Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Reed Elsevier v. Pacific Coast Studios [2000] GENDND 1386 (27 October 2000)

National Arbitration Forum

PARTIES

The Complainant is Reed Elsevier, Inc. and Reed Elsevier Properties Inc. , Newton, MA, USA ("Complainant") represented by Carla Calcagno, Howrey Simon Arnold & White. The Respondent is Pacific Coast Studios, San Francisco, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is lexistech.com registered with Network Solutions.

PANELIST

The Panelist 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 the panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 29, 2000; The Forum received a hard copy of the Complaint on September 29, 2000.

On October 3, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name lexistech.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On October 3, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2000 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@lexistech.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 October 27, 2000, pursuant to Complainant's request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, 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 Uniform 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 the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES' CONTENTIONS

A. Complainant alleges the following:

1) The domain name registered by Respondent, lexistech.com, is identical or confusingly similar to the LEXIS marks in which Reed Elsevier has superior rights. Respondent's domain name contains a complete and exact reproduction of Reed Elsevier's LEXIS mark. Any differences between Reed Elsevier's LEXIS marks and Respondent's lexistech.com domain name is an irrelevant distinction which does not change the confusing similarity between the terms.

2) Respondents registered the domain name lexistech.com on June 18, 1998 long after the LEXIS, NEXIS and LEXIS-NEXIS marks achieved world-wide consumer recognition. LEXIS, NEXIS, and LEXIS-NEXIS are arbitrary terms which have no meaning in the legal field outside their use as a means to identify Reed Elsevier as a source of certain products and services. Respondent is not a licensee of Reed Elsevier nor is Respondent otherwise authorized to use Reed Elsevier's marks for any purpose. In short, there is no legitimate basis for Respondent's registration and/or use of the lexistech.com domain name.

3) In this case, there is no plausible circumstance under which Respondent could legitimately use the domain name lexistech.com. As noted above, the LEXIS, NEXIS and LEXIS-NEXIS marks are arbitrary and famous marks which enjoy world-wide recognition and valuable good will among those in the legal industry.

4) Respondents web site holds Respondents' employees out as experts in the field of practice automation for law firms. As such, Respondent clearly had knowledge or reasonably should have had knowledge of Reed Elsevier's prior use and registration of the LEXIS marks. Upon information and belief, Respondent registered the domain name lexistech.com and operated under the trade name Lexis Technologies in an attempt to falsely gain immediate credibility for its "legal consulting" business and to misleadingly divert consumers to its web site. The strength of Reed Elsevier's LEXIS marks combined with Respondent's complete lack of any interest or rights in the domain names at issue, should lead this Panel to the inevitable conclusion that there is no plausible circumstance under which Respondent could legitimately use the domain name lexistech.com and that, therefore, the domain name was registered by Respondent in bad faith.

B. Respondent

Respondent submitted no response in this matter.

FINDINGS

ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. Here, Respondent has failed to submit a timely response in this matter. As a result, all reasonable inferences asserted in the Complaint will be deemed true.

Reed Elsevier, through one of its operating divisions, LEXIS-NEXIS, is in the business of offering a wide range of computer software, computer assisted research services, and other computer-related services under the marks LEXIS, NEXIS and LEXIS-NEXIS, LEXIS-NEXIS XCHANGE and/or a family of "LEX" prefix marks (collectively the "LEXIS Marks"). Reed Elsevier, through LEXIS-NEXIS, has offered computer-assisted research

services under the mark LEXIS continuously since at least as early as 1972, and has offered software products under the mark LEXIS since at least as early as 1983, and has offered legal database, including private litigation support databases under the LEXIS marks since 1980. Reed Elsevier, through LEXIS NEXIS, has offered computer assisted and on-line research services under the mark LEXIS-NEXIS since at least as early as 1983, has offered software products under the LEXIS-NEXIS mark since at least as early as 1985, and has offered consulting services under the LEXIS-NEXIS mark since at least as early as 1984. Reed Elsevier, through LEXIS NEXIS, has offered computer assisted and on-line research services under the mark NEXIS continuously since at least as early as 1979, and has offered software products under the NEXIS mark since at least as early as 1983. Internationally, the United States and other governments have recognized Reed Elsevier's right to exclude others from using the LEXIS, NEXIS and LEXIS-NEXIS marks for, among other things, law related products and services, by recognizing these marks. Reed Elsevier Properties Inc. is the owner and Reed Elsevier Inc. is the licensee of all rights in and to the trademarks by assignment, of the following United States registrations, among others: Trademark Country Registration Number

LEXIS.COM U.S. 2,379,018

LEXIS-NEXIS U.S. 2,354,849

LEXIS-NEXIS U.S. 2,337,918

LEXIS U.S. 1,020,214

LEXIS U.S. 1,516,851

LEXIS U.S. 1,561,499

LEXIS U.S. 1,575,762

LEXIS U.S. 1,636,783

LEXIS U.S. 1,616,982

LEXIS U.S. 1,128,529

These registrations are valid and subsisting Registration Nos. 1,020,214, 1,128,529, 1,516,851, 1,575,762, 1,616,982 and 1,636,783, are incontestable under U.S. Law 15 U.S.C. § 1065.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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

The domain name lexistech.com incorporates Complainant's famous LEXIS mark.

It is well settled under previous UDRP decisions that incorporation of a famous trademark into a domain name together with a generic term such as ‘tech' satisfies the requirement of ICANN Policy ¶ 4(a)(i). See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade,and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat' and ‘financial' to be confusingly similar to Complainant's marks and likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or

endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered). See also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant's registered mark "llbean" does not circumvent the Complainant's rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).Therefore, this panel finds that the domain name lexistech.com is confusingly similar to Complainant's LEXIS marks.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no legitimate interests in the domain name. In light of Respondents incorporation of Complainant's mark into its domain name, and Respondent's use of the domain name to identify competing law related services and products, this panel concludes that Respondent does not have any rights or legitimate interest in the domain name lexistech.com. Further, Respondent has not offered any evidence contrary to the above assertions. See Woolworths plc. v. David Anderson, D2000-1113 (Oct. 10, 2000) (finding that the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).

Registration and Use in Bad Faith

Respondent has registered and is using a domain name that includes the famous LEXIS mark in order to promote its own legal research and practice management products and services. At the time Respondent registered the domain name in October 1999 and began using the domain name to promote law related products and services, Respondent knew or should have known that use of the domain name lexistech.com in this fashion would violate Complainant's trademark rights in LEXIS. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). Further, Respondent represented, by registering the domain name, that to its knowledge "the registration of the domain name will not infringe upon or otherwise

violate the rights of any third party." ICANN Policy ¶2(b). This panel finds that in light of the pre-existing notoriety of Complainant's mark and Respondent's representations at the time of registration, Respondent registered the domain name in bad faith.

Respondent also used the domain name in bad faith in violation of ICANN Policy ¶ 4(b)(iv). The use of lexistech.com to promote legal research and practice management goods and services is clearly designed to trade off the goodwill of Complainant's LEXIS mark. The evidence indicates that in using the lexistech.com domain name, Respondent discovered that "people were mixing us up with LEXIS." See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant's mark as to the source, sponsorship, or affiliation of that website).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name, lexistech.com, be transferred from the Respondent to the Complainant.

Ralph Yachnin

Justice, NY State Supreme Court ( Ret.)

Dated: October 27, 2000