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Generic Top Level Domain Name (gTLD) Decisions |
Reed Elsevier
Inc. and Reed Elsevier Properties Inc. v. Company Require c/o Anthony Peppler
Claim
Number: FA0411000360629
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 Company
Require c/o Anthony Peppler (“Respondent”), 2726
Smith Road, Fort Wayne, IN 26804.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <matindale.com>, registered with Polar
Software Limited d/b/a Signdomains.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
2, 2004; the National Arbitration Forum
received a hard copy of the Complaint on
November 3, 2004.
On
November 11, 2004, Polar Software Limited d/b/a Signdomains.com confirmed by
e-mail to the National Arbitration Forum that the
domain name <matindale.com>
is registered with Polar Software Limited d/b/a Signdomains.com and that Respondent
is the current registrant of the name. Polar
Software Limited d/b/a
Signdomains.com has verified that Respondent is bound by the Polar Software
Limited d/b/a Signdomains.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
November 11, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 1, 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@matindale.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 13, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Louis E. Condon 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 <matindale.com>
domain name is confusingly similar to Complainant’s MARTINDALE.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <matindale.com> domain name.
3. Respondent registered and used the <matindale.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
through its Martindale-Hubbel operating division, provides information and
directory services in the fields of law and
business under the marks
MARTINDALE.COM and MARTINDALE-HUBBELL. Complainant Reed Elsevier Properties
Inc. is the owner, and Complainant
Reed Elsevier Inc. is the licensee, of many
worldwide trademark registrations incorporating the MARTINDALE mark, including
U.S. trademark
Reg. Nos. 1,542,506 for MARTINDALE-HUBBELL and 2,796,593 for
MARTINDALE.COM (issued June 6, 1989 and December 23, 2003, respectively).
Complainant,
through Martindale-Hubbel and its predecessors in interest, has used the
MARTINDALE mark in connection with its services
since at least as early as
1868. Complainant has offered online information and directory services in the
legal and business fields
under the MARTINDALE.COM mark continuously since at
least as early as 2001. For over a century, Complainant has spent millions of
dollars promoting and advertising its MARTINDALE mark. As a result, websites
accessible through Complainant’s <martindale.com>
and
<martindale-hubbel.com> domain names receive over 500,000 hits per day.
Respondent
registered the <matindale.com> domain name on May 14, 2004. The
disputed domain name resolves to a portal page which contains links to sites
providing legal
services. The page also contains a number of links to sites
that provide legal directory services that directly compete with Complainant’s
services. Respondent receives advertising revenue from website users that
follow these links. Respondent is not a licensee of Complainant
nor is
Respondent authorized to use Complainant’s marks for any purpose.
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 that it has rights in the MARTINDALE.COM mark through registration
with the United States Patent and Trademark
Office and through continuous use
of the mark in commerce. 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).
The <matindale.com>
domain name is confusingly similar to Complainant’s MARTINDALE.COM registered
trademark because the disputed domain name merely
removes the letter “r” from
Complainant’s mark. The intentional misspelling of a famous mark in a domain name
does not distinguish
the domain name from the mark. Respondent’s
“typosquatting” results in a domain name that is confusingly similar to
Complainant’s
mark. See Dow Jones
& Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth
“w” or the omission of periods or other such generic typos
do not change respondent’s infringement on a core trademark held by
Complainant);
see also 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 Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s
STATE FARM mark); see
also Neiman Marcus Group, Inc. v. Party
Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) (finding the disputed domain name was
a simple misspelling of Complainant’s mark and was
a classic example of
typosquatting, which “renders the
domain name confusingly similar to the altered famous mark”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Further, because
Respondent has failed to submit a Response, Respondent has failed to propose
any set
of circumstances that could substantiate its rights or legitimate
interests in the disputed domain name. See Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which
could demonstrate
any rights or legitimate interests in the domain name); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in
the allegations of Complainant to be deemed
true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name redirects
unsuspecting Internet users to a commercial website that offers products and
services that
are in competition with Complainant’s legal directory services.
Respondent makes opportunistic use of Complainant’s mark in order
to capitalize
on the goodwill and fame associated with the MARTINDALE.COM moniker; thus,
Respondent fails to establish rights in
the domain name. See Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally
and misleadingly diverting users away from Complainant's site to
a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation
of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS
information indicates that the
registrant of the disputed domain name is “Company Require c/o Anthony
Peppler,” and not the confusing
second-level domain that infringes on
Complainant’s MARTINDALE.COM mark. Moreover, Respondent is not authorized or
licensed to use
Complainant’s mark for any purpose. 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 Policy ¶ 4(c)(ii)
does not apply); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat.
Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that Respondent was not “commonly known
by”
the name GIRLS GON WILD or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
makes use of a confusingly similar variation of Complainant’s famous
MARTINDALE.COM mark to ensnare unsuspecting Internet
users. Respondent then
redirects the users to competing websites. Respondent is profiting from the
unauthorized use of Complainant’s
established mark in its domain name through
advertising fees received when users follow the links on its website. Such
infringement
is what the Policy was intended to remedy and is bad faith
registration and use under Policy ¶ 4(b)(iv). See AutoNation Holding Corp.
v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (“The scope of an ICANN
proceeding is extremely narrow: it only targets abusive cybersquatting, nothing
else”); see also Kmart v. Khan, 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)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to
admitting the truth of
complainant’s assertion in this regard”).
Respondent’s removal
of a single letter from Complaiant’s MARTINDALE.COM mark, resulting in a domain
name that is confusingly similar
to the mark, is evidence of bad faith
registration and use of the disputed domain name. Respondent diverts Internet
users who accidentally
mistype Complainant’s mark to Respondent’s competing
website. The Panel finds that Respondent engaged in the practice of
typosquatting,
and therefore finds that Respondent registered and used the
disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of
the
Policy. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently parasitic
and of itself evidence of
bad faith”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that Respondent registered and used the <zonelarm.com> domain
name in bad
faith pursuant to Policy ¶ 4(a)(iii) because the
name was merely a typosquatted version of Complainant's ZONEALARM
mark. "Typosquatting,
itself is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy 4(a)(iii).").
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark and
simply removes a single letter,
suggests that Respondent knew of Complainant’s rights in the MARTINDALE.COM
mark. Additionally, Complainant’s
trademark registration on file at the United
States Patent and Trademark Office gave Respondent constructive notice of
Complainant’s
mark. Thus, the Panel finds that Respondent chose the <matindale.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use
pursuant to Policy ¶
4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or
registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous
mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the
domain names); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy
paragraph 4(b) sets forth certain circumstances, without limitation,
that shall
be evidence of registration and use of a domain name in bad faith); 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 Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <matindale.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 23, 2004
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