Elsevier Inc. & Reed Elsevier U.S.
Holdings Inc. v. BoyanStoyanovic IngeHaayer d/b/a Illustrious Catwalk Inc.
Claim Number: FA0508000547892
PARTIES
Complainants
are Elsevier Inc. and Reed Elsevier U.S. Holdings Inc., (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski, L.L.P.
Respondent is BoyanStoyanovic
IngeHaayer d/b/a Illustrious Catwalk Inc., (“Respondent”) Amsterdam, NH,
Netherlands.
The
domain name at issue is <elsevier.us>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 25, 2005; the Forum received a hard copy of the
Complaint on August 26, 2005.
On
August 25, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <elsevier.us>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. 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 the U. S. Department of
Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On
August 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
19, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
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
September 28, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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 makes the following assertions:
1. Respondent’s <elsevier.us> domain name is identical to Complainant’s
ELSEVIER mark.
2. Respondent does not have any rights or
legitimate interests in the <elsevier.us>
domain name.
3. Respondent registered and used the <elsevier.us> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainants,
Elsevier Inc. and Reed Elsevier U.S. Holdings Inc., claim rights in the
ELSEVIER mark. Elsevier Inc. and its
affiliates form a global multi-media publisher of scientific, technical, and
health information products and services, producing more than 20,000 products
and services including books, journals, electronic products and services,
databases, and portals serving the global scientific, technical, and medical
communities. Through or under license
from its affiliates and predecessors-in-interest, Elsevier Inc. has been using
the ELSEVIER mark in commerce since as early as 1960. Elsevier Inc. registered the ELSEVIER mark on May 14, 1963 (Reg.
No. 749,444) with the U.S. Patent and Trademark Office (“USPTO”).
Reed
Elsevier U.S. Holdings is the record owner of all rights in and to the U.S.
ELSEVIER trademark registration as well as registrations in Ireland (Reg. No.
75339), Sweden (Reg. No. 128956), the UK (Reg. No. 947617), Benelux (Reg. No.
85343), and various other international registrations.
Respondent,
BoyanStoyanovic IngeHaayer, registered the <elsevier.us> domain name on April 25, 2002. Respondent is not currently using the
disputed domain name, which resolves to a “coming soon” placeholder page. Respondent has also identified itself in the
disputed domain name’s WHOIS information as “Illustrious Catwalk, Inc.”
Respondent is not a licensee of Complainant nor is
it otherwise authorized to use the ELSEVIER mark for any purpose.
Complainant first contacted Respondent on June 7,
2004, demanding the transfer of the domain name and offering the Respondent
reimbursement of the registration costs.
On July 16, 2004, Respondent responded, stating that it was affiliated
with “Margo Elsevier” and it would transfer the disputed domain name for €
800. Complainant made a counter offer
for $50, and Respondent responded that Margo Elsevier had originally purchased
the domain name for € 550, had incurred costs, and was willing to sell it
because she no longer had interest in “finishing her life objective and making
a family history available as a public record.” Upon Complainant’s request for evidence of the existence of Margo
Elsevier, Respondent increased its offer to sell to € 900 without providing the
requested information.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant’s USPTO and international
registrations evince its rights in the ELSEVIER mark pursuant to Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The <elsevier.us> domain name is identical to Complainant’s
ELSEVIER mark. The only difference is
the addition of the “.us” Top Level Domain (TLD) to the domain name, which does
not significantly distinguish the domain name from the mark. See Tropar Mfg. Co. v. TSB,
FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of
the country-code “.us” fails to add any distinguishing characteristic to the
domain name, the <tropar.us> domain name is identical to the
complainant’s TROPAR mark); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Complainant asserts that Respondent
lacks rights or legitimate interests in the disputed domain name. Specifically, Complainant has implied that
posting “coming soon” does not demonstrate preparations to use the domain
name. Complainant’s submissions elucidate Respondent’s supposed
intention to assist “Margo Elsevier”
create an Internet legacy. However, the
Panel rejects any inference that Respondent is affiliated with anyone named
“Elsevier.” In addition, the Panel,
while commending Complainant for including this information, will not construe
it to constitute a formal response. In
other words, the Panel refuses to accept anecdotal assertions that Respondent
has preparations to use the domain name pursuant to Policy ¶ 4(c)(ii). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion
of ‘plans to sell household goods, supplies and appliances over the Internet’”
was insufficient to be considered proof of a legitimate business plan); see
also Open Sys. Computing AS v.
Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent
did not establish rights and legitimate interests in the domain name where the
respondent mentioned that it had a business plan for the domain name at the
time of registration but did not furnish any evidence in support of this
claim). The Panel finds, that merely posting
“coming soon” since the domain name’s registration in 2002, amounts to passive
holding, which is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(ii) or a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iv). 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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no
rights or legitimate interests where the respondent has advanced no basis on
which the panel could conclude that it has a right or legitimate interest in
the domain names, and no commercial use of the domain names has been established).
Additionally, Respondent’s offer to
sell the disputed domain name to Complainant in excess of out-of-pocket
consideration implies that Respondent does not have rights or legitimate
interests in the domain name. See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see
also Am. Nat’l Red Cross v. Domains,
FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (stating that “Respondent’s lack of
rights and legitimate interests in the domain name is further evidenced by
Respondent’s attempt to sell its domain name registration to Complainant, the
rightful holder of the RED CROSS mark”).
There is nothing in the Record, including
the WHOIS registration information, to suggest that Respondent is commonly
known by the disputed domain name.
Respondent is not the beneficiary of a mark that is identical to the
disputed domain name; therefore, it cannot establish rights or legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(i). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Respondent has not filed a Response. Therefore, the Panel accepts Complainant’s
implication that Respondent’s passive holding of the domain name evidences bad
faith registration pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of
UDRP ¶ 4(a)(iii)); see also Mondich
v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s
failure to develop its website in a two year period raises the inference of
registration in bad faith).
The Panel finds that Respondent’s offer
to sell the domain name registration to Complainant for € 550 to € 900 is in
excess of out-or-pocket consideration and, therefore, constitutes bad faith
pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under UDRP ¶ 4(b)(i)); see also Booz-Allen & Hamilton Inc. v.
Servability Ltd, D2001-0243 (WIPO
Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer,
rejected the complainant’s nominal offer of the domain in lieu of greater
consideration).
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <elsevier.us>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
October 12, 2005
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