Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. PARRY c/o Mark Parry
Claim Number: FA0504000452000
Complainants are
Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”),
represented by Tara M. Vold of Fulbright & Jaworski L.L.P., 801
Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is PARRY c/o Mark Parry (“Respondent”), 13 Gereher
St., Mordialloc, VIC 3000, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <martindale-hubbel.com>,
registered with Fabulous.com Pty Ltd.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 7, 2005.
On
April 6, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <martindale-hubbel.com>
is registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. 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
April 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 2, 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@martindale-hubbel.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
May 9, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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 <martindale-hubbel.com> domain name is confusingly similar to
Complainant’s MARTINDALE-HUBBELL mark.
2. Respondent does not have any rights or
legitimate interests in the <martindale-hubbel.com>
domain name.
3. Respondent registered and used the <martindale-hubbel.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through its operating division Martindale-Hubbell, is in the business of
providing information and directory services in the fields of law and
business.
Complainant
holds registrations with the United States Patent and Trademark Office for the
MARTINDALE-HUBBELL (Reg. No. 2,057,030 issued April 29, 1997), MARTINDALE.COM
(Reg. No. 2,796,593 issued December 23, 2003) and MARTINDALE-HUBBELL DISPUTE
RESOLUTION DIRECTORY (Reg. No. 2,724,776 issued June 10, 2003) marks.
Complainant has
used its MARTINDALE-HUBBELL mark since at least as early as 1931 in relation to
its directory services. Additionally,
Complainant has used its MARTINDALE-HUBBELL DISPUTE RESOLUTION DIRECTORY and
MARTINDALE.COM marks since at least 2001.
Additionally, Complainant has developed a strong presence on the
Internet via its numerous domain names, including
<martindale-hubbell.com>, <martindale.com> and
<martindalehubbell.com>.
Respondent
registered the <martindale-hubbel.com>
domain name on October 31, 2004, long after Respondent began using its
MARTINDALE-HUBBELL and related marks.
Respondent is using the disputed domain name to redirect Internet users
to a website that displays links to legal directories and other legal services
in competition with those of Complainant.
Furthermore, Respondent is using the domain name in connection with a
domain name parking scheme with Sedo.com in which Respondent earns between
$0.03 and $1.50 for every click on an ad link through Respondent’s website. Complainant has not authorized Respondent to
use any version of its MARTINDALE-HUBBELL marks for any purpose.
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 presumptive rights in the MARTINDALE-HUBBELL mark through registration
with the United States Patent and Trademark Office. Since Respondent has not disputed Complainant’s prima facie case of rights, the Panel
finds that Complainant has rights in the MARTINDALE-HUBBELL mark for purposes
of Policy ¶ 4(a)(i). 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 <martindale-hubbel.com> domain
name registered by Respondent includes a version of Complainant’s
MARTINDALE-HUBBELL mark that differs only with the omission of the final letter
“l” from Complainant’s mark and the addition of the generic top-level domain
(“gTLD”) “.com.” Under the Policy, the
addition of a gTLD has no legal significance in a determination of confusing
similarity under Policy ¶ 4(a)(i). Furthermore,
omitting one letter from Complainant’s registered mark, rendering the domain
name phonetically identical to the mark, fails to distinguish Respondent’s
confusingly similar domain name. See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also Compaq Info. Techs. Group, L.P. v. Seocho,
FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent’s
failure in this instance to submit a response to the allegations of the
Complaint entitles the Panel to accept all reasonable allegations and
inferences in the Complaint as true unless clearly contradicted by the
evidence. See 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.”); 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 a 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
asserts that Respondent has no rights or legitimate interests in the <martindale-hubbel.com> domain
name that contains Complainant’s MARTINDALE-HUBBELL mark in its entirety. Complainant has made a prima facie case in support of its allegations, which shifts the
burden to Respondent to make a showing that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
However, Respondent has failed to respond to Complainant’s allegations
and to provide evidence of rights or legitimate interests. Respondent has, therefore, failed to meet
its burden and the Panel concludes that Respondent lacks rights and legitimate
interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that, once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to that respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by a complainant that a respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to that respondent to demonstrate that such rights or legitimate
interests do exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise).
Complainant
argues and provides evidence that Respondent is using the <martindale-hubbel.com> domain name to divert Internet users
to a website that displays links to legal directories and other legal-related
services similar to those offered by Complainant under its MARTINDALE-HUBBELL
mark. Respondent’s use of a domain name
that differs by only one letter from Complainant’s registered mark to redirect
Internet users to a website containing links to Complainant’s competitors is
not a use in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy ¶¶ 4(c)(i) and (iii).
See Winmark Corp. v. In The Zone,
FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights
or legitimate interests in a domain name that used Complainant’s mark to
redirect Internet users to a competitor’s website); see also Ticketmaster Corp.
v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark).
Complainant
asserts that Respondent is not commonly known by the <martindale-hubbel.com> domain name. Complainant further contends that Respondent
is not authorized or licensed to use Complainant’s MARTINDALE-HUBBELL mark or
related marks for any purpose. Respondent
has not filed a response and has not, therefore, provided the Panel with any
evidence to rebut Complainant’s assertion.
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that Respondent does not have rights in a domain name
when Respondent is not known by the mark); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <martindale-hubbel.com>
domain name to profit from consumer confusion by intentionally attracting
Internet users interested in locating Complainant’s MARTINDALE-HUBBELL products
and services. The Panel finds that
Respondent profits from these intentional diversions through click-through fees
earned by diverting Internet users to the third-party websites linked through
Respondent’s website. Therefore, the
Panel determines that Respondent’s attempts to divert Internet users for
commercial gain by attracting Internet users to Respondent’s website through a
likelihood of confusion with Complainant’s MARTINDALE-HUBBELL mark is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); 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); see also Luck's Music Library
v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding
that Respondent had engaged in bad faith use and registration by linking the
domain name to a website that offers services similar to Complainant’s
services, intentionally attempting to attract, for commercial gain, Internet
users to its website by creating a likelihood of confusion with Complainant’s
marks).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent is
engaging in the practice of “typosquatting” by taking advantage of a common
typographical error made by Internauts intending to reach Complainant’s website
at the <martindale-hubbell.com> domain name who inadvertently omit the
final “l.” Under the Policy,
typosquatting is itself evidence of bad faith registration and use of the
disputed domain name and the Panel finds no reason to distinguish Respondent’s
use of the practice in this instance. See 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.”); see also Zone Labs, Inc. v.
Zuccarini, FA 190613 (Nat Arb. Forum Oct. 15, 2003) (finding that
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 Complainant’s ZONEALARM mark); see
also K.R. USA, Inc. v. So So Domains,
FA 180624 (Nat Arb. Forum Sept. 18, 2003) (finding that the
<philadelphiaenquirer.com> and <tallahassedemocrat.com> domain
names were typosquatted versions of Complainant’s THE PHILADELPHIA INQUIRER and
TALLAHASSEE DEMOCRAT marks and that this practice “has been deemed behavior in
bad faith”).
The Panel finds
that Complainant has satisfied 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 <martindale-hubbel.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated May 18, 2005
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