ELIGIBILITY
REQUIREMENTS DISPUTE RESOLUTION POLICY
DECISION
Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Yu Shao
Claim Number: FA0603000661370
PARTIES
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”), 275 Washington Street, Newton, MA 02458, represented by J. Paul Williamson, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is Yu Shao (“Respondent”), Room 605, Building 85, 1800 Nong, Long Yang Road, Pudong, Shanghai, Shanghai 201204 China.
REGISTRAR AND DISPUTED REGISTERED NAMES
The Registered Name at issue is <lexisnexis.name>, registered with Go Daddy Software, 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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 16, 2006; the Forum received a hard copy of the Complaint on March 23, 2006.
On March 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the Registered Name <lexisnexis.name> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the Registered Name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On March 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 13, 2006, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Rule 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”).
A timely Response was received and determined to be complete on April 7, 2006.
On April 13, 2006, pursuant to ERDRP Rule 6(b), the Forum appointed David E. Sorkin as the single Panelist.
Complainant requests the registration of the <lexisnexis.name> Registered Name as a Defensive Registration, pursuant to paragraph 5(f)(i)(C) of the ERDRP. (Complainant incorrectly refers to this as a “combined second and third level Defensive Registration,” apparently relying upon the 2001 version of the ERDRP, which was applicable when only third level names were available for registration. The ERDRP was revised in 2003, when second level names became available for registration; the current version is available at <http://www.icann.org/udrp/erdrp-policy.html>.)
In addition, although Complainant does not explicitly request cancellation of the Registered Name, the Panel considers such a request to be implicit in the Complaint.
A. Complainant
Complainant alleges that they have exclusive and well-established rights in the registered LEXISNEXIS mark. Complainant further alleges that Respondent does not meet the Eligibility Requirements for the <lexisnexis.name> Registered Name, on the grounds that the Registered Name does not correspond to Respondent’s legal name, Respondent owns no trademark or service mark rights to the name, and Respondent is not commonly known by the name.
B. Respondent
Respondent states that he plans to name his future son “Lexisnexis,” and that he registered the Registered Name for his son’s website.
The Panel finds that the Registered Name was registered in violation of the Eligibility Requirements.
Paragraph 15(a) of the ERDRP 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(b) of the ERDRP requires that a Complainant prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements:
(1) the name corresponding to the Registered Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and
(3) the Respondent has not been commonly known by the name corresponding with the Registered Name.
If the above elements are shown, the Panel shall require the cancellation of the Registered Name. In addition, under paragraph 5(f)(i)(C) of the ERDRP, the Complainant may elect to register the Registered Name as a Defensive Registration blocking the challenged name, provided that upon cancellation of the Registered Name the Complainant pays Defensive Registration fees, meets the Common Defensive Registration Eligibility Requirements, and otherwise meets the requirements for a Defensive Registration.
In this case, Complainant alleges that the Registered Name does not correspond to Respondent’s legal name, that Respondent owns no trademark or service mark rights to the name, and that Respondent is not commonly known by the name. Respondent claims that the Registered Name corresponds to the name that he intends to give his future son. The Panel is dubious of Respondent’s claim, but even if his intentions were sincere, merely planning to use a name in the future fails to satisfy the Eligibility Requirements. The Panel therefore finds that the Registered Name was registered in violation of the Eligibility Requirements.
Complainants have established that the <lexisnexis.name> Registered Name was registered in violation of the Eligibility Requirements. Accordingly, it is hereby Ordered that the Registered Name shall be CANCELLED.
It is further Ordered that the <lexisnexis.name> Registered Name shall be registered as a Defensive Registration in the name of Complainant Reed Elsevier Properties Inc., blocking the challenged name, subject to payment of any applicable registration fees.
David E. Sorkin, Panelist
Dated: April 26, 2006
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