Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Gregory C. Colan, Esq.
Claim Number: FA0306000161469
PARTIES
Complainant
are Reed Elsevier Inc. and Reed Elsevier Properties Inc., Newton, MA (“Complainant”)
represented by J. Paul Williamson, Tara
M. Vold, and Katherine M. DuBray of Fulbright & Jaworski LLP.
Respondent is Gregory C. Colan,
New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lexis.us>,
registered with Official Us Domains.
PANEL
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.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 3, 2003; the Forum received a hard copy of the Complaint
on June 4, 2003.
On
June 25, 2003, Official Us Domains confirmed by e-mail to the Forum that the
domain name <lexis.us> is
registered with Official Us Domains and that Respondent is the current
registrant of the name. Official Us
Domains has verified that Respondent is bound by the Official Us Domains
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On
June 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 15,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 11, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s <lexis.us>
domain name is identical to Complainant’s LEXIS mark.
2. Respondent does not have any rights or
legitimate interests in the <lexis.us> domain name.
3. Respondent registered and used the <lexis.us>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant
holds numerous registrations on the Principal Register of the United States
Patent and Trademark Office (“USPTO”) for the LEXIS mark including Reg. No.
1,020,214 (registered on September 9, 1975), Reg. No. 1,516,851 (registered on
December 13, 1988) and Reg. No. 1,561,499 (registered on October 17, 1989).
Complainant
has continuously offered computer-assisted research services under its LEXIS
mark since at least as early as 1972.
Complainant has also continuously offered software products under its
LEXIS mark since at least as early as 1983.
Complainant also uses its LEXIS mark in
numerous domain names for its websites including <LEXIS.com>,
<LEXIS.org>, <LEXIS.info>, <LEXIS.biz>, <LEXISone.com>
and <LEXISnexis.com>. Over 3.2
million persons have obtained access to Complainant’s services online through
the websites connected with these domain names.
Respondent
registered the <lexis.us> domain name on April 25, 2002. Since Respondent registered the domain name
at issue, Respondent has not linked the domain name to an active website or
demonstrated any preparations to use the disputed domain name in connection
with an active website. Currently,
Respondent is using the disputed domain to link Internet users to a “parking”
page.
Respondent is not a licensee of
Complainant nor is Respondent otherwise authorized to use Complainant’s LEXIS
mark for any purpose.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the
LEXIS mark through registration on the Principal Register of the USPTO and
through continuous use of its mark in commerce since 1972. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The
<lexis.us> domain name is identical to Complainant’s LEXIS
mark. Respondent merely adds the
country code “.us” to Complainant’s entire mark. Thus, the Panel finds that Respondent’s domain name is not
sufficiently distinguishable from Complainant’s LEXIS mark under Policy ¶
4(a)(i). See Tropar Mfg. Co. v. TSB,
FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of
the country-code “.us” fails to add any distinguishing characteristic to the
domain name, the <tropar.us> domain name is identical to Complainant’s
TROPAR mark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent
did not submit a Response to the Panel in this proceeding. Thus, the Panel may accept as true all
reasonable allegations set forth in the Complaint. Furthermore, since Respondent failed to submit a Response,
Respondent has not presented any evidence that it has any rights or legitimate
interests in the <lexis.us> domain name. Therefore, the Panel infers that Respondent does not have any
rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see
also Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name because Respondent never submitted a
Response or provided the Panel with evidence to suggest otherwise).
Since Respondent did not respond to the
Complaint, Respondent has not provided any evidence that it is the owner or
beneficiary of a trade or service mark that is identical to the <lexis.us>
domain name. Thus, the Panel finds that
Respondent does not have rights or legitimate interests in the domain name at
issue under Policy ¶ 4(c)(i). See
CDW Computer Ctrs, Inc. v. Joy Comp. FA114463 (Nat. Arb. Forum July 25,
2002) (finding that, because Respondent did not come forward with a Response,
the Panel could infer that Respondent had no trademark or service marks
identical to <cdw.us> and therefore had no rights or legitimate interests
in the domain name).
Furthermore,
Respondent has failed to submit any evidence showing that it is commonly known
by the LEXIS mark or the <lexis.us> domain name. In addition, the LEXIS mark is an arbitrary
term that does not have any meaning besides identifying Complainant as the
source of its products and services.
Moreover, Complainant has not licensed or authorized Respondent to use
the LEXIS mark for any purpose. Thus,
the Panel concludes that Respondent is not commonly known by the <lexis.us>
domain name. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the
nonsensical nature of the [<wwwmedline.com>] domain name and its
similarity to Complainant’s registered and distinctive [MEDLINE] mark, the
Panel concludes that [UDRP] ¶ 4(c)(ii) does not apply to Respondent”).
Respondent
is using the <lexis.us> domain name to link Internet users to a
“parking” page. Since the disputed domain name has been
registered, Respondent has failed to link it to any active website. Furthermore, Respondent has not presented
any plans or preparations to use the disputed domain name in connection with a
bona fide offering of goods or services or a legitimate noncommercial or fair
use. Thus, the Panel finds that
Respondent lacks rights and legitimate interests in the <lexis.us>
domain name pursuant to Policy ¶ ¶ 4(c)(i) and 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Melbourne IT
Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that Respondent
made preparations to use the domain name or one like it in connection with a
bona fide offering of goods and services before notice of the domain name
dispute, the domain name did not resolve to a website, and Respondent is not
commonly known by the domain name).
Accordingly, the Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Paragraph
4(b) of the UDRP expressly states that that the circumstances listed, “in
particular but without limitation, if found by the Panel to be present, shall
be evidence of the registration or use of a domain name in bad faith.” Therefore, the factors listed under ¶ 4(b)
which evidence registration and use in bad faith are not exclusive. Accordingly, the Panel can look to
circumstances other than those listed under ¶ 4(b) to determine whether
Respondent registered or is using the <lexis.us> domain name in
bad faith. See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that [UDRP] ¶
4(b) sets forth certain circumstances, without limitation, that shall be
evidence of registration and use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (“[T]he [UDRP] expressly recognizes that other
circumstances can be evidence that a domain name was registered and is being
used in bad faith”).
Complainant’s
registration of its LEXIS mark put Respondent on constructive notice of
Complainant’s rights in its mark.
Respondent registered the <lexis.us> domain name in bad
faith because it had constructive knowledge of Complainant’s LEXIS mark prior
to registering the disputed domain name.
Thus, the Panel concludes that Respondent acted in bad faith pursuant to
UDRP ¶ 4(a)(iii) when it registered the
<lexis.us> domain name. See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith); see also Victoria’s
Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the usTLD Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <lexis.us> domain name be TRANSFERRED
from Respondent to Reed Elsevier Inc.
Sandra Franklin, Panelist
Dated: September 19, 2003
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