Reed Elsevier Inc. and Reed
Elsevier Properties Inc. v. James Doan
Claim Number: FA0611000854315
PARTIES
Complainants are Reed
Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”), represented by Amy
L. Kertgate, of Fulbright & Jaworski L.L.P., 801
Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is James Doan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lawyernexis.com>, <lawyernexus.com>, <attorneynexis.com> and <attorneynexus.com>,
registered with Go Daddy Software, Inc.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 28, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 30, 2006.
On November 29, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <lawyernexis.com>, <lawyernexus.com>, <attorneynexis.com> and <attorneynexus.com>
domain
names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
names. 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 December 6, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 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@lawyernexis.com,
postmaster@lawyernexus.com, postmaster@attorneynexis.com and
postmaster@attorneynexus.com by e-mail.
A timely Response was received and determined to be complete on December 26, 2006.
An Additional Submission from Complainant was received on January 2,
2007 and was considered to be timely and complete pursuant to Supplemental Rule
7.
On January 4, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant offers computer-related services under the marks LEXIS,
NEXIS, and LEXISNEXIS. Complainant has
used the LEXIS mark for computer-assisted research services for the legal field
since 1972, and the NEXIS mark in the business, news, and legal fields since
1979. Complainant’s marks are well known
and are the subject of numerous trademark registrations in the
Complainant asserts that Respondent lacks rights or legitimate
interests in the disputed domain names because Respondent registered the domain
names long after Complainant’s marks had achieved worldwide consumer
recognition, Complainant has not authorized Respondent to use its marks,
Respondent is not commonly known by the disputed domain names, and Respondent
is using the domain names to promote his services within the same general field
as Complainant.
Complainant asserts further that Respondent registered and is using the
disputed domain names in bad faith by attempting to attract Internet users to
his website by creating a likelihood of confusion with Complainant’s
marks. Complainant contends that
Respondent has used the domain names for an unfinished website containing the
phrases “Find a Lawyer” and “Search by Legal Category.” Complainant states that Respondent is a
lawyer in private practice, and “therefore must have chosen the term NEXIS or a
misspelling thereof because of Complainant’s marks rather than by
coincidence.” Compl.
¶ 11.4.
Complainant further alleges that Respondent’s appending the term
“lawyer” or “attorney” to the NEXIS mark further demonstrates Respondent’s bad
faith intention to create and exploit user confusion as to the source of his
offerings.
B. Respondent
Respondent states that he has invested substantial time and money in
developing a website that will provide the public with legal information and
access to a directory of attorneys. He
asserts that he chose to use the word “nexus” to describe this website because
of its meaning as a connection or link, and because domain names using
alternative words such as “connection” and “link” were
unavailable at the time. He says he
registered variations incorporating “nexis” because it is a “common
misspelling” of “nexus.”
C. Additional Submissions
Complainant’s Additional Submission merely restates arguments contained
in the Complainant and responds to material in the Response that Complainant
should have anticipated. The Forum’s
Supplemental Rule 7 sets forth a procedure for the submission of additional
statements and documents, but it does not confer upon parties any right to have
such submissions considered by a panel.
Under Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute
Resolution Policy (the “Rules”), discretion to request additional submissions
rests solely with the Panel, and such submissions should be permitted only in
exceptional circumstances. See, e.g., Aylward v. GNO, Inc.,. FA 751622 (Nat. Arb. Forum Sept. 8, 2006). The Panel finds no such circumstances to be
present here, and therefore disregards Complainant’s Additional Submission in
its entirety.
FINDINGS
The Panel finds that the disputed domain
names are confusingly similar to a trademark or service mark in which
Complainant has rights, that Respondent lacks rights or legitimate interests in
respect of the disputed domain names, and that the disputed domain names were
registered and are being used in bad faith.
DISCUSSION
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.”
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.
Two of the disputed domain names combine
Complainant’s well-known NEXIS mark with “attorney” or “lawyer,” common words
that describe a primary market to which Complainant’s services are
marketed. These domain names clearly are
confusingly similar to Complainant’s mark.
The domain names containing “nexus” rather than “nexis” present an only
slightly closer question. If, as
Respondent contends, “nexis” is indeed a common misspelling of “nexus,” then
the opposite is likely true as well. And
even if “nexus” were not a common misspelling of “nexis,” the two are so close
in spelling, appearance, and pronunciation that it seems quite likely that
Internet users would be confused by their similarity, especially when “nexus”
is paired with words such as “attorney” or “lawyer” that are commonly
associated with Complainant. Cf. Reed Elsevier Inc. v.
Christodoulou, FA 97321 (Nat. Arb. Forum June 26,
2001) (finding <legallexis.com> and <legallexus.com> confusingly
similar to Complainant’s LEXIS mark).
The Panel therefore concludes that all four of the disputed domain names
are confusingly similar to Complainant’s NEXIS mark.
Complainant has made a prima facie
showing that Respondent lacks rights or legitimate interests in the disputed
domain names. The burden of production
thus shifts to Respondent to rebut that showing with concrete evidence that he
has rights to or legitimate interests in the domain names, although the
ultimate burden of proof remains with Complainant. See Deer Valley Resort Co. v. Intermountain Lodging, FA 471005
(Nat. Arb. Forum June 9, 2005); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000).
Respondent claims that he has rights or
legitimate interests under Paragraph 4(c)(i) of the
Policy based upon his intention to use the disputed domain names for a website
that offers legal information and a directory of attorneys. It is not clear to the Panel that such use
would be bona fide; it might well infringe upon Complainant’s marks,
particularly in light of the similarity between the services Respondent intends
to offer and those currently offered by Complainant under its marks. In any event, Respondent’s unsubstantiated
assertions do not suffice to meet his burden of production in this case. The Panel therefore concludes that Respondent
lacks rights or legitimate interests in the disputed domain names.
The third element, in this case as in many
disputes arising under the Policy, presents the most difficult question. The Panel must weigh the credibility of
Respondent’s claimed reason for registering the disputed domain names in light
of other circumstantial evidence of his intentions. Given the close similarity between the domain
names and Complainant’s marks, the nature and current status of Respondent’s
project, and the lack of evidence to substantiate Respondent’s claim, the Panel
concludes that it is more likely than not that Respondent registered and is
using the disputed domain names primarily for reasons related to their
similarity to Complainant’s mark rather than for the reason claimed by
Respondent, and that such registration and use is in bad faith. The Panel therefore need not decide whether
Respondent’s claim, if accepted, would preclude a finding of bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lawyernexis.com>, <lawyernexus.com>, <attorneynexis.com> and <attorneynexus.com>
domain
names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 16, 2007
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