Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Mark Kraemer, P.C.
Claim Number: FA0606000738144
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Amy L. Kertgate, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is Mark Kraemer, P.C. (“Respondent”), 8700 Crownhill Blvd. Suite 201, San Antonio, TX 78209.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <legalnexis.com>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2006.
On June 26, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <legalnexis.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the 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 domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 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@legalnexis.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honorable Charles K. McCotter, Jr. (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 <legalnexis.com> domain name is confusingly similar to Complainant’s NEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <legalnexis.com> domain name.
3. Respondent registered and used the <legalnexis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Inc. and Reed Elsevier Properties Inc., is a provider of computer-assisted research services for various professions, including the legal field. Complainant’s operating division, LexisNexis, has continuously used the LEXIS mark since 1972 and the NEXIS mark since 1979 in connection with computer-assisted research for legal-related matters. Complainant has used the combined LEXISNEXIS mark since 1983 to refer to its computer-assisted and online research services. Complainant operates websites at the <lexis.com>, <nexis.com> and <lexisnexis.com> and <legalnexus.com> domain names.
Around the world, Complainant holds numerous trademark registrations for variations of the LEXISNEXIS mark. In the United States, Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): LEXISNEXIS (Reg. No. 2,673,044 issued January 7, 2003; Reg. No. 2,670,069 issued December 31, 2002; Reg. No. 2,670,068 issued December 31, 2002), NEXIS (Reg. No. 2,337,748 issued April 4, 2000; Reg. No. 2,337,747 issued April 4, 2000; Reg. No. 2,367,715 issued July 18, 2000; Reg. No. 1,166,744 issued August 25, 1981) and NEXIS.COM (Reg. No. 2,592,565 issued July 9, 2002).
Respondent registered the <legalnexis.com> domain name on November 20, 2005. The domain name currently resolves to a screen stating that the website is under construction. At one time, Complainant asserts that the <legalnexis.com> domain name resolved to a commercial web directory with sponsored links to various content unrelated to Complainant.
After Complainant sent Respondent a cease-and-desist letter on February 10, 2006, Respondent replied that it planned on using the disputed domain name to operate a website for online documentation services. Upon Complainant’s information and belief, Respondent is a lawyer in private practice in San Antonio, Texas.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. 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 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.”).
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 demonstrated its rights in the NEXIS mark through registration of the mark with the USPTO. See Paisley Park Enterprises v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The <legalnexis.com> domain name is confusingly
similar to Complainant’s NEXIS mark because the disputed domain name contains
the entire mark and simply adds the term “legal.” In Reed Elsevier Inc. & Reed Elsevier Properties Inc. v.
Christodoulou, FA 97321(Nat. Arb. Forum June 26, 2001), the panel found
that the <legallexis.com> and <legallexus.com> domain names were
confusingly similar to Complainant’s LEXIS mark because the term “legal”
describes the type of services Complainant offers under the LEXIS mark. Likewise, Complainant also offers
legal-related services under the NEXIS mark and therefore, the simple addition
of the term “legal” renders the <legalnexis.com> domain name
confusingly similar to Complainant’s NEXIS mark pursuant to Policy ¶
4(a)(i). See Chanel, Inc. v. Cologne
Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the
Domain Names, is identical to a mark in which Complainant has shown prior
rights. The addition of the generic
term, “perfumes” is not a distinguishing feature, and in this case seems to
increase the likelihood of confusion because it is an apt term for
Complainant’s business.”).
The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <legalnexis.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the <legalnexis.com>
name. See Geocities v. Geocities.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); 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.”). However, the Panel will now examine the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Because the WHOIS database lists the registrant of the <legalnexis.com> domain name as “Mark Kraemer, P.C.,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <legalnexis.com> domain name, 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 the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
In addition, Respondent’s <legalnexis.com> domain name currently resolves to a screen stating that the page is under construction. Complainant alleges that at one time the domain name resolved to a commercial web directory with sponsored links to various content unrelated to Complainant. In either case, Respondent has not used or made demonstrable preparations to use the <legalnexis.com> domain name 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). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); 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 the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and 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).
The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.
At one time,
Respondent’s website at the <legalnexis.com> domain name resolved
to a commercial web directory with sponsored links to various content unrelated
to Complainant. The Panel infers that
Respondent earned referral fees for each Internet user it diverted to other
websites. As a result of Respondent
taking advantage of the confusing similarity between the disputed domain name
and Complainant’s NEXIS mark in order to profit from the goodwill associated
with the mark, the Panel finds that Respondent registered and used the <legalnexis.com>
domain name in bad faith according to Policy ¶ 4(b)(iv). See
Associated Newspapers Ltd.
v. Domain Manager, FA 201976 (Nat. Arb.
Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com>
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Furthermore, Respondent’s <legalnexis.com>
domain name currently resolves to a screen stating that Respondent’s webpage is
under construction. Respondent registered
the <legalnexis.com> domain name on November 20, 2005 and has not
made any active use of the disputed domain name since that date. In Phat
Fashions, LLC v. Kruger, FA 9619 (Nat. Arb. Forum Dec. 29, 2000), the panel
stated, “it makes no sense whatever to wait until it actually ‘uses’ the name,
when inevitably, when there is such use, it will create the confusion described
in the Policy.” Therefore, the Panel
concludes that Respondent is passively holding the <legalnexis.com>
domain name, which constitutes bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question).
The Panel also finds that, given Complainant’s federal
trademark registrations for the NEXIS mark in the United States, where
Respondent resides, as well as Respondent’s status as a practicing attorney who
at one time allegedly subscribed to Complainant’s online legal research
assistance services, Respondent had actual or constructive knowledge of
Complainant’s NEXIS mark when registering the <legalnexis.com>
domain name. Therefore, Respondent’s
registration and use of the disputed domain name was in bad faith under Policy
¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark and thus the respondent registered the domain name in bad faith).
The Panel concludes 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 <legalnexis.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 4, 2006
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