DECISION

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Ling Shun Shing

Claim Number:  FA0401000230473

PARTIES

Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (hereinafter “Complainant”), represented by J. Paul Williamson, Tara M. Vold and Katherine M. DuBray of Fulbright & Jaworski LLP, 801 Pennsylvania Ave., NW, Washington, DC 20004. Respondent is Ling Shun Shing (“Respondent”), 138 Yi Xue Yuan Rd., Shanghai, P.R. China 200032.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <martidale.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com (hereinafter “Dotregistrar.Com”).

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 (the "Forum") electronically on January 22, 2004; the Forum received a hard copy of the Complaint on January 22, 2004.

On January 25, 2004, Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <martidale.com> is registered with Dotregistrar.Com and that Respondent is the current registrant of the name. Dotregistrar.Com has verified that Respondent is bound by the 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 January 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@martidale.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 February 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, Reed Elsevier Inc.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <martidale.com> domain name is confusingly similar to Complainant’s MARTINDALE family of marks.

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

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

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

FINDINGS

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 such marks as MARTINDALE, MARTINDALE.COM and MARTINDALE-HUBBELL. The MARTINDALE mark has been used for these services since as early as 1868. Complainant’s MARTINDALE-HUBBELL mark has been used since 1931, and has been used online since as early as 1990. Since as early as 2001, Complainant has used the MARTINDALE.COM mark (U.S. Reg. No. 2,796,593, filed on March 29, 2001 with registration granted on December 23, 2003) to denote its online information and directory services for the legal field, and also owns the <martindale.com> domain name. In addition to its numerous registrations for the MARTINDALE family of marks, Complainant has obtained registration of these marks in many other countries worldwide, including Respondent’s place of domicile, China (e.g. P.R.C. Reg. No. 1,367,361 for the MARTINDALE-HUBBLE mark, registered February 21, 2000).

Respondent registered the <martidale.com> domain name on October 14, 2002, without license or authorization to use the MARTINDALE family of marks. Respondent uses the disputed domain name to redirect Internet users to a general directory website at the <dp.information.com> domain name which hosts specifically tailored hyperlinks for legal topics and includes a list of “top sites related to lawyers.” At least two pop-up advertisements are also generated. The website also generates an additional webpage that again lists “top sites” related to lawyers and the legal profession. The Panel finds that the evidence submitted establishes that this domain name is being used in connection with the Auto Optimized Domain Revenue Agreement sponsored by Domain Sponsor.com, wherein participants receive 50% of all revenues generated by searches and advertisements related to the operation of participating websites.

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 MARTINDALE.COM mark through use of the mark in commerce that predates Respondent’s registration of the disputed domain name as well as through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office. Although Complainant’s registration of the MARTINDALE.COM mark came after Respondent registered the disputed domain name, Complainant’s March 29, 2001 filing date preceded Respondent’s registration, which is sufficient for the purposes of Policy ¶ 4(a)(i).  See 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); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“Complainant’s 2001 filing for the BOOK THONGS mark came before Respondent’s registration of the disputed domain name in 2002. As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).

Respondent’s <martidale.com> domain name is confusingly similar to Complainant’s MARTINDALE.COM mark. But for Respondent’s elimination of the letter “n” from Complainant’s MARTINDALE.COM mark, Respondent’s domain name would be identical to Complainant’s mark, and this minor deletion does not dispell the confusingly similar impression that exists between Complainant’s mark and the domain name. 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 <martidale.com> domain name is confusingly similar to Complainant’s MARTINDALE.COM mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name in an attempt to earn advertising revenue due to those Internet users it is able to attract through its unauthorized use of the MARTINDALE.COM mark. Respondent’s attempt to profit from the goodwill Complainant has built up around its mark does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and cannot be considered to be a legitimate noncommerical or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See 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 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).

As Respondent is apparently using the domain name to earn advertising revenue from those seeking Complainant’s <martindale.com> domain name, and it only appears to be “commonly known by” the name Ling Shun Shing, the Panel finds that Policy ¶ 4(c)(ii) is inapplicable in this dispute. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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 <martidale.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent uses the <martidale.com> domain name to draw Internet users to a search and directory website specifically geared towards legal topics and lawyers, the same general market that Complainant targets at the <martindale.com> domain name. As such, Respondent’s use of a domain name that is confusingly similar to Complainant’s MARTINDALE.COM mark creates a likelihood of confusion in the minds of Internet users as to whether Complainant is somehow affiliated with the disputed domain name. As Respondent’s ultimate goal in using the disputed domain name is to earn advertising revenue through its use of the disputed domain name, its behavior is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

The Panel thus finds that Respondent registered and used the <martidale.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 <martidale.com> domain name be TRANSFERRED from Respondent to Complainant, Reed Elsevier Inc.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 3, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/372.html