Reed Elsevier Inc. and Reed Elsevier Properties Inc. and LexisNexis Risk Solutions Inc. v. Charlie Kalopungi
Claim Number: FA 1359324
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. and LexisNexis Risk Solutions Inc. (“Complainant” oR “Complainants”), represented by Tara M. Vold of Fulbright & Jaworski L.L.P, Washington D.C., USA. Respondent is Charlie Kalopungi (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <residentdatalexisnexis.com>, registered with Moniker Online Services, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2010; the National Arbitration Forum received payment on November 18, 2010.
On November 19, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <residentdatalexisnexis.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@residentdatalexisnexis.com. Also on November 23, 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 December 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" 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.
Complainant requests that the domain name be transferred from Respondent to Complainants.
A. Complainant makes the following assertions:
1. Respondent’s <residentdatalexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <residentdatalexisnexis.com> domain name.
3. Respondent registered and used the <residentdatalexisnexis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants are global providers of content-enabled workflow solutions to legal professionals. Complainants offer potential residential resident screening through one of their divisions. Complainants offer these services and more under the LEXISNEXIS mark which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,673,044 issued January 7, 2003).
Respondent, Charlie Kalopungi, registered the disputed domain name <residentdatalexisnexis.com> on July 1, 2010. The domain name resolves to a links page that provides links to services similar to Complainant’s.
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.
Preliminary Issue: Multiple Complainants
The Panel finds that Complainants have provided sufficient evidence that a nexus exists between all three entities and that all of the entities have rights in the mark. Therefore, Complainants will be referred to as the singular “Complainant” in this decision.
Complainant asserts it holds the necessary rights in the LEXISNEXIS mark to proceed with this claim. Complainant evidences this claim with the production of the mark’s USPTO registration (Reg. No. 2,673,044 issued January 7, 2003). Previous panels have found this evidence meets the requirements of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). As such, the Panel concludes that Complainant has rights in the LEXISNEXIS mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s domain name is confusingly similar to its LEXISNEXIS mark. There are only two minor differences between the mark and the domain name. The first is the addition of the descriptive terms “resident” and “data” to the front of the mark. The other addition is the addition of the generic-top-level domain (“gTLD”) “.com” to the end of the mark. Neither of these additions adds any distinctive value to a domain name when the domain name is compared to a preexisting mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Accordingly, the Panel finds that Respondent’s <residentdatalexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <residentdatalexisnexis.com> domain name. The burden shifts to Respondent to prove that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because the Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <residentdatalexisnexis.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is not commonly known by the disputed domain name. The disputed domain’s WHOIS information indicates that Respondent is not known by any form of the disputed domain name, but “Charlie Kalopungi.” When this allegation is made, there is no other evidence in the record indicating otherwise, and Respondent has not responded, the Panel is given adequate evidence to find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Accordingly, the Panel finds Respondent is not commonly known by the <residentdatalexisnexis.com> domain name under Policy ¶ 4(c)(ii).
Complainant also contends that Respondent is diverting users to a links page and, therefore, has not made a bona fide offering of commercial goods or services and also is not making a noncommercial or fair use. Respondent is using the confusingly similar domain name to display links to third party websites. This redirection of Internet users indicates that Respondent is not using the domain name within Policy ¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit). Therefore, the Panel finds that Respondent has failed to demonstrate that it does not make a bona fide offering of commercial goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As Complainant and Respondent are competing for the same Internet users, the Panel finds that Respondent’s registration and use indicates the presence of bad faith pursuant to Policy ¶ 4(b)(iii). Respondent’s domain name resolves to a page that displays links that include “Criminal Background Check” and “View Credit Report.” These links compete with Complainant’s services. This type of registration and use with the intent to compete with Complainant is a disrupting use and an indication of 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).”).
The Panel also finds that Respondent’s use of a confusingly similar domain name to attract Internet users is an indication of bad faith. Respondent registered the domain name with the intent to use it to create confusion regarding the affiliation of the website. Respondent intends this confusion to attract Internet users to its website. The Panel presumes that Respondent benefits from this increased traffic by way of click-through fees or sponsored links. The creation of confusion in this manner is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). Therefore, the Panel finds Respondent’s actions indicate the present of a bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds 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 <residentdatalexisnexis.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 30, 2010
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