Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. 411WEB, Directory
Claim Number: FA0509000567038
Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively “Complainant”), represented by Tara M. Vold of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC, 20004. Respondent is 411WEB, Directory (“Respondent”), 11400 W. Olympic Blvd., 15th Floor, Los Angeles, CA, 90064, US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 22, 2005; the National Arbitration Forum received a hard copy of the Complaint September 23, 2005.
On October 2, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 2005, 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@martinalehubbells.com, postmaster@martindalehuballs.com and postmaster@martindalehubals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com>, are confusingly similar to Complainant’s MARTINDALE-HUBBELL mark.
2. Respondent has no rights to or legitimate interests in the <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com> domain names.
3. Respondent registered and used the <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Inc., provides information and
directory services in the fields of law and business. Complainant has offered print and director services under the
MARTINDALE mark since at least 1868 and under the MARTINDALE-HUBBELL mark since
at least 1931. Since 1990, Complainant
has provided electronic and online directory and information services under its
MARTINDALE-HUBBELL mark.
Complainant, Reed Elsevier Properties Inc., owns trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the MARTINDALE.COM (Reg. No. 2,796,593 issued December 23, 2003),
MARTINDALE-HUBBELL (Reg. No. 2,057,030 issued April 29, 1997) and other marks.
Respondent registered the <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com> domain names August 8, 2005. The disputed domain names resolve to websites that display generic search engines and links to various products and services unrelated to Complainant, as well as a link incorporating a version of Complainant’s MARTINDALE-HUBBELL 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."
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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant established with extrinsic proof in this
proceeding that it holds registrations of the MARTINDALE-HUBBELL mark with the
USPTO. Complainant’s registration of
its mark with a national authority establishes a prima facie case of
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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.”).
The <martinalehubbells.com>,
<martindalehuballs.com> and <martindalehubals.com>
domain names incorporate the dominant features of Complainant’s registered
MARTINDALE-HUBBELL mark and simply alter the spelling so that the domain names
remain phonetically similar to Complainant’s mark. Altering the spelling of Complainant’s mark is insufficient to
differentiate the domain names, and the omission of the hyphen and addition of
the generic top-level domain “.com” are both irrelevant to a determination
under Policy ¶ 4(a)(i). See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks); see also Ritz-Carlton Hotel Co.
v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding
that removing a hyphen in the domain names is not sufficient to differentiate
the domain names from the mark); see also VeriSign, Inc. v. VeneSign
C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and
spelling between the domain name <venesign.com> and the complainant’s
mark, VERISIGN, are so close that confusion can arise in the mind of the
consumer); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark that is contained in its entirety in the disputed domain names. Complainant alleges that Respondent has no such rights. Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain names. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held:
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Thus, having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names and that Respondent is not a licensee of Complainant or otherwise authorized to use any version of Complainant’s MARTINDALE-HUBBELL mark. Based upon Complainant’s assertions and the WHOIS information, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The <martinalehubbells.com>, <martindalehuballs.com>
and <martindalehubals.com> domain names resolve to generic search
engine websites that display links to various products and services. The Panel does not consider such use to be a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use of the domain names under Policy ¶
4(c)(ii). In fact, Respondent
presumably is using the confusingly similar domain names to operate a generic
search engine website for the purpose of earning referral fees. See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using the <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com> domain names to operate a search engine website that displays links to various products and services. The Panel has made an inference that Respondent does so in order to receive referral fees for forwarding Internet users interested in Complainant’s products and services to unrelated third-party websites. Respondent’s use of confusingly similar versions of Complainant’s registered MARTINDALE-HUBBELL mark in the domain names creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s commercial website. The Panel finds that this is sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. 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.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Due to Complainant’s registration of its MARTINDALE-HUBBELL
mark with the USPTO, Respondent had constructive knowledge of Complainant’s
rights in the mark when Respondent registered the confusingly similar domain
names. Respondent’s registration of the
disputed domain names despite constructive knowledge of Complainant’s rights
supports finding of bad faith registration and use under Policy ¶
4(a)(iii). See Digi Int’l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds that Complainant satisfied 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 <martinalehubbells.com>, <martindalehuballs.com> and <martindalehubals.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 11, 2005.
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