Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Domain Management / Syed Hussain
Claim Number: FA1111001416531
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 Management / Syed Hussain (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lexisnexis-es.com> and <lexisnexises.com>, registered with Name.com LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 21, 2011.
On November 21, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <lexisnexis-es.com> and <lexisnexises.com> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@lexisnexis-es.com and postmaster@lexisnexises.com. Also on November 22, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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, 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 <lexisnexis-es.com> and <lexisnexises.com> domain names are confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexisnexis-es.com> and <lexisnexises.com> domain names.
3. Respondent registered and used the <lexisnexis-es.com> and <lexisnexises.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, through its LEXISNEXIS division, provides computer-assisted research services, content-enabled workflow solutions, computer database storage and retrieval services, and risk assessment solutions under its LEXISNEXIS mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LEXISNEXIS mark (e.g., Reg. No. 2,670,067 registered December 31, 2002).
Respondent registered the <lexisnexis-es.com> and <lexisnexises.com> domain names on August 18, 2011. The disputed domain names resolve to websites that host a list of hyperlinks to websites offering services that compete with the services offered by Complainant through its LEXISNEXIS division.
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 multiple trademark registrations with the USPTO for its LEXISNEXIS mark (e.g., Reg. No. 2,670,067 registered December 31, 2002). The Panel determines that Complainant’s trademark registrations demonstrate rights in its LEXISNEXIS mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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)).
Complainant’s <lexisnexis-es.com> and <lexisnexises.com> domain names both contain Complainant’s entire LEXISNEXIS mark. The <lexisnexis-es.com> domain name also includes a hyphen, the letters “e” and “s,” and the generic top-level domain (“gTLD”) “.com.” The <lexisnexises.com> domain name contains Complainant’s mark, the letters “e” and “s,” and the gTLD “.com.” The Panel finds the additions of a hyphen, letters, and a gTLD fail to remove the <lexisnexis-es.com> and <lexisnexises.com> domain names from the realm of confusing similarity pursuant to Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
As Complainant demonstrated that Respondent’s disputed domain names are confusingly similar to a mark that Complainant owns rights in, the Panel concludes that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <lexisnexis-es.com> and <lexisnexises.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <lexisnexis-es.com> and <lexisnexises.com> domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
As Respondent did not respond to this case, Respondent does not make any allegations that it is commonly known by the <lexisnexis-es.com> and <lexisnexises.com> domain names. The WHOIS information for the disputed domain names lists “Domain Management / Syed Hussain” as the registrant of the domain names. Respondent is not a licensee of Complainant and is not authorized to use Complainant’s LEXISNEXIS mark. Based on this evidence, the Panel concludes that Respondent is not commonly known by the <lexisnexis-es.com> and <lexisnexises.com> domain names 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 of that it is commonly known by the disputed domain name); see also 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).
Respondent’s <lexisnexis-es.com> and <lexisnexises.com> domain names both resolve to websites that contain a list of hyperlinks. The featured hyperlinks resolve to third-party websites that offer services that directly compete with the services that Complainant offers under its LEXISNEXIS mark. Respondent presumably profits from this use by receiving click-through fees each time Internet users click on the hyperlinks. The Panel determines that Respondent’s use of the confusingly similar <lexisnexis-es.com> and <lexisnexises.com> domain names for such a purpose demonstrates that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names. See 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).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Respondent’s <lexisnexises.com> domain name differs from Complainant’s LEXISNEXIS mark by two letters, the addition of the letters “e” and “s.” Complainant contends that the addition of these two letters was done in order to take advantage of typing mistakes done by Internet users attempting to access Respondent’s website. Based on such a minor difference between the disputed domain name and Complainant’s mark, the Panel concludes that Respondent engaged in typosquatting, which evidences Respondent’s lack of rights and legitimate interests in the <lexisnexises.com> domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). While Complainant makes a similar argument for its <lexisnexis-es.com> domain name, the Panel determines that the addition of the hyphen prevents a finding of typosquatting.
As Complainant demonstrated that Respondent does not make a bona fide offering of goods or services, is not commonly known by the disputed domain names, and does not make a legitimate noncommercial or fair use of the domain names, the Panel deems Policy ¶ 4(a)(ii) satisfied.
Respondent registered and uses the <lexisnexis-es.com> and <lexisnexises.com> domain names for the purpose of hosting competing hyperlinks. Internet users interested in Complainant’s LEXISNEXIS services may purchase competing services from Complainant’s competitors based on Respondent’s registration and use of the confusingly similar disputed domain names. For this reason, the Panel finds that Complainant’s business is disrupted by Respondent’s registration and use of the <lexisnexis-es.com> and <lexisnexises.com> domain names, constituting Policy ¶ 4(b)(iii) bad faith registration and use. 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 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)).
Respondent presumably profits from its registration and use of the <lexisnexis-es.com> and <lexisnexises.com> domain names by receiving click-through fees from the aforementioned hyperlinks. The disputed domain names are confusingly similar to Complainant’s LEXISNEXIS mark and are used to host hyperlinks to websites that offer services similar to, and in competition with, Complainant’s services. Therefore, Internet users accessing the resolving websites will likely become confused as to Complainant’s affiliation with the disputed domain names, resolving website, and featured hyperlinks. As Respondent attempts to profit from this confusion through click-through fees, the Panel holds that Respondent registered and uses the <lexisnexis-es.com> and <lexisnexises.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Due to the Panel previously finding that Respondent engaged in typosquatting as to the <lexisnexises.com> domain name, the Panel now finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
As Complainant demonstrated Respondent’s bad faith registration and use of the disputed domain names under Policy ¶¶ 4(b)(iii) and (iv), the Panel determines that Policy ¶ 4(a)(iii) is 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 <lexisnexis-es.com> and <lexisnexises.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 4, 2012
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