DECISION

 

Reed Elsevier Inc. & Reed Elsevier Properties Inc. v Eddie Silex

Claim Number: FA0106000097687

 

PARTIES

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 Eddie Silex, Prattville, AL, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <lexisdigital.com> registered with Network Solutions.

 

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

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, Network Solutions confirmed by e-mail to the Forum that the domain name <lexisdigital.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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@lexisdigital.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant urges the following:

·        Respondent's registration of the <lexisdigital.com> domain name is confusingly similar to Complainant's mark.

·        Respondent has no right or legitimate interest in <lexisdigital.com>.

·        Respondent registered the domain name in bad faith.

 

B. Respondent did not respond to the Complaint.

 

FINDINGS

Complainant is in the business of offering a wide range of computer software, computer assisted research services, and other computer-related services under the marks LEXIS, NEXIS and LEXIS-NEXIS, and/or a family of “LEX” prefix marks (collectively the “LEXIS Marks”).

 

Complainant has offered computer-assisted research services under the mark LEXIS continuously since at least as early as 1972, and has offered software products under the mark LEXIS since at least as early as 1983, and has offered legal database, including private litigation support databases under the LEXIS marks since 1980.

 

Complainant has offered computer assisted and on-line research services under the mark LEXIS-NEXIS since at least as early as 1983, has offered software products under the LEXIS-NEXIS mark since at least as early as 1985, and has offered consulting services under the LEXIS-NEXIS mark since at least as early as 1984.

 

Complainant has offered computer assisted and on-line research services under the mark NEXIS continuously since at least as early as 1979, and has offered software products under the NEXIS mark since at least as early as 1983.

 

Internationally, the United States and other governments have recognized Complainant’s right to exclude others from using the LEXIS Marks for, among other things, law related products and services, by recognizing these marks.

 

Complainant is the owner of the following United States registrations, among others:

 

Trademark

Country

Registration Number

LEXIS.COM

U.S.

2,379,018

LEXIS-NEXIS

U.S.

2,354,849

LEXIS-NEXIS

U.S.

2,337,918

LEXIS-NEXIS

U.S.

2,370,256

LEXIS

U.S.

1,020,214

LEXIS

U.S.

1,516,851

LEXIS

U.S.

1,561,499

LEXIS

U.S.

1,575,762

LEXIS

U.S.

1,636,783

LEXIS

U.S.

1,616,982

LEXIS

U.S.

1,128,529

 

These registrations are valid and subsisting Registration Nos. 1,020,214, 1,128,529, 1,516,851, 1,575,762, 1,616,982 and 1,636,783, are incontestable under U.S. Law 15 U.S.C. § 1065. 

 

Complainant also has developed a formidable presence on the Internet, including its web sites accessible through the addresses <lexis.com>, <lexis.org>, <lexisone.com> and <lexis-nexis.com> (the “LEXIS Domain Names”).  Over 2.3 million persons obtain access to Complainant’s services on-line through the web sites connected with these domain names.

 

For over twenty-five years, Complainant has prominently and extensively used, promoted, and advertised its LEXIS mark and more recently its NEXIS, LEXIS-NEXIS marks and the LEXIS Domain Names. Complainant has spent tens of millions of dollars promoting its services through varied promotional and advertising media.

 

By virtue of Complainant’s extensive marketing of its LEXIS, NEXIS, LEXIS-NEXIS and <lexis.com>, <lexis.org>, <lexisone.com> and <lexis-nexis.com> services, Complainant’s marks and domain names have become recognized by consumers throughout the world as designating Complainant as the source of the products so marked.  Accordingly, the LEXIS Marks and Domain Names are extremely valuable to Complainant.

 

Respondent registered the domain name <lexisdigital.com> on August 8, 2000 long after the LEXIS Marks achieved world-wide consumer recognition.

 

Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s LEXIS Marks for any purpose.

 

Respondent has made no efforts to develop an active site in connection with the <lexisdigital.com> domain name since registering the name on August 8, 2000.

 

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.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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 has established rights in its LEXIS marks by virtue of its federal registration.  The <lexisdigital.com> domain name is confusingly similar to Complainant's registered mark.  Respondent’s domain name combines the mark with the generic word “digital”; use of a generic term does not defeat a claim of confusing similarity.  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY SHOP trademark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has not come forward to demonstrate it has rights or legitimate interests in the disputed domain name.  There is a presumption that a Respondent has no rights or legitimate interests with respect to disputed domain names when that Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

The <lexisdigital.com> domain name resolves to sites that contain the Registrar's default "coming soon" page.  Complainant asserts, and Respondent fails to dispute, that the domain name is not being used in connection with a bona fide offering of goods or services as provided under Policy ¶ 4(c)(i).  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); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

 

Additionally, Complainant claims, and there is no evidence to refute, that Respondent is not commonly known by the <lexisdigital.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Furthermore, Complainant alleges, and Respondent does not dispute, that Respondent is not using the <lexisdigital.com> domain name for a legitimate noncommercial or fair use and that Respondent has the intent to misleadingly divert consumers or to tarnish Complainant’s mark as stated in Policy ¶ 4(c)(iii).  See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of 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 Respondents have not established any rights or legitimate interests in said domain name).

 

In light of the above, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent's registration of domain names that rely on such a well-known mark as Complainant's LEXIS mark and subsequent failure to use the disputed domain names is evidence of bad faith.  See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.

 

Accordingly, it is Ordered that the <lexisdigital.com> domain name be transferred from Respondent to Complainant.

 

 

Judge Harold Kalina (Ret.), Panelist

 

Dated   August 6, 2001

 

 

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