National Arbitration Forum

DECISION

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. ECS Composites - ECS - E01 c/o Dennis M. Becklin

Claim Number: FA0606000727967

PARTIES

Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is ECS Composites - ECS - E01 c/o Dennis M. Becklin (“Respondent”), represented by James L. Buchal, 2000 S.W. First Ave., Suite 320, Portland, OR 97201.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com>, registered with Dstr Acquisition Vii, Llc.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2006.

On June 8, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com> domain names are registered with Dstr Acquisition Vii, Llc and that the Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 June 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 5, 2006 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@nexiscase.com, postmaster@nexiscases.com, postmaster@nexis-case.com, postmaster@nexis-cases.com, postmaster@nexuscase.com, postmaster@nexuscases.com, postmaster@nexus-case.com and postmaster@nexus-cases.com by e-mail.

A timely Response was received and determined to be complete on July 3, 2006.

An Additional Submission was received and determined to be complete July 10, 2006.

A timely Response to Complainant’s Additional Submission was received and determined to be complete July 17, 2006.

On July 11, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions :

1. Respondent’s <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com> domain names are confusingly similar to Respondent’s LEXISNEXIS marks and domain names.

2. Respondent does not have any rights or legitimate interests in the <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com> domain names.

3. Respondent registered and used the <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com> domain names in bad faith.

B. Respondent makes the following assertions:

2. Respondent does have rights and legitimate rights in and to the disputed domain names; and

3. Respondent did not register and use the disputed domain names in bad faith.

C. Additional Submissions

In Complainant’s Additional Submission, Complainant withdraws its demand for transfer of the NEXUS domain names (i.e., nexuscase.com, nexuscases.com, nexus-case.com, and nexus.cases.com), subject to future monitoring as to registration and use of said domain names. Accordingly, the Panel shall only address the remaining domain names in dispute (i.e., <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, and <nexis-cases.com>).

FINDINGS AND 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.

Identical and/or Confusingly Similar

Complainant asserts that it has established rights in the NEXIS.COM mark through registration of the mark with the USPTO (Reg. No. 2,592,565 issued July 9, 2002). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

Complainant asserts that Respondent’s <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, and <nexis-cases.com>, domain names are confusingly similar to Complainant’s NEXIS.COM mark, because Respondent’s domain names incorporate the dominant features of Complainant’s mark and add the common terms “case” or “cases,” hyphens, and misspelled variations of the term “nexis.” The Panel finds that such alterations to Complainant’s registered mark do not sufficiently differentiate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See 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 the complainant combined with a generic word or term); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").

Accordingly, the Panel finds the subject domain names to be identical or confusingly similar to Complainant’s marks.

Rights or Legitimate Interests

Complainant has alleged that Respondent does not have rights or legitimate interests in the <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the domain names 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).

Furthermore, Respondent has not made any use of the disputed domain names since registering them on May 21, 2004. Without demonstrable preparations to use the disputed domain names, the Panel determines that this is not 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). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that a respondent made preparations to use the domain name in connection with a bona fide offering of goods or services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondents have not established any rights or legitimate interests in the domain name).

Thus, the Panel finds that Respondent has no rights or legitimate interests in the domain names in dispute.

Registration and Use in Bad Faith

The Panel concludes that Respondent’s registration and use of the disputed domain names was not in bad faith, because Respondent has not violated any of the factors listed in Policy ¶ 4(b). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Vision Ctr. Nw. Inc. v. Individual, FA 96478 (Nat. Arb. Forum Mar. 14, 2001) (“Considering the totality of the circumstances, this Panel finds that Complainant has failed to satisfy its burden of showing that Respondent acted in bad faith in registering and developing the domain name in issue.”).

There is evidence in the record that following initiation of these proceedings, Respondent offered to sell some of the disputed domain names. While Respondent, after receiving the Complaint and prior to filing this Response, offered to sell the domain names containing “nexis” (but not “nexus”) to Complainant, which was rejected, Respondent did so consistently with case law establishing that an offer to sell, communicated by an attorney in the context of settlement negotiations, is not properly considered evidence of “bad faith” within the meaning of 15 U.S.C. § 1125(d)(1)(B)(i)(VI). See, e.g., Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936, 947 (9^th Cir. 2002).

Thus, the Panel finds that the Complainant has failed to establish the essential element of Registration and Use in Bad Faith.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

John J. Upchurch, Panelist

Dated: July 26, 2006