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Generic Top Level Domain Name (gTLD) Decisions |
Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Tosca Wan
Claim
Number: FA0411000363976
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright &
Jaworski L.L.P., 801
Pennsylvania Avenue, N.W., Washington, DC 20004. Respondent is Tosca Wan (“Respondent”), 1 King Street,
Parametta, Sydney, New South Wales 2001, AUSTRALIA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <martindalehubbal.com>, registered with Go
Daddy Software, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
15, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 16, 2004.
On
November 15, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <martindalehubbal.com> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
November 17, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 7, 2004 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@martindalehubbal.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 14, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Honorable Paul A. Dorf (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <martindalehubbal.com>
domain name is confusingly similar to Complainant’s MARTINDALE-HUBBELL mark.
2. Respondent does not have any rights or
legitimate interests in the <martindalehubbal.com> domain name.
3. Respondent registered and used the <martindalehubbal.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
through its operating division of Martindale-Hubbell, is in the business of
providing information and directory services
in the fields of law and business
under the marks MARTINDALE.COM (Reg.
No. 2,796,593, Dec. 23, 2003), MARTINDALE-HUBBELL (Reg. No. 1,542,506, June 6,
1989 and Reg. No. 2,057,030, Apr. 29, 1997) and
MARTINDALE-HUBBELL DISPUTE
RESOLUTION DIRECTORY (Reg. No. 2,724,776, June 10, 2003), which were all
registered with the United States
Patent and Trademark Office (“USPTO”). Complainant has also registered its
MARTINDALE-HUBBELL mark in other jurisdictions, including Europe and
Australia.
Through
Martindale-Hubbell and its predecessors in interest, Complainant has offered
printed information and directory services under
the MARTINDALE mark since as
early as 1868 and under the MARTINDALE-HUBBELL mark since as early as
1931. Complainant asserts that its
USPTO Registration Number 1,542,506 for the MARTINDALE-HUBBELL mark is now
incontestable under U.S. Trademark
Law 15 U.S.C. § 1065.
Complainant
also maintains a sizeable presence on the Internet through its MARTINDALE.COM
related websites, which result in over 15
million hits per month.
Respondent
registered the <martindalehubbal.com> domain name on June 24,
2004. Respondent’s domain name
redirects Internet users to a portal page containing links to websites
providing legal directory and other
legal-related services. Additionally, Respondent’s website offers to
sell the <martindalehubbal.com> domain name registration to the
highest bidder.
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.
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.
Complainant has
established rights in the MARTINDALE-HUBBELL mark though multiple registrations
with the USPTO and continuous use
in commerce since as early as 1931. See Men’s Wearhouse, Inc. v. 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
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.).
Respondent’s <martindalehubbal.com>
domain name is phonetically identical to Complainant’s mark, however
Respondent has purposefully misspelled the name “hubbell” in
Complainant’s MARTINDALE-HUBBELL
mark. Such alteration of Complainant’s
mark is not sufficient to negate a finding of confusing similarity between
Respondent’s domain name
and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr.
7, 2000) (finding that a domain name which is phonetically identical to
Complainant’s mark satisfies
¶ 4(a)(i) of the Policy); 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 Complainant’s
mark, VERISIGN,
are so close that confusion can arise in the mind of the consumer); see also
YAHOO! Inc. v. Murray, D2000-1013
(WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is
confusingly similar to Complainant’s YAHOO mark);
see also Am. Online, Inc.
v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word
“quest” and “crest” to be similar in sound and, thus,
that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST
mark are confusingly similar).
Additionally,
the deletion of the hyphen in the MARTINDALE HUBBELL mark and the addition of
the generic top-level domain “.com” are
insufficient to overcome a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact
that a name is identical to a mark"); see also Nat’l Cable
Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark
spelling,
C-SPAN, is confusingly similar to Complainant's mark); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Snow
Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding
that the domain name <termquote.com> is identical to Complainant’s
TERMQUOTE
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See 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); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Policy ¶ 4(c)(ii) does not apply); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question).
Additionally,
Respondent is not using the disputed domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent is using a domain name
confusingly similar to Complainant’s mark to direct Internet users to a website
containing links
to legal directory services that compete with Complainant’s
business. See Pioneer Hi-Bred Int’l
Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that
Respondent did not have rights or legitimate interests in a domain name that
used Complainant’s mark and redirected Internet users to a website that pays
domain name registrants for referring those users to
its search engine and
pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406
(Nat. Arb. Forum Apr. 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
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Clear Channel Communications, Inc.
v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that
Respondent, as a competitor of Complainant, had no rights or legitimate
interests
in a domain name that utilized Complainant’s mark for its competing
website); see also Chip Merch.,
Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the
disputed domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
Furthermore,
Respondent’s <martindalehubbal.com> domain name resolves to a
website that offers to sell the domain name registration to the highest
bidder. Such use of the domain name is
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum April 8, 2003)
(finding evidence that Respondent lacked rights or legitimate interests in the
disputed
domain name after it sent several correspondences offering to sell its
rights in the domain name in exchange for 1,500 shares of
Complainant’s stock
to Complainant); see also Mothers Against Drunk Driving v. Hyun-Jun Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
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).
.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(i) by posting an offer to
sell the domain name registration on the disputed domain name’s resulting
website. See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(“general offers to sell the domain name, even if no certain price is demanded,
are evidence
of bad faith”); see also Diners Club Int’l Ltd.
v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (finding that when the domain name itself notes that it is
“available for lease or sale,”
evidence that the domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact
that
“the sole value of the [<wwwdinersclub.com] domain name is dictated by
its relation to Complainant’s registered DINERS CLUB mark).
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name
confusingly similar to Complainant’s
mark and using it to market competing products and services. The domain name is merely a phonetically
identical misspelling of the MARTINDALE-HUBBELL mark. The fact that the domain name resolves to a site that offers
links to legal directory services in competition with Complainant is
evidence
that Respondent misspelled Complainant’s mark intentionally in order to siphon
off traffic from unsuspecting Internet users.
See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
By using the disputed
domain name to host links offering services that compete with Complainant’s
business, Respondent has registered
and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) by intentionally attracting, presumably for
commercial gain,
Internet users to its website by creating a likelihood of
confusion with Complainant’s MARTINDALE-HUBBELL mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial
gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website);
see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue
to resolve to a website offering similar services as
Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name, for commercial
gain, to intentionally
attract users to a direct competitor of Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <martindalehubbal.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
December 28, 2004
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