Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Bgkeys / Paul Graziano
Claim Number: FA1111001417481
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainants”), represented by Tara M. Vold of Fulbright & Jaworski L.L.P., Washington, D.C., USA Respondent is Bgkeys / Paul Graziano (“Respondent”), represented by James R. Muldoon of Harris Beach PLLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <linexis.net>, <linexis.org>, <linexis.biz>, and <linexis.info>, registered with Wild West Domains, Inc. and <linexis.com>and <linexis.mobi>, registered with Godaddy.Com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on November 29, 2011; the National Arbitration Forum received payment on November 29, 2011.
On November 30, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <linexis.biz>, <linexis.net>, <linexis.org>, and <linexis.info> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <linexis.com> and <linexis.mobi> 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 December 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@linexis.com, postmaster@linexis.net, postmaster@linexis.org, postmaster@linexis.biz, postmaster@linexis.info, and postmaster@linexis.mobi. Also on December 6, 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.
A timely Response was received and determined to be complete on December 28, 2011.
Complainants submitted an Additional Submission on January 3, 2012 which was deemed to be in compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission on January 10, 2012 which was deemed to be in compliance with Supplemental Rule 7.
On January 6, 2012, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainants request that the domain names be transferred from Respondent to Complainant.
A. Complainants
Complainant Reed Elsevier Properties Inc. owns trademark rights in the LEXISNEXIS and NEXIS marks and in its “knowledge burst” logo. Complainant Reed Elsevier Inc. is licensee of those trademarks. Complainants through marketing efforts have become well-known in the area of “content driven information services and data analytics and security solution services, including services specifically directed to the healthcare industry. . ..” As a result of these activities, the Lexis Nexis marks have become well known in connection with those services. Respondent Bgkeys / Paul Graziano registered the disputed domain names <linexis.com>, <linexis.net>, <linexis.org>, <linexis.biz>, <linexis.info>, <linexis.us>, and <linexis.mobi> in 2006, long after Complainants’ rights in their marks were established, and Respondent is not authorized to use Complainants’ marks. The disputed domain names are confusingly similar to Complainants’ marks. Respondent is not known by the marks and has no rights or legitimate interests in them. Because Respondent knew of Complainants’ rights and registered the disputed domain names to divert Internet users interested in Complainants’ services to its website in order to obtain click-through revenue and to market third party services, Respondent must be deemed to have registered and used the domain names in bad faith. The panel should order transfer of the domain names to Complainants.
B. Respondent
Respondent contends that his disputed domain names are not confusingly similar to Complainants LEXISNEXIS and NEXIS marks and that its logo is not similar to Complainants’ logo. Respondent also contends that he makes a bona fide offering of goods and services through the site reached by use of the disputed domain names. He contends he chose his domain names and logo independently to market comprehensive computer networking, server support, and desktop and hardware maintenance services. He denies that his domain names were intended to divert Internet users looking for Complainants’ services to his website or that such diversion occurs. He asserts that the products sold through his website are not products marketed by Complainants. He contends that he has rights and legitimate interests in the domain names and denies that he registered and is using the domain names in bad faith.
C. Additional Submissions
Complainants in their Additional Submission identify allegations they made which they assert Respondent did not refute. They contend that an average unwary consumer would find the disputed domain names to be confusingly similar to their marks. They also contend that Respondent cannot show a legitimate interest in the domain names without extrinsic proof that Internet users associate the domain names with Respondent rather than Complainants. Complainants also allege that the evidence shows Respondent chose the domain names to capitalize unfairly on goodwill associated with Complainants’ marks.
Respondent in his Additional Submission accuses Complainants of misrepresenting the facts. He contends Complainants have not established a likelihood of confusion between their marks and Respondent’s domain names. He also contends that no support exists for Complainants’ allegation that he does not have legitimate interests in his domain names or that he is not using them for a bona fide business purpose. He also alleges that Complainants have not proven that he registered and is using the domain names in bad faith.
The Panel finds that Respondent’s Linexis name and corresponding domain names are not confusingly similar to Complainants’ LEXISNEXIS and NEXIS marks and that Respondent’s logo is not confusingly similar to Complainants’ logo. The disputed domain names contain fewer syllables and do not contain the rhyming sound in LEXISNEXIS. Moreover, because Complainants’ marks are so distinctive and well known, the disputed domain names are not as likely to cause confusion with them as they might be if the marks were not so distinctive and famous.
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."
Paragraph 4(a) of the Policy requires that Complainants 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 Complainants have 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.
Because the Panel has found that Respondent’s domain names and logo are not confusingly similar to Complainants’ marks and logo, the Panel determines that Complainants have not met their burden to prove that the disputed domain names are confusingly similar to Complainants’ marks. See iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Nat. Arb. Forum Oct. 13, 2003). Complainants have failed to meet the requirements of Policy ¶4(a)(i).
and
Because Complainants have not satisfied the requirements of Policy ¶4(a)(i), the Panel has determined that it is not necessary to examine and decide the issues relating to the other two elements of the policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
Because Complainants have not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <linexis.com>, <linexis.net>, <linexis.org>, <linexis.biz>, <linexis.info>, and <linexis.mobi> domain names REMAIN WITH Respondent.
Mark McCormick, Panelist
Dated: January 20, 2012
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