Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Domains Asia Ventures
Claim
Number: FA0503000433874
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 Domains Asia Ventures (“Respondent”), 255 XIAOXUE ROAD, XIAMEN,
Fujian 361001, China 252612.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <wwwmartindale.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 2, 2005.
On
March 2, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <wwwmartindale.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that
Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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
March 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 28, 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@wwwmartindale.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
March 31, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Honorable
Paul A. Dorf (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 <wwwmartindale.com>
domain name is confusingly similar to Complainant’s MARTINDALE mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwmartindale.com> domain name.
3. Respondent registered and used the <wwwmartindale.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Reed Elsevier Inc., through one of its operating divisions, Martindale-Hubbell,
is in the business of providing information and directory services in the
fields of law and business under the MARTINDALE.COM mark. Complainant, through Martindale-Hubbell and
its predecessors in interest, has offered printed information and directory
services since at least as early as 1868.
Reed Elsevier Properties Inc. is the owner and Reed Elsevier Inc. is the
licensee of all rights in and to the MARTINDALE.COM mark.
Complainant has
registered the MARTINDALE.COM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,796,893 filed March 29, 2001, issued December 23,
2003).
Respondent
registered the <wwwmartindale.com> domain name on March 12,
2003. Respondent’s domain name resolves
to an unaffiliated search engine website that features numerous pop-up
advertisements.
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 MARTINDALE.COM mark through registration of the mark
with the USPTO and through continuous use of the mark in commerce. The Panel finds that Complainant’s rights in
the mark date back to at least March 29, 2001, the date in which Complainant’s
successful trademark registration was initially filed. See 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); see also J.
C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435
(C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of
continual use of the mark, dating back to the filing date of the application
for registration); see also Planetary Soc’y v.
Salvador Rosillo Domainsforlife.com,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <wwwmartindale.com>
domain name is merely a typosquatted variation of Complainant’s MARTINDALE.COM
mark and thus confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s
<wwwbankofamerica.com> domain name is confusingly similar to the
complainant’s registered trademark BANK OF AMERICA because it “takes advantage
of a typing error (eliminating the period between the www and the domain name)
that users commonly make when searching on the Internet”); see also Marie
Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the
letters "www" are not distinct in the "Internet world" and
thus the respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to the complainant's MARIE CLAIRE trademark).
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 by Complainant as true and accurate. 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
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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <wwwmartindale.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <wwwmartindale.com> domain name, which is confusingly
similar to Complainant’s MARTINDALE.COM mark, to operate a search engine
website that features multiple pop-up advertisements. Such commercial 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 pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that the
respondent’s use of the disputed domain name, a simple misspelling of the
complainant’s mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531
(Nat. Arb. Forum June 3, 2003) (finding that the respondent’s use of infringing
domain names to direct Internet traffic to a search engine website that hosted
pop-up advertisements was evidence that it lacked rights or legitimate
interests in the domain name).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <wwwmartindale.com>
domain name or is authorized to register domain names featuring Complainant’s
MARTINDALE.COM mark. Thus, the Panel
finds that Respondent lacks rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Moreover, the fact that Respondent’s <wwwmartindale.com>
domain name is a typosquatted variation of Complainant’s MARTINDALE.COM mark is
further evidence of Respondent’s lack of rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(a)(ii).
See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
no rights or legitimate interests where the respondent used the typosquatted
<wwwdewalt.com> domain name to divert Internet users to a search engine
webpage, and failed to respond to the complaint); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees and advertising revenue for diverting
Internet users to the various links featured on its search engine website. Since Respondent’s <wwwmartindale.com>
domain name is confusingly similar to Complainant’s MARTINDALE.COM mark,
consumers accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website).
Furthermore, the
fact that Respondent’s <wwwmartindale.com> domain name is merely a
typosquatted variation of Complainant’s MARTINDALE.COM mark is evidence that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See Canadian Tire
Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (holding that “[t]he absence of a dot between
the ‘www’ and ‘canadiantire.com’ [in the <wwwcanadiantire.com> domain
name is] likely to confuse Internet users, encourage them to access the
respondent’s site” and evidenced bad faith registration and use of the domain
name); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”).
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 <wwwmartindale.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
April 18, 2005
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