Complainant is Reed Elsevier Inc. & Reed Elsevier Properties Inc., Newton, MA, USA ("Complainant") represented by Tara M. Vold, of Howrey Simon Arnold & White. Respondent is Lorenz Weiler, Emmerke, Germany ("Respondent").

The domain name at issue is <eulexis.com> registered with BulkRegister.com.

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.

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 19, 2001; the Forum received a hard copy of the Complaint on June 20, 2001.

On June 25, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain name <eulexis.com> is registered with BulkRegister.com and that the Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 June 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 2001 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@eulexis.com by e-mail.

A timely response was received and determined to be complete on July 13, 2001. Complainant made a timely additional submission, which was considered by the Panelist.

On July 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired)as Panelist.

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

A. Complainant

1. The domain name in dispute is confusingly similar to Complainant’s trademarks registered, inter alia, in Germany, the United States and the European Union.

2. The LEXIS and the LEXIS-NEXIS marks and the LEXIS domain names of Complainant are world famous, and Complainant has spent millions of dollars promoting its services.

3. Respondent registered the disputed domain name on May 29, 2000, long after the LEXIS marks achieved world-wide consumer recognition.

4. LEXIS, NEXIS and LEXIS-NEXIS are arbitrary terms only with meaning in the legal field only to identify Complainant as a source of certain products and services.

5. There is no legitimate basis for Respondent’s registration and/or use of the disputed domain name.

6. Respondent registered the disputed domain name in bad faith because it was registered by Respondent with full knowledge of Complainant’s rights. Moreover, Respondent is attempting to sell the disputed domain name for valuable consideration in excess of its out-of-pocket costs to Complainant and others.

B. Respondent

1. The disputed domain name may be used other than for legal services, and, if so, there is no confusing similarity.

2. The disputed domain name is based on "lexis" which is a generic term, and it is part of thirty-six (36) federally registered trademark/service classes used by others than Complainant. Thus, there can be no confusing similarity.

3. The business of Respondent is in developing trademarks. Thus, it does not impair electronic commerce, but promotes it against cybersquatters and domain hijackers. Accordingly, it did not register the disputed domain name in bad faith, and the disputed domain name may be offered for sale in good faith to the general public.

C. Additional Submission by Complainant

1. Respondent registered and sought to sell the disputed domain name for profit to Complainant in violation of paragraph 4(b)(i) of the Uniform Domain Name Dispute Resolution Policy (Policy).

2. The so-called "general market situation" and Respondent’s "efforts" do not justify the $15,000 asking price. This is precisely what the Policy is intended to prevent.

3. LEXIS is not a common term but is primarily associated with the services offered by Complainant.

4. This proceeding is governed by the Policy, not the United States Trademark Law.

5. Respondent is not a provider or registrar exempt from liability.

Paragraph 15(a) of the Policy 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.

The Panelist finds that the disputed domain name is confusingly similar to Complainant’s federally and internationally registered marks under paragraph 4(a)(i) of the Policy. The addition of a geographic term, i.e., "eu" to Complainant’s mark does not make the disputed mark not confusingly similar. Indeed, it is determined that a reasonable Internet user unquestionably would assume that there was affiliation with Complainant.

If it is assumed, arguendo, that the term "lexis" is generic, it has acquired a secondary meaning. It has become a famous and distinctive mark. (See, Mead Data Cent., Inc. v. Toyota Motor Sales (2^nd Cir. 1989) 875 F.2d 1026, 1034; compare Avery Dennison Corporation v. Sumpton (9^th Cir. 1999) 189 F.3d 868.)

It is to be noted that Respondent is not using nor does it intend to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use without intent for commercial gain. It has not demonstrated in any way that it has rights or a legitimate interest in the disputed domain name.

Respondent admits that it acquired the disputed domain name for the purpose of selling the name for profit. This is registration and use in bad faith.

Respondent’s argument that the disputed name could be used other than for legal services is not helpful. This is because that while under traditional trademark law the similarity or nonsimilarity of the products may be considered, this is not a factor under the Policy. Indeed, the recently enacted Anticybersquatting Consumer Protection Action (15 U.S.C. Section 1125(d)) protects "distinctive’ and "famous" marks "without regard to the goods or services of the parties." (15 U.S.C. Section 1125(d)(1)(A).)

Based on the above findings, conclusions and determinations, it is decided that the domain name "eulexis.com" registered by Respondent Lorenz Weiler, Emmerke, Germany, shall be, and the same is transferred to Complainant Reed Elsevier, Inc. and Reed Elsevier Properties, Inc., Newton, MA, USA.