DECISION

Elsevier B.V. v. Domain Deluxe

Claim Number:  FA0402000237520

PARTIES

Complainant is Elsevier B.V. (“Complainant”), represented by J. Paul Williamson of Fulbright & Jaworski LLP, 801 Pennsylvania Ave., NW, Washington, DC 20004.  Respondent is Domain Deluxe (“Respondent”), P.O. Box 7628, Central Hong Kong, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sciencdirect.com>, registered with The Registry At Info Avenue d/b/a IA Registry (hereinafter “IA Registry”).

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 18, 2004; the Forum received a hard copy of the Complaint on February 18, 2004.

On February 19, 2004, IA Registry confirmed by e-mail to the Forum that the domain name <sciencdirect.com> is registered with IA Registry and that Respondent is the current registrant of the name. IA Registry has verified that Respondent is bound by the IA Registry 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 February 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 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@sciencdirect.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 March 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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. Respondent’s <sciencdirect.com> domain name is confusingly similar to Complainant’s SCIENCEDIRECT mark.

2. Respondent does not have any rights or legitimate interests in the <sciencdirect.com> domain name.

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

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

FINDINGS

Complainant, Elsevier B.V., is a global multi-media publisher of scientific, technical and health information products and services. Through its operating division ScienceDirect, Complaint has provided online scientific journals and databases under the SCIENCEDIRECT mark since as early as 1997. Complainant has obtained numerous registrations for the SCIENCEDIRECT mark worldwide, including in the United States (U.S. Reg. No. 2,226,808, registered on February 23, 1999), Japan (e.g. Japanese Reg. No. 4,355,605, registered on January 28, 2000) and in Singapore (e.g. Singapore Reg. No. T96/12137B, registered on January 15, 1999). Complainant also operates a website under the SCIENCEDIRECT mark at the <sciencedirect.com> domain name, which received 1.6 million daily page requests on average in 2003 alone.

Respondent, Domain Deluxe, registered the <sciencdirect.com> domain name on April 25, 2003. Initially, Respondent used the disputed domain name to host a general directory portal webpage which also offered the domain name registration for sale. Respondent currently uses the disputed domain name to host a slightly different directory portal page which contains a series of hyperlinks for searchable categories. The website also generates at least one pop-up advertisement per Internet user, and generates a portal page through the <searchco.com> domain name when an Internet user attempts to close their browser.

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the SCIENCEDIRECT mark through registration of the mark worldwide, as well as through use of the mark in commerce. See 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); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <sciencdirect.com> domain name is confusingly similar to Complainant’s SCIENCEDIRECT mark. The only difference between the domain name and Complainant’s mark is the omission of the letter “e” from the end of the word SCIENCE in Complainant’s mark. Even with this minor omission, the disputed domain name remains confusingly similar to Complainant’s mark in sight, sound and pronounciation. See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); 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).

Accordingly, the Panel finds that the <sciencdirect.com> domain name is confusingly similar to Complainant’s SCIENCEDIRECT mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name to host a portal website that’s principal purpose is to generate revenue via the use of advertisements. As Respondent’s method of attracting Internet users to its website is through the unauthorized use of a slightly altered form of Complainant’s SCIENCEDIRECT mark, such an enterprise qualifies as neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Thus, neither Policy ¶ 4(c)(i) or (iii) bestow rights or legitimate interests in the disputed domain name upon Respondent. 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 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. 25, 2003) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods other websites).

The evidence before the Panel, namely Respondent’s WHOIS contact information and the content at the website associated with the disputed domain name, does not support the inference that Respondent is “commonly known by” the name SCIENCDIRECT, and thus the Panel is compelled to find that Policy¶ 4(c)(ii) does not apply to Respondent. 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 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <sciencdirect.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s domain name differs by only one letter from Complainant’s SCIENCEDIRECT mark and <sciencedirect.com> domain name. Thus, Internet users attempting to reach Complainant’s website who mistype the URL will end up at Respondent’s website, and thus be initially confused as to whether Complainant endorses or supports Respondent’s domain name. As Respondent is capitalizing on this likelihood of confusion with Complainant and its mark for commercial gain (via the use of revenue-generating advertisements) Respondent’s activities evidence bad faith use and registration of the domain name pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to advertisements constituted bad faith use of the domain name).

The Panel thus finds that Respondent registered and used the <sciencdirect.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <sciencdirect.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  March 24, 2004

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