DECISION

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Henry Chan

Claim Number:  FA0306000161468

PARTIES

Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc., Newton, MA, (“Complainant”) represented by J. Paul Williamson of Fulbright & Jaworski LLP.  Respondent is Henry Chan, Nassau, Bahamas (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lexixnexis.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically June 3, 2003; the Forum received a hard copy of the Complaint June 4, 2003.

On June 5, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <lexixnexis.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 2003, 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@ lexixnexis.com by e-mail.

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 July 9, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 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 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. The domain name registered by Respondent, <lexixnexis.com>, is confusingly similar to Complainant’s LEXISNEXIS marks.

2. Respondent has no rights to or legitimate interests in the <lexixnexis.com> domain name.

3. Respondent registered and used the <lexixnexis.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant offers a wide range of computer software, computer assisted research services and other computer-related services under the marks LEXIS, NEXIS, and LEXISNEXIS (collectively the “LEXISNEXIS marks”).  Some 3.2 million people obtain access to Complainant’s services on-line through the <lexis.com>, <lexis.org>, <lexisone.com> and <lexisnexis.com> domain names. 

Complainant holds numerous registrations for the LEXISNEXIS marks on the Principle Register with the United States Patent and Trademark Office.  Specifically, Complainant has established that it holds Reg. No. 1,020,214 for the LEXIS mark, registered on November 12, 2002, and Reg. No. 2,670,069 for the LEXISNEXIS mark registered on December 31, 2002.  

Complainant also has offered computer-assisted research and other computer-related services under the LEXIS mark since 1972; and Complainant has offered computer assisted and on-line research services under the LEXISNEXIS mark since at least as early as 1983.  Complainant has offered legal related and public database searching services under the LEXIS and LEXISNEXIS marks since 1985.

Respondent registered the <lexixnexis.com> domain name November 27, 2002.  As of at least March 12, 2003, when Internet users typed in the disputed domain name, it directed them to a search portal at the <landing.domainsponsor.com> domain name where users were subjected to a series of random pop-up advertisements.  The website located at the <landing.domainsponsor.com> domain name states that it pays 50% of all revenues generated from searches, pop-unders, pop-ups and exit pop-ups.

Respondent’s domain name currently redirects users to a search engine located at the <dp.information.com/?a_id+35&domainname=lexixnexis.com> domain name, which lists a number of specific “popular links” to related websites and subjects users to a number of pop-up advertisements.  The “popular searches” lists “law” as the number one search topic. 

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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 to 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the LEXISNEXIS marks through registration with the United States Patent and Trademark Office and by continuous use in commerce.  See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that Complainant has wide recognition among Internet users with the BROADCASTAMERICA.COM mark as the source of broadcast services).

The domain name registered by Respondent, <lexixnexis.com>, is confusingly similar to Complainant’s LEXISNEXIS marks.  The disputed domain name is a common misspelling of Complainant’s mark.  Respondent merely replaces the first “s” in Complainant’s LEXISNEXIS mark with an “x”.  Thus, the Panel finds that the disputed domain name is not sufficiently distinguishable from Complainant’s LEXISNEXIS marks.  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> confusingly similar with Complainant’s trademark, VICTORIA’S SECRET).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark at issue.  Respondent did not submit a Response.  In such cases, the Panel may accept all reasonable allegations and inferences presented by Complainant as true.  Since Respondent has not submitted a Response, the Respondent presented no evidence indicating that it has any rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent is not commonly known by the <lexixnexis.com> domain name and nothing in the WHOIS contact information for the disputed domain name suggests that Respondent is commonly known by the disputed domain name.  In addition, LEXIS, NEXIS, and LEXISNEXIS are arbitrary terms that have no meaning outside their use as a means to identify Complainant as the source of certain products and services.  Respondent is not licensed or authorized to use Complainant’s marks for any purpose and the Panel finds that Respondent is not commonly known by the disputed domain name.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

In addition, Respondent has not used the <lexixnexis.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or with a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent is using the disputed domain name to attract and redirect Internet users who misspell Complainant’s well-known mark to search engine websites where they are subjected to numerous, random pop-up advertisements.  Thus, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name.  See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Respondent uses Complainant’s marks to attract Internet users who misspell Complainant’s LEXISNEXIS marks and then Respondent redirects them to a search engine that offers services that are similar to those offered at Complainant’s websites.  Respondent’s site also subjects users to pop-up advertisements that are completely unrelated to Complainant.  When Respondent redirects consumers from Complainant’s LEXISNEXIS websites to Respondent’s revenue generating search portal sites, Respondent creates a likelihood of confusion as to the source or sponsorship of Respondent’s websites.  Thus, the Panel finds that Respondent’s registration and use of the disputed domain name is a violation of Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.

Accordingly, it is Ordered that the <lexixnexis.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 23, 2003.

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