Generic Top Level Domain Name (gTLD) Decisions

Complainant is Reed Elsevier Inc. & Reed Elsevier Properties Inc., Newton, MA, USA ("Complainant") represented by Tara M. Vold, of Howrey Simon Arnold & White. Respondent is Andrew Christodoulou, London, United Kingdom ("Respondent").

The domain names at issue are <legallexis.com> and <legallexus.com> registered with Bulkregister.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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 25, 2001; the Forum received a hard copy of the Complaint on May 25, 2001.

On May 29, 2001, Bulkregister.com confirmed by e-mail to the Forum that the domain names <legallexis.com> and <legallexus.com> are registered with Bulkregister.com and that Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.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 May 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2001 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@legallexis.com and postmaster@legallexus.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 June 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody 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.

Complainant requests that the domain names be transferred from Respondent to Complainant.

A. Complainant

The <legallexis.com> and <legallexus.com> domain names are confusingly similar to Complainant’s registered marks.

Respondent has no rights or legitimate interests in the <legallexis.com> and <legallexus.com> domain names.

Respondent registered and used the <legallexis.com> and <legallexus.com> domain names in bad faith.

B. Respondent

No response was received.

Complainant, through one of its operating divisions, LEXIS-NEXIS, is in the business of offering a wide range of computer software, computer assisted legal research services, and other computer-related services under the marks LEXIS, NEXIS and LEXIS-NEXIS. Complainant, through LEXIS-NEXIS, has offered computer-assisted legal 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 in the U.S. and Since 1979 in the U.K.

Complainant, through LEXIS-NEXIS, has offered computer assisted and on-line legal 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 in the U.S. and since at least as early as 1986 in the U.K.

Internationally, the United States and other governments have recognized Complainant’s right to exclude others from using the LEXIS marks for, among other things, law related products and services, by registering these marks.

Complainant is the owner and licensee for all rights in the marks outright or by assignment, of the following United States and United Kingdom trademark registrations, among others:

These registrations are valid and subsisting and U.S. Registration Nos. 1,020,214, 1,128,529, 1,516,851, 1,561,449, 1,575,762, 1,616,982 and 1,636,783, are incontestable under U.S. Law 15 U.S.C. § 1065. LEXIS, NEXIS, and LEXIS-NEXIS are arbitrary terms that have no meaning in the legal field or in the English language outside their use as brands to identify Complainant as a source of certain products and services.

Complainant also has developed a formidable international presence on the Internet, with its web sites accessible through the addresses LEXIS.COM, LEXIS.ORG, LEXIS-NEXIS.CO.UK and LEXIS-NEXIS.COM (the "LEXIS Domain Names"). Over 2.3 million persons worldwide obtain access to Complainant’s services on-line through the web sites connected with these domain names. For over twenty-five years, Complainant has prominently and extensively used, promoted, and advertised its LEXIS mark and more recently its NEXIS, LEXIS-NEXIS marks and LEXIS Domain Names. LEXIS.COM is used as well as a mark, and is registered in the U.K. Complainant has spent millions of dollars internationally promoting its services through varied promotional and advertising media. Complainant has spent over $1.2 million in advertising expenditures in Europe alone.

By virtue of Complainant’s extensive marketing of its LEXIS, NEXIS, LEXIS-NEXIS and LEXIS Domain Names products and services, Complainant’s marks, and its domain names, have become recognized by consumers throughout the world, including in the U.K, as designating Complainant as the source of the products and services so marked.

Respondent, identified by Complainant as a lawyer, registered the <legallexis.com> and <legallexus.com> domain names on February 6, 2000. Respondent is not a licensee of Complainant nor is Respondent otherwise 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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.

The <legallexis.com> domain name combines the LEXIS mark, owned by Complainant, with the generic word "legal" describing the type of services offered by Complainant. The addition of a generic word to Complainant’s mark makes the <legallexis.com> domain name confusingly similar to Complainant’s famous mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

The <legallexus.com> domain name combines a generic word with a misspelling of Complainant’s LEXIS mark. The misspelling of Complainant’s mark regardless of the addition of a generic word makes the <legallexus.com> domain name confusingly similar to Complainant’s mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <legallexis.com> and <legallexus.com> domain names. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. 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").

Respondent’s registration and passive holding of the disputed domain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name); see also Amer. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the disputed domain names, pursuant to Policy ¶ 4(c)(ii). See 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).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the disputed domain names, and that Policy ¶ 4(a)(ii) has been satisfied.

Respondent’s passive holding of the disputed domain names is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

The fact that Respondent is identified as a lawyer establishes that Respondent was on notice of Complainant’s famous LEXIS mark, and further evidences Respondent’s bad faith in registering and passively holding the disputed domain names. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).

Bad faith is further evidenced by the obvious connection the disputed domain names have with Complainant’s enterprise, as it incorporates Complainant’s famous LEXIS mark in its entirety. Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain names, combined with the obvious fame of the Complainant’s LEXIS mark in the legal community, of which Respondent is a member, supports a finding of bad faith. 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 Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <legallexis.com> and <legallexus.com> domain names be transferred from Respondent to Complainant.