Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Jeanne Macdonald
Claim Number: FA1106001394154
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 Jeanne Macdonald (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2011; the National Arbitration Forum received payment on June 17, 2011.
On June 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2011 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@martindalehubbelllawdirectory.com, postmaster@martindalehubbelllawdirectory.net, and postmaster@martindalehubbelllawdirectory.org. Also on June 21, 2011, 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 July 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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, 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 <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org> domain names are confusingly similar to Complainant’s MARTINDALE-HUBBELLLAWYERS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org> domain names.
3. Respondent registered and used the <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Properties Inc., is the owner and Complainant, Reed Elsevier Inc., is the licensee, of all rights in and to the MARTINDALE-HUBBELLLAWYERS.COM and related marks. The Panel accordingly finds that a sufficient nexus exists between Complainants to treat them as a single entity in bringing this Complaint. Complainants will hereafter be referred to as “Complainant.” Complainant owns trademark registrations for the MARTINDALE-HUBBELLLAWYERS.COM and related marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Date Issued
MARTINDALE-HUBBELL 1,542,506 June 6, 1989
MARTINDALE-HUBBELL 2,057,030 April 29, 1997
MARTINDALE.COM 2,796,593 December 23, 2003
MARTINADALE-HUBBELLLAWYERS.COM 2,989,601 August 30, 2005
Respondent, Jeanne Macdonald, registered the <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org> domain names on March 25, 2011. The disputed domain names operate portal websites featuring links to websites offering lawyer locators and other legal services.
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 owns trademark registrations for the MARTINDALE-HUBBELLLAWYERS.COM and related marks with the USPTO:
Mark Reg. No. Date Issued
MARTINDALE-HUBBELL 1,542,506 June 6, 1989
MARTINDALE-HUBBELL 2,057,030 April 29, 1997
MARTINDALE.COM 2,796,593 December 23, 2003
MARTINADALE-HUBBELLLAWYERS.COM 2,989,601 August 30, 2005
The Panel finds that these registered marks substantiate Complainant’s claim of rights to the MARTINDALE-HUBBELLLAWYERS.COM mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also 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)).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under the requirements of Policy ¶ 4(a)(ii), Complainant bears the burden of asserting a prima facie case against Respondent that alleges Respondent’s lack of rights and legitimate interests. As a result, Respondent now bears the burden of proving its rights and legitimate interests. Respondent defaulted, however, and failed to satisfy its burden, which allows the Panel to infer that Complainant’s allegations are true and that Respondent does not possess rights and legitimate interests in the disputed domain names. See 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.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel will nevertheless consider the evidence to make an independent determination concerning Respondent’s rights and legitimate interests.
Complainant contends that Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s MARTINDALE-HUBBELLLAWYERS.COM mark. The WHOIS information for the disputed domain names lists the registrant as “Jeanne Macdonald,” a name with no apparent association to the disputed domain names. The Panel accordingly concludes that Respondent is not commonly known by the disputed domain names and therefore lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant alleges that Respondent uses the disputed domain names to redirect Internet users to websites offering competing and noncompeting services through advertised pay-per-click links. Complainant argues that the displayed links have titles such as “Martindale Hubbell,” “California lemon law,” “Legal Resource,” “Law Question,” and “Human Resource Law.” The Panel finds that Respondent’s misappropriation of Complainant’s mark in domain names hosting pay-per-click websites is not consistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s website displays pay-per-click links to legal resources and directories, similar to the services offered by Complainant. The Panel finds that these links most likely divert business from Complainant to competitors, which disrupts Complainant’s business and shows bad faith registration and use under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); 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 website displays both pay-per-click links and pop-up advertisements. Complainant contends that Respondent included Complainant’s mark in the disputed domain names because it was motivated by the profit it expected to earn from the pay-per-click links. Complainant asserts that the similarity between its mark and the disputed domain names attracts Complainant’s intending customers and likely confuses and misleads them by suggesting an association or affiliation between Complainant and Respondent. Complainant contends that Respondent intentionally creates this impression for its own profit through the pay-per-click link and pop-up advertisement revenue generated. As a result, the Panel finds Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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 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 <martindalehubbelllawdirectory.com>, <martindalehubbelllawdirectory.net>, and <martindalehubbelllawdirectory.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 25, 2011
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