Reed Elsevier Inc. and Reed
Elsevier Properties Inc. v. J Golod
Claim Number: FA0612000858826
PARTIES
Complainant is Reed Elsevier Inc. and Reed Elsevier
Properties Inc. (“Complainant”),
represented by Amy L. Kertgate, of Fulbright & Jaworski,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexis-lexis.com>, registered with Go Daddy
Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 1, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 5, 2006.
On December 4, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <lexis-lexis.com> domain name is
registered with Go Daddy Software, Inc.
and that the 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 5, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 26, 2006 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@lexis-lexis.com by
e-mail.
A timely Response was received and determined to be complete on December 26, 2006.
However,
Respondent’s Response was deficient under ICANN Rule 5(a), as the Response was not received in paper
format before the deadline for response.
The Panel, in its discretion, will consider Response. See Shedrick v.
On January 2, 2007, Complainant submitted a timely additional
submission.
On December 30, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant, Reed Elsevier Inc. and Reed Elsevier Properties Inc., makes the following assertions:
1. Respondent’s <lexis-lexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.
2. Respondent does not have any rights or legitimate interests in the <lexis-lexis.com> domain name.
3.
Respondent registered and used the <lexis-lexis.com> domain name in bad faith.
B. Respondent
Respondent, J. Golod, contends that
the domain was registered, in bulk, along with some 1650 other domain names. He was not aware of any specific sites that
were being registered. He did not tell
Google what to display on the site with regards to content or ads. In his Response, he says: “I am happy to let them have it, provided they cover my
costs at this point of about $750”.
C. Additional Submissions
In its additional submission Complainant focuses on bad faith
registration and use, including Respondent’s offer to transfer the domain name
for $750 which Complainant contends is in excess of Respondent’s costs of
registering the domain name.
FINDINGS
Complainant, through one of its
operating divisions, LexisNexis, is in the business of offering a wide range of
computer software, computer assisted legal research services, and other
computer-related services. In connection
with the provision of these services, Complainant has registered numerous marks
with the United States Patent and Trademark Office (“USPTO”), including the LEXISNEXIS
mark (Reg. No. 2,670,069 issued December 31,
2002).
Respondent registered the <lexis-lexis.com> domain name on May 3, 2006.
The domain name resolves to a website that displays articles and
numerous text-based links to a variety of websites.
DISCUSSION
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.
Complainant
has established rights in the LEXISNEXIS mark through registration with the
United States Patent and Trademark Office. Complainant has established rights in the
LEXISNEXIS mark through its valid trademark registration with the USPTO, and
its rights in the mark predate Respondent’s registration of the <lexis-lexis.com> domain name. See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that
the complainant had established rights in the PENTIUM, CENTRINO and INTEL
INSIDE marks by registering the marks with the USPTO).
The <lexis-lexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS
mark because it contains only a slight variation of the mark. The disputed domain name interjects a hyphen
between terms and exchanges the letter “N” for the letter “L.” Panels have found that the neither the
addition of a hyphen nor the exchange of a single letter sufficiently
differentiates domain names from the trademarks contained therein for the
purposes of Policy ¶ 4(a)(i). See Nintendo
of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000)
(finding <game-boy.com> identical and confusingly similar the
complainant’s GAME BOY mark, even though the domain name is a combination of
two descriptive words divided by a hyphen); see also Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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) before the burden shifts to Respondent to show that it does have rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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”).
Respondent is not
commonly known by the disputed domain name for
purposes of Policy ¶ 4(c)(ii), but Respondent is commonly known by
“Jason Golod.” See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16,
2001) (finding that the respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”).
The disputed domain name resolves to a website that displays articles and numerous text-based links to a variety of websites. The use of a domain name that is confusingly similar to a mark held by a third party to display advertisements fails to arise to the standards of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements).
The Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
In
its electronically submitted Response, Respondent offered to transfer the
disputed domain name registration to Complainant in exchange for $750. This amount, without substantiating
documentation of related expenses to support such a contention, is in excess of
any documented out-of pocket expenses related to the disputed domain name. Accordingly, the offer to sell the domain
name is evidence that Respondent registered and used the disputed domain name
primarily for the purpose of selling, renting or otherwise transferring it for
valuable consideration in excess of documented out-of-pocket expenses in bad
faith under 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 Policy ¶ 4(b)(i)); see also Tech. Props., Inc v. Hussain, FA 95411
(Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where the respondent
verbally offered the domain names for sale for $2,000).
Additionally,
due to the confusingly similar nature of the disputed domain name to
Complainant’s mark, there is a likelihood of confusion as to Complainant’s
sponsorship of or affiliation with the resulting website. Accordingly, Respondent’s commercial use of
the confusingly similar domain name evidences bad faith pursuant to Policy ¶
4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexis-lexis.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: January 15, 2007
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