a downloaded key-logging virus that Internet users acquire upon accessing the disputed domain name. The Panel finds that registering and using the disputed domain name as part of a fraudulent phishing scheme indicates bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <accurintlexisnexis.com> domain name be TRANSFERRED.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 13, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page