Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. 21562719 Ont Ltd
Claim Number: FA1209001463987
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 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <martindalehubbard.com>, registered with Fabulous.com Pty Ltd.
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 September 24, 2012; the National Arbitration Forum received payment September 24, 2012.
On September 24, 2012, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <martindalehubbard.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 September 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2012, 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@martindalehubbard.com. Also on September 26, 2012, 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 October 25, 2012, 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 urges that Respondent registered and used a domain name containing Complainant’s protected MARTINDALE-HUBBELL mark.
Pursuant to Policy ¶ 4(a)(i), Complainant urges that the disputed domain name is confusingly similar to its mark.
Complainant owns the MARTINDALE-HUBBELL mark and has used it in connection with information and directory services in the fields of law and business. In that regard, Complainant owns a United States Patent and Trademark Office (“USPTO”) registration for the MARTINDALE-HUBBELL mark (Reg. No. 1,542,506 registered June 6, 1989).
The <martindalehubbard.com> domain name is confusingly similar to the MARTINDALE-HUBBELL mark because the disputed domain name is merely Complainant’s mark, slightly misspelled, without the hyphen, and with the generic top-level domain (“gTLD”) “.com.”
Pursuant to Policy ¶ 4(a)(ii), Complainant urges that Respondent lacks rights or legitimate interests in the <martindalehubbard.com> domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s mark. The WHOIS record displays “21562719 Ont Ltd” as the domain name registrant.
Complainant also urges that the <martindalehubbard.com> domain name resolves to a parked website which contains links which purport to offer lawyer locator and other legal services.
Pursuant to Policy ¶ 4(a)(iii) Complainant alleges that Respondent registered and used the disputed <martindalehubbard.com> domain name in bad faith because the disputed domain name attempts to Intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source of the dispute domain name; that Respondent is using the <martindalehubbard.com> domain name in a way that capitalizes on the good will of the MARTINDALE-HUBBELL mark; and that Respondent receives some compensation from revenues generated by user links to the websites advertised on the directory pages of the resolving website.
Respondent did not submit a Response; however, the Panel notes that Respondent registered the <martindalehubbard.com> domain name May 4, 2006 and that this is some 17 years after Complainant acquired legal rights in the mark.
Respondent did not file a Response in this matter.
Complainant has protected rights in the mark contained in its entirety within the disputed domain name that Respondent registered.
Respondent has shown no rights to or legitimate interest in the disputed domain name containing Complainant’s protected mark.
The submission and record in this proceeding allow no inference that Respondent has any such rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 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.
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.”).
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Reed Elsevier Inc. and Reed Elsevier Properties Inc. Complainants contend that Reed Elsevier Properties Inc. is the owner and Reed Elsevier Inc. is the licensee of all rights in and to the MARTINDALE-HUBBELL mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where a license existed between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel elects to treat them all as a single entity in this proceeding. Throughout the below decision, the Complainants will be collectively referred to as “Complainant.”
Complainant contends that it is the owner of the MARTINDALE-HUBBELL mark, used in connection with information and directory services in the fields of law and business. Complainant also states that it is the owner of the USPTO registration for the MARTINDALE-HUBBELL mark (Reg. No. 1,542,506 registered June 6, 1989). Irrespective of the location of the parties to a dispute, registration of a mark with a trademark authority is sufficient evidence of rights in that mark. See 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, this Panel finds that Complainant has rights in the MARTINDALE-HUBBELL mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <martindalehubbard.com> domain name is confusingly similar to the MARTINDALE-HUBBELL mark. According to Complainant, the disputed domain name is merely Complainant’s mark, slightly misspelled, without the hyphen and with the gTLD “.com.” The Panel notes that the slight misspelling of a mark in a domain name does not distinguish a domain name from the Complainant’s mark that that it remains confusingly similar. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The Panel also finds that the deletion of a hyphen and addition of a gTLD in a domain name does not negate a finding of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Therefore, the Panel finds that Respondent’s <martindalehubbard.com> domain name is confusingly similar to Complainant’s MARTINDALE-HUBBELL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent lacks rights and legitimate interests in the <martindalehubbard.com> domain name. To support this allegation, Complainant sets out that Respondent is not commonly known by the disputed domain name. According to Complainant, Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s mark, and the WHOIS record displays “21562719 Ont Ltd” as the domain name registrant. The panel uses such evidence to support findings that a party is not commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), This Panel finds that Respondent is not commonly known by the <martindalehubbard.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s <martindalehubbard.com> domain name resolves to a parked website that contains links that purport to offer lawyer locator and other legal services. Complainant notes that these links refer to topics such as Lawyers Directory, Find a Lawyer, Litigation Attorneys, and Online Legal Help. Considering this use of the disputed domain name and Complainant’s use of the MARTINDALE-HUBBELL mark in connection with information and directory services for lawyers, the Panel finds that the content of the <martindalehubbard.com> domain name is purposefully intended to be competitive with that of Complainant’s offerings. Use of a disputed domain name to display competitive links is not a use that extends rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Based on the above analysis, the Panel finds that Respondent’s use of the <martindalehubbard.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
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 last urges that Respondent registered and uses the <martindalehubbard.com> domain name in bad faith. Complainant contends that the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to it by creating a likelihood of confusion with Complainant’s mark as to the source of the dispute domain name. Complainant alleges that the disputed domain name resolves to a parked website where Respondent displays links to goods and services that compete with Complainant’s offerings in the lawyer locator industry. According to Complainant, Respondent is using the <martindalehubbard.com> domain name in a way that capitalizes on the good will of the MARTINDALE-HUBBELL mark, and Respondent receives some compensation for revenues generated by user links to the websites advertised on the directory pages of the resolving website. Such use suggests that Respondent knew of Complainant’s rights in the mark and seeks to capitalize on the Complainant’s well-known mark. Therefore, the Panel finds that Respondent registered and uses the <martindalehubbard.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent makes no contentions relative 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 <martindalehubbard.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 8, 2012.
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