Reed Elsevier Inc and Reed Elsevier Properties Inc. v. Chris Harold
Claim Number: FA1110001410934
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 Chris Harold (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexislending.com>, registered with Mesh Digital Limited.
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 11, 2011; the National Arbitration Forum received payment October 11, 2011.
On October 17, 2011, Mesh Digital Limited confirmed by e-mail to the National Arbitration Forum that the <lexislending.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited verified that Respondent is bound by the Mesh Digital Limited registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@lexislending.com. Also on October 17, 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 November 14, 2011, 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, <lexislending.com>, is confusingly similar to Complainant’s LEXIS.COM mark.
2. Respondent has no rights to or legitimate interests in the <lexislending.com> domain name.
3. Respondent registered and used the <lexislending.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Reed Elsevier, Inc., and Reed Elsevier Properties, Inc., are related companies. Their relationship has a sufficient nexus for the Panel to treat them as a single entity for purposes of this proceeding, collectively referring to them as “Complainant.” Complainant, through its operating division, LexisNexis, offers a wide range of products and solutions to legal, risk management, corporate, government, law enforcement, tax, accounting, and academic professionals under the LEXIS and related marks. Complainant registered its LEXIS.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,379,018 registered August 22, 2000).
Respondent, Chris Harold, registered the <lexislending.com> domain name September 19, 2011, some eleven years after Complainant’s registration of its mark. The disputed domain name resolves to a website used to operate a purported loan operation that is essentially a phishing scheme.
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.
Complainant asserts rights in the LEXIS.COM mark by virtue of its trademark registration with the USPTO (Reg. No. 2,379,018 registered August 22, 2000). The Panel finds that Complainant’s ownership of this trademark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that Respondent’s <lexislending.com> domain name is confusingly similar to Complainant’s LEXIS.COM mark because the only distinctive element between the two is the insertion of the generic term “lending.” Past panels have repeatedly held that adding a single generic term to a mark does not distinguish the disputed domain name for the purposes of Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate that it does have such rights and legitimate interests in the disputed domain name, according to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case in these proceedings. As Respondent failed to respond to the allegations against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks any rights and legitimate interests in the disputed domain name. 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, still evaluates the evidence in the record under a Policy ¶ 4(c) analysis before making a determination on the issue of Respondent’s rights and legitimate interests.
Complainant alledges that Respondent is not commonly known by the <lexislending.com> domain name and is neither a licensee of Complainant nor otherwise authorized to use Complainant’s mark. The WHOIS information names the registrant of the disputed domain name as “Chris Harold.” The Panel finds that the WHOIS information, combined with the lack of any other evidence suggesting a nominal relationship between Respondent and the disputed domain name containing Complainant’s protected mark, finds that Respondent is not commonly known by the disputed domain name and has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed 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).
Complainant also asserts that Respondent is using the <lexislending.com> domain name in connection with a phishing scheme cloaked as an online lender. Complainant argues that using its mark to try to fraudulently collect Internet users’ personal and financial information is not consistent with a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). The Panel agrees. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also 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)).
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 also urges that Respondent registered and used the disputed domain name in bad faith. Complainant maintains that Respondent uses the <lexislending.com> domain name to operate a phishing scam by hosting a website that fraudulently poses as a financial lender offering loans. The Panel finds that Respondent registered the disputed domain name containing Complainant’s well-known LEXIS.COM mark to attract higher numbers of Internet users to Respondent’s resolving website and to create confusion over the suggested association of Respondent’s website with Complainant. This opportunistically takes advantage of Complainant’s legitimacy in the professional community for Respondent’s personal gain. The Panel is permitted in such circumstances to make an inference that Respondent likely receives some form of profit from collecting the personal and financial information of the misled and misdirected Internet users. Based on these allegations, the Panel holds that Respondent has shown Policy ¶ 4(b)(iv) bad faith registration and use by using Complainant’s mark to attract and profit from Internet users in connection with a phishing scam. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“[T]he Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence that supports findings of of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
As noted above, Complainant claims that Respondent registered and uses the disputed domain name in connection with a phishing scheme. Previous panels have found that a respondent’s phishing scheme is by itself evidence of bad faith registration and use. 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 Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Thus, the Panel finds further evidence to support findings of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
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 <lexislending.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 22, 2011.
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