Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Momentum Technology Corp (**Domain For Sale**) c/o Paul
Barbell
Claim
Number: FA0501000397673
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”), represented
by Tara M. Vold, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue
NW, Washington, DC 20004. Respondent is
Momentum Technology Corp (**Domain For
Sale**) c/o Paul Barbell (“Respondent”), 3030 Donato
Dr. N., Jacksonville, FL 32226.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lexislegal.com>, registered with Enom,
Inc.
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 January
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 7, 2005.
On
January 7, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <lexislegal.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@lexislegal.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 5, 2005, 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." 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. Respondent’s <lexislegal.com>
domain name is confusingly similar to Complainant’s LEXIS mark.
2. Respondent does not have any rights or
legitimate interests in the <lexislegal.com> domain name.
3. Respondent registered and used the <lexislegal.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through one of its operating divisions, LexisNexis, is in the business of
offering a wide range of computer software, computer assisted research services
and other computer-related services under the LEXIS mark.
Specifically,
Complainant has offered legal related and public database searching services
under the LEXIS mark since 1985.
Complainant currently offers public databases in the areas of assets,
bankruptcy filings, business and corporate information, judgment, tax and UCC
liens, licenses, personal and business locators and verdicts and
settlements.
Complainant has
numerous registrations for the LEXIS mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. Nos. 1,020,214 issued September 9, 1975;
1,516,851 issued December 13, 1988; 1,561,499 issued October 17, 1989).
Respondent
registered the <lexislegal.com> domain name on August 24,
2004. Respondent’s domain name resolves
to a website featuring links to competing law-related services.
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.
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 has
established rights in the LEXIS mark through registration with the USPTO and
through continuous use of the mark in commerce. 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 Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <lexislegal.com> domain name is
confusingly similar to Complainant’s LEXIS mark since the domain name
incorporates the mark in its entirety and merely adds the term “legal,” which
describes Complainant’s business. The
addition of the term “legal” to Complainant’s LEXIS mark is not enough to overcome
a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to distinguish
Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth in the Complaint as true and accurate. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”); see also Bayerische Motoren Werke
AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a Response the Panel is free to make inferences
from the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do).
Additionally,
the Panel may construe Respondent’s failure to respond as an admission that
Respondent lacks rights and legitimate interests the <lexislegal.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name.”).
Furthermore,
Respondent is using the domain name, which is a confusingly similar variation
of Complainant’s LEXIS mark, to operate a website that features links to
competing law-related services. The
Panel finds that such use is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Moreover, nothing
in the record indicates that Respondent is commonly known by the disputed
domain name or that Respondent is authorized to register domain names featuring
Complainant’s LEXIS mark. Thus, the
Panel finds that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Ian Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the notion that a respondent is
commonly known by a domain name, the notion must be rejected); see also 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <lexislegal.com> domain name, which contains a
confusingly similar version of Complainant’s LEXIS mark, to operate a website
that features links to competing services.
The Panel finds that Respondent’s competing use of the domain name
constitutes disruption and is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum
Jan. 4, 2001) (finding it "obvious" that the domain names were
registered for the primary purpose of disrupting the competitor's business when
the parties are part of the same, highly specialized field); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) & (iv).”).
Furthermore, the Panel infers that Respondent receives
click-through fees for diverting Internet users to the competing law-related
services. The Panel also finds that
because the domain name contains a confusingly similar version of Complainant’s
LEXIS mark, consumers accessing Respondent’s domain name may become confused as
to Complainant’s affiliation with the resulting website. Thus, Respondent’s opportunistic use of the
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See ESPN,
Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent
linked the domain name to another website <iwin.com>, presumably
receiving a portion of the advertising revenue from the site by directing
Internet traffic there, thus using a domain name to attract Internet users for
commercial gain); see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the
services offered at the site).
Moreover,
Respondent had actual or constructive knowledge of Complainant’s rights in the
LEXIS mark due to Complainant’s registration of the mark with the USPTO. Further evidence of Respondent’s knowledge
of Complainant’s mark is the fact that Respondent is using the domain name to
market competing law-related services.
Thus, the Panel finds that respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <lexislegal.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
February 21, 2005
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