Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Ron Parrish
Claim Number: FA0502000421278
PARTIES
Complainant
is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”),
represented by Tara M. Vold, of Fulbright and Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent
is Ron Parrish (“Respondent”), 7917
Yorktown Ave., Los Angeles, CA 90045.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <lexusnexis.info>, <lexusnexis.net>, <lexusnexus.info>, and <lexusnexus.net>, registered with Primus Telco Pty Ltd d/b/a Primusdomain / PrimusDomain.
PANEL
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.
Bruce
E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 15, 2005.
On
Feb. 15, 2005, Primus Telco Pty Ltd d/b/a Primusdomain / PrimusDomain confirmed
by e-mail to the National Arbitration Forum that the domain names <lexusnexis.info>, <lexusnexis.net>, <lexusnexus.info>, and <lexusnexus.net> are registered with Primus Telco Pty Ltd
d/b/a Primusdomain / PrimusDomain and that the Respondent is the current
registrant of the names. Primus Telco Pty Ltd d/b/a Primusdomain / PrimusDomain
has verified that Respondent is bound by the Primus Telco Pty Ltd d/b/a
Primusdomain / PrimusDomain 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
February 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 9, 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@lexusnexis.info, postmaster@lexusnexis.net,
postmaster@lexusnexus.info, and postmaster@lexusnexus.net by e-mail.
A
timely Response was received and determined to be complete on March 9, 2005.
Respondent
submitted an Additional Submission after the required deadline, and without the
required fee. Respondent’s Additional
Submission does not comply with Forum Supplemental Rule 7. Accordingly, the Additional Submission will
not be considered. Moreover, on April
8, 2005 and April 10, 2005, Respondent made further submissions. These submissions were also untimely.
On March 14, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Bruce E. Meyerson as Panelist.
Respondent has raised several procedural issues. Respondent states that “Policy Rule 13A” gives
him up to 30 days after receiving a complaint to file a response. Policy Rule
13 grants the Panel discretion to have an in-person hearing with a party under
exceptional circumstances and does not set a filing deadline for a response.
Policy Rule 5(a), however, states that a respondent must submit a response to
the dispute resolution provider within 20 days of the date of commencement of
the administrative proceeding. Although Respondent submitted the Response
before the deadline prescribed by Rule 5(a), Respondent nevertheless argues
incorrectly that he was not given as much time to file a response as the Policy
Rules require. Because Respondent does not offer any authority which entitles
him to more time to prepare a response, the Panel finds that Respondent is not
entitled to more time than that allowed by Rule 5(a).
Respondent also requests a three-month postponement of
this administrative proceeding.
Respondent has not cited any precedent in the Policy that would permit
him to seek such a postponement. The
procedural rules relied upon by Respondent are inapplicable to these
proceedings. Respondent’s request to
waive fees is also denied as beyond the scope of the applicable rules and
procedures.
Respondent asserts that this proceeding is inappropriate
due to a conflict of interest. Respondent states that a conflict arises because
of the law-related services that Complainant provides. Respondent’s unsupported
assertion that Complainant’s services create a conflict of interest in this
proceeding is insufficient to prevent the Panel from deciding the dispute. Britannia Bldg. Soc’y v. Britannia Fraud
Prevention, D2001-0505
(WIPO July 6, 2001) (“[U]nsubstantiated allegations of bias are not sufficient
to warrant disqualification or recusal [of an appointed Panelist]. Rather, a
party challenging a panelist’s appointment must present specific evidence
showing that a panelist may be biased.”).
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
provides, among other things, computer software, computer assisted research
serves and other computer-related services.
Complainant asserts that it has offered these services since 1972 and
has offered software products and other services under the marks “LEXIS” and
“LEXISNEXIS” since the 1980’s. Reed
Elsevier Properties Inc. is the owner and Reed Elsevier Inc. is the licensee of
over 20 trademarks registered with the United States Patent and Trademark
Office. Complainant states that it has
“prominently and extensively used, promoted and advertised” its LEXIS marks and
claims to have spent “tens of millions of dollars” promoting its serves through
the media. Complainant contends that
the disputed domain names are nearly identical to Complainant’s LEXISNEXIS
mark. Complainant contends that
Respondent is not commonly known by the terms contained in the domain names and
that Respondent has made no preparations to use the domain names in connection
with a bona fide offering of goods and services. Complainant contends that Respondent’s actions constitute bad
faith as set forth in the Policy.
B. Respondent
Respondent
states that the Complainant did not contact him regarding concerns relating to
the domain names. Respondent contends
that Complainant is seeking to transfer the domain names as “an instrumentality
to monopolize all uses of the word ‘LexisNexis’ for use in any domain
name.” Respondent states that in
purchasing the domain names he did not intend to “harm, or sell them to anyone
and that includes the Complainant.”
FINDINGS
Complainant provides, among other things,
computer software, computer assisted research services and other
computer-related services. The record
indicates that Complainant has offered these services since 1972 and has
offered software products and other services under the marks “LEXIS” and
“LEXISNEXIS” since the 1980’s. Reed
Elsevier Properties Inc. is the owner and Reed Elsevier Inc. is the licensee of
over 20 LEXIS or LEXISNEXIS trademarks registered with the United States Patent
and Trademark Office.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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;
(2)
the
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.
The record reflects that Complainant has established
rights in the LEXISNEXIS mark through registration with the United States
Patent and Trademark Office and through continuous use in commerce since
1972. 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.”).
The
Panel agrees with Complainant that the <lexusnexis.info>, <lexusnexis.net>, <lexusnexus.info>, and <lexusnexus.net> domain names are confusingly similar to
Complainant’s LEXISNEXIS mark because the domain names merely replace one or
more of the letter “i” in the mark with the letter “u” and change the “.com”
generic top-level domain (“gTLD”). The misspelling of Complainant’s registered
mark and the addition of another
generic top level domain to the mark do not distinguish the disputed domain
names. Accordingly, the Panel finds that the domain names are confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); VeriSign,
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and the
complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum
July 23, 2002) (finding the disputed domain name was a simple misspelling of
the complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”).
Because the Complainant has made a prima
facie case regarding Policy ¶ 4(a)(ii), the burden shifts to Respondent to
establish rights or legitimate interests in the domain name. G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has
asserted that a respondent has no rights or legitimate interests with respect
to the domain name it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). Respondent has not met that burden.
The record
supports Complainant’s contention that Respondent has never been known by the disputed domain names. Accordingly, Respondent does not have
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent did not have rights in a domain name when the respondent was not
known by the mark); RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail”).
The record further supports Complainant’s
assertion that Respondent has not used the disputed domain names and has not
made any demonstrable preparations to use the domain names. Thus, Respondent has not used the domain
names in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or made a legitimate noncommercial or fair use of
the domain names pursuant to Policy ¶ 4(c)(iii). Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no
rights or legitimate interests where the respondent advanced no basis by which
the panel could conclude that it had rights or legitimate interests in the
domain names, and no use of the domain names was established); Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that, when the respondent declares its
intent to develop a website the Policy requires the respondent to show (1)
demonstrable evidence of such preparations to use the domain name, and (2) that
such preparations were undertaken before any notice to the respondent of the dispute).
Complainant
correctly argues that Respondent could not make any use of the domain names
without creating a false impression of association with Complainant because the
LEXISNEXIS mark is “fanciful” and well known. Thus, the Panel finds that
Respondent is opportunistically holding the disputed domain names which
evidences bad faith registration and use under Policy ¶ 4(a)(iii). Chanel, Inc. AG v. Designer Exposure,
D2000-1832 (WIPO Feb. 15, 2001) (finding that the respondent’s registration and
use of the famous CHANEL mark suggests opportunistic bad faith); Red
Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the
respondent’s expected use of the domain name <redbull.org> would lead
people to believe that the domain name was connected with the complainant, and
thus is the equivalent to bad faith use).
Complainant
contends that Respondent has engaged in the practice of typosquatting because
the disputed domain names incorporate common misspellings of Complainant’s
mark. The Panel agrees that Respondent
has engaged in typosquatting, and therefore the Panel finds that Respondent
registered and used the disputed domain names in bad faith under Policy ¶
4(a)(iii). Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that
the respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of the
complainant’s ZONEALARM mark).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexusnexis.info>,
<lexusnexis.net>, <lexusnexus.info>, and <lexusnexus.net>
domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 11, 2005
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