Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. star
Claim Number: FA0607000755449
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”), represented by Amy L. Kertgate, of Fulbright & Jaworski, 801 Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is star (“Respondent”), Yeongdeungpo-gu, Yeongdeungpo-dong, Seoul 150030 KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nexisnexis.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2006. The Complaint was submitted in both Korean and English.
On July 20, 2006, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <nexisnexis.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority, Inc. d/b/a Domainca.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.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 August 7, 2006, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 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@nexisnexis.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a provider of computer goods and services for
the legal community.
Complainant has operated this business since at least 1972,
and has used its trademark LEXISNEXIS in connection with this business since at
least 1983.
Complainant holds several registrations for the LEXISNEXIS
trademark with the United States Patent and Trademark Office (“USPTO”),
including Reg. No. 2,670,069 issued December 31, 2002.
Complainant also operates a website in support of its
business at <lexisnexis.com>.
Respondent is not authorized to use Complainant’s LEXISNEXIS
mark, and Respondent is not associated with Complainant in any way.
Respondent registered the <nexisnexis.com> domain name on March 24, 2006.
Respondent’s domain name resolves to a website that displays links for third-party websites that are unrelated to Complainant.
Respondent registered and is using the <nexisnexis.com> domain name to benefit commercially from the good-will associated with Complainant’s LEXISNEXIS mark
Respondent’s <nexisnexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
Respondent does not have any rights or legitimate interests in the <nexisnexis.com> domain name.
Respondent registered and uses the <nexisnexis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established its rights in the LEXISNEXIS trademark through its registrations with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.” See also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002): "Panel decisions have held that registration of a mark is prima facie evidence of validity,…."
Respondent’s <nexisnexis.com> domain name is phonetically similar to Complainant’s LEXISNEXIS mark and thus confusingly similar pursuant to Policy ¶ 4(a)(i). In VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000), a panel found that the pronunciation and spelling between the domain name <venesign.com> and the complainant’s mark, VERISIGN, were so close that confusion could arise in the mind of the consumer. See also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the words “quest” and “crest” to be similar in sound, so that a respondent’s <mapcrest.com> domain name and a complainant’s MAP QUEST mark are confusingly similar).
Moreover, Respondent’s disputed domain name is a
typosquatted version of Complainant’s mark, as it utilizes a common typing
mistake, replacing the “l” in Complainant’s mark with the “n” found in the
second half of the mark. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that
the <neimanmacus.com> domain name was a
simple misspelling of a complainant’s NEIMAN MARCUS mark and a classic example of typosquatting, which was
evidence that the domain name was confusingly similar to the mark); see also Marriott
Int'l, Inc. v. Seocho, FA 149187
(Nat. Arb. Forum Apr. 28, 2003) (finding that a respondent's
<marrriott.com> domain name was confusingly similar to a complainant's
MARRIOTT mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the domain name <nexisnexis.com>. Complainant must first make out a prima facie case in support of its allegations, at which point the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Complainant asserts, and Respondent does not deny, both that Respondent is not authorized to use Complainant’s LEXISNEXIS mark and that Respondent is not associated with Complainant in any way. Moreover, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the <nexisnexis.com> domain name. Accordingly, Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(a)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The undisputed evidence of record indicates that Respondent
is using the challenged domain name to divert Internet users attempting to
locate Complainant’s website to Respondent’s website, which displays links to
unrelated third-party websites, for which Respondent presumably receives a
click-through fee each time one of these sites is visited. In WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003), a panel found that a respondent’s use of a disputed domain name to redirect Internet users to
websites unrelated to a complainant’s mark, websites where that respondent
presumably received a click-through fee for each misdirected Internet user, was
not a bona fide offering of goods or services as contemplated by the
Policy. See also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003):
Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).
It may also be noted that
Respondent’s lack of a bona fide offering of goods or services and a
legitimate noncommercial or fair use is inherent in the typosquatted nature of
the disputed domain name. See Encyclopaedia Britannica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that “fair use” principles do not apply
where domain names are misspellings of a complainant's mark); see also IndyMac
Bank F.S.B. v. Ebeyer, FA
175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked
rights and legitimate interests in a disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access a complainant's <indymac.com> website but mistakenly
misspell that mark by typing the letter ‘x’ instead of the letter ‘c’”.
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
It is uncontested on the record before us that Respondent
registered and is using the <nexisnexis.com> domain name to
benefit commercially from the good-will associated with Complainant’s LEXIS
NEXIS mark by displaying links to various websites unrelated to Complainant,
presumably in order to earn click-through fees. In Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002), a panel found that if a respondent profited from its diversionary use of
a complainant's mark where the challenged domain name resolved to commercial
websites and that respondent failed to contest the complaint, it could be
concluded that that respondent was using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where a domain name there in question was obviously
connected with a complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain).
Additionally, the Panel finds that Respondent’s registration and use of a typosquatted version of Complainant’s mark is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting … is the intentional misspelling of words with [the]
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 Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002):
Redirecting Internet users attempting to reach a respondent’s website
in order to gain a profit off of a complainant is one example of bad faith use
and registration under the Policy.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is hereby Ordered that the <nexisnexis.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 12, 2006
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