RELX INC. v. Shilpi singh / lexiswebtech.com
Claim Number: FA2209002013194
Complainant is RELX INC. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Shilpi singh / lexiswebtech.com (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexiswebtech.com>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on September 22, 2022; Forum received payment on September 22, 2022.
On September 23, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <lexiswebtech.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lexiswebtech.com. Also on September 28, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant RELX INC. has, for many years, used the trademarks LEXIS and LEXISNEXIS for its renowned database services and related software and applications. Complainant offers publications, as well as certain software and application services under the LEXIS Marks that feature customizable user interfaces to render its services more readily accessible. Complainant asserts rights in the LEXIS mark based upon use in commerce since 1979 and on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,516,851, registered December 13, 1988). Respondent’s <lexiswebtech.com> domain name, registered on June 24, 2021, is confusingly similar to Complainant’s LEXIS mark because it contains the mark in its entirety, merely adding the phrase “web tech” and the “.com” generic top-level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <lexiswebtech.com> domain name. Respondent is not licensed or authorized to use Complainant’s LEXIS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services nor does it make a legitimate noncommercial or fair use of the domain name. Instead, Respondent uses the disputed domain name to redirect internet users seeking Complainant to Respondent’s own competing business of offering publication services, as well as web development and app development services, including custom website building services.
Respondent registered and uses the <lexiswebtech.com> domain name in bad faith. Respondent has attempted to attract internet users to its site for commercial gain by creating confusion as to the source or affiliation with Complainant’s LEXIS mark and Respondent has attempted to benefit from the goodwill associated with the mark. Finally, Respondent failed to respond to Complainant’s cease-and-desist letter and has used a privacy service to register the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its ownership of rights to the trademark LEXIS and the <lexiswebtech.com> domain name is confusingly similar to the mark;
- Respondent does not make a bona fide offering of good or services using the disputed domain name where it offers services that compete with Complainant, it is not commonly known by the disputed domain name, and it is not making a legitimate noncommercial or fair use thereof; and
- Respondent’s use of the disputed domain name to provide services under the LEXIS mark indicate that it registered and uses the domain name for commercial gain by attracting users to its website based on a likelihood of confusion with Complainant’s mark.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the LEXIS mark based upon registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is considered a valid showing of rights in a mark under Policy ¶ 4(a)(i). See H-D Michigan, LLC v. Private Whois Service, FA 1328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”) Complainant has provided copies of USPTO registration certificates for the LEXIS mark and so the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <lexiswebtech.com> domain name is confusingly similar to the LEXIS mark, as it only appends a generic phrase and a gTLD. The addition of generic terms and a gTLD to a mark typically falls short of distinguishing a disputed domain name from an asserted mark incorporated therein per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”) The Panel notes that the disputed domain name incorporates the LEXIS mark in its entirety and as the first element of the second-level domain, merely following it with the generic phrase “web tech” and the “.com” gTLD. These additions do not distinguish the disputed domain name from Complainant’s mark and so the Panel finds that the disputed <lexiswebtech.com> domain name is confusingly similar to the LEXIS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <lexiswebtech.com> domain name because Respondent is not licensed or authorized to use Complainant’s LEXIS mark and is not commonly known by the disputed domain name. Panels routinely consider WHOIS information when determining whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as ‘Bhawana Chandel,’ and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Shilpi singh” and, as Respondent has not participated in these proceedings, there is no evidence that it is known otherwise or that it has received authorization to use the disputed domain name. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Instead, it is asserted that Respondent uses the <lexiswebtech.com> domain name to redirect internet users seeking Complainant to Respondent’s own competing business. Using a disputed domain name to divert internet traffic, especially to a competing site, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant has provided screenshots of the disputed domain name’s resolving site which displays the LEXIS mark and offers the services of web and app development and digital marketing which Complainant asserts are competitive to its own services. The website also contains a link to a third-party site offering adult entertainment of a sexual nature and both the phone number and postal address listed on the site are non-existent or otherwise inaccurate. The Respondent has not filed a response or made any other submission in this case. The Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that, by a preponderance of the evidence, Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor does it make a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <lexiswebtech.com> domain name in bad faith because Respondent has attempted to attract internet users to its site for commercial gain by creating confusion as to the source or affiliation of the site. Such conduct is indicative of bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel notes that the screenshots of Respondent’s site show its use of the LEXIS mark, contain a link to a third-party adult sexual entertainment site, and provide inaccurate or false telephone and postal address information. Complainant asserts that the web and app development offered on Respondent’s website are competitive with its own online informational services, many of which are available through Complainant’s customizable app. Respondent has not participated in this case and so it has offered no alternate explanation for its activities. Based on a preponderance of the evidence before it, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant asserts that Respondent failed to respond to Complainant’s cease-and-desist letter. Failure to respond to a cease-and-desist letter can be indicative of bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant has provided a copy of the letter sent to Respondent, dated July 25, 2022 and states that no reply thereto has been received. On this basis the Panel finds further support for its above conclusion that Respondent has acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s use of a WHOIS privacy service when registering the disputed domain names further demonstrates bad faith. Prior decisions have noted that using a privacy service may demonstrate a bad faith attempt to hide one’s identity and hinder a trademark owner from attempting to assert its rights. See Microsoft Corporation v. Arif Khan, FA 1907105 (Forum Aug. 31, 2020) (“in the context of this case Respondent’s use of a WHOIS privacy service further supports a finding of bad faith under Policy ¶ 4(a)(iii).”) Complainant alleges that Respondent used engaged a service called Domains By Proxy, LLC. Against the backdrop of the use to which the disputed domain name has been put and the other false or inaccurate information appearing on Respondent’s website, the Panel finds that Respondent’s use of a privacy service further demonstrates its bad faith in this case under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexiswebtech.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 31, 2022
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