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 Reginaldo J. Cepeda, Mexico City, D.F., Mexico ("Respondent").

The domain name at issue is <lexisconsulting.com>, registered with Network Solutions.

The undersigned, Robert R. Merhige, Jr., 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.

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 22, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <lexisconsulting.com> is registered with Network Solutions and that the 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 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 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@lexisconsulting.com by e-mail.

A timely response was received and determined to be complete on July 12, 2001.

Pursuant to the request of each of the parties to have the dispute decided by a single member Panel, the Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.

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

A. Complainant

Complainant contends that it, through one of its operating divisions, LEXIS-NEXIS, has been in the business of offering 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 databases, including private litigation support databases, under the LEXIS mark since 1980. Complainant further contends that it has offered consulting services under the LEXIS-NEXIS mark since at least as early as 1984. The record also reflects that Reed Elsevier Properties, Inc. is the owner and Reed Elsevier Inc. is the licensee of all rights in and to the trademarks of eleven registrations in the United States, six of which are, in accord with the laws of the United States, 15 U.S.C. § 1065, incontestable. Additionally, Complainant holds four registered marks in the country of Mexico. Of the marks registered in the United States Patent and Trademark Office, three are registered as "LEXIS-NEXIS," one as "LEXIS.COM" and the balance of those registered in both countries are designated as "LEXIS." The registration of each of the marks aforementioned is unrefuted and deemed to be a fact.

Complainant also asserts that by reason of its extensive marketing, its marks and the domain name here in issue have become recognized by consumers throughout the world as designating Complainant as the source of the products so marked.

B. Respondent

Respondent asserts that though Complainant "might be in the business of offering software, computer-assisted research services under the LEXIS marks, it might do so in many but specific areas and not in broadest universality of activities, and therefore it is an obvious bad faith act to mislead this panel." Respondent further asserts that its registering of the domain name in issue was done on behalf of "a group of business multidisciplinary professionals with the purpose of offering through the internet their consultation services, which they currently offer on their private practices."

Respondent further asserts that after registering the domain name in issue, the principals for whom Respondent was working decided because of the economic "scenario in the U.S. and Mexico, to wait for a more certain scenario in order to implement it plans." Respondent further asserts that the LEXIS term as a mark of Complaint is related exclusively to law products -- law related databases.

C. Additional Submissions

Complainant has, pursuant to NAF Supplemental Rule 7(a), submitted an additional written statement and documents. A major portion of Complainant’s submission consists of argument supporting its contention that the domain name in issue is confusingly similar to its own marks. Additionally, Complainant’s submission contains evidence reflecting that the Complainant, Reed Elsevier Properties, Inc., is the owner (directly or by assignment) and the LEXIS-NEXIS division of Reed Elsevier, Inc. is the licensee of all rights in and to the trademarks by assignment, of six additional registrations, among others, in the United States. Complainant’s registration of the aforementioned marks is unrefuted.

For the reasons which follow, I conclude that the domain name in issue should be transferred from Respondent to Complainant.

Despite Respondent’s assertion to the contra, it would appear from the unrefuted evidence that the principal and licensees of the Complainant under its mark, LEXIS and LEXIS-NEXIS, engage in a substantial number of services, unrelated, as Respondent contends, exclusively to law products. The evidence reflects that the Complainant, through its mark LEXIS-NEXIS, offers computer-assisted and online research services including software products and consulting services in a number of practice areas, including accounting, advertising, public relations/marketing, consulting, financial services and communications, among others. The trademark registrations in the Complainant’s family of LEXIS-NEXIS marks reflects business multi-disciplinary offerings in connection with its consultation services. The plain fact of the matter is the Respondent herein had no right to use the domain name in issue.

By Respondent’s own admission, his registration of the domain name in issue was "for the purpose of offering through the internet consultation services . . . on a wide range of areas related with global business." Respondent’s sole reflected basis of claiming appropriate interest in the name in issue stands solely on his self-expressed intent to use the mark as part of a general online consulting service. The undersigned finds that extremely unconvincing, as well as inconsequential.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.

I conclude that the term "lexis-nexis" and "lexisconsulting" are confusingly similar. The addition of the generic term "consulting" to Complainant’s LEXIS mark does not prevent the domain names from being confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the "westfieldshopping.com" domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy 4(a)(i) is satisfied).

Additionally, the disputed domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Respondent is not commonly known by the domain name in question, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See Hartford Fire Insurance Company 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).

Additionally, I conclude that Respondent’s passive holding is not a bona fide offering of goods under 4(c)(i). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name "solgarvitamins.com" where Respondent merely passively held the domain name). In short, I conclude that Respondent has no right or legitimate interest in the domain name in issue.

I find that Respondent has acted in bad faith by passively holding the domain name at issue since its registration. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding passive holding is evidence of bad faith); see also Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enters., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

Finally, at the time of registration, Respondent knew or should have been aware of the Complainant’s famous mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

For the reasons heretofore stated and pursuant to the authority vested in the undersigned, it is DIRECTED that the registration of the domain name "lexisconsulting.com" be forthwith transferred to the Complainant.