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Generic Top Level Domain Name (gTLD) Decisions |
Reed Elsevier Inc. and Reed Elsevier
Properties Inc. v. Jason Palmese
Claim Number: FA0208000118183
PARTIES
Complainant
is Reed Elsevier Inc. and Reed Elsevier
Properties Inc., Newton, MA (“Complainant”) represented by Tara M. Vold, of Howrey Simon Arnold & White LLP. Respondent is Jason
Palmese, Parkland, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lexisusa.com>,
registered with Tucows.
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 August 12, 2002; the Forum received
a hard copy of the
Complaint on August 15, 2002.
On
August 13, 2002, Tucows confirmed by e-mail to the Forum that the domain name <lexisusa.com> is registered with
Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound
by the Tucows 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
August 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
5, 2002 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@lexisusa.com by e-mail.
A
timely Response was received and determined to be complete on September 5, 2002.
Complainant
submitted a timely Additional Submission on September 10, 2002.
On September 18, 2002, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<lexisusa.com> domain name is confusingly
similar to Complainant’s LEXIS marks.
Respondent
has no rights or legitimate interests in the <lexisusa.com> domain name.
Respondent
registered and used the <lexisusa.com>
domain name in bad faith.
B.
Respondent
The response alleges solely that Lexis
International, Inc. is a Florida corporation, which performs legal services for
the fashion
industry.
C.
Additional Submissions
Complainant contends that the existence
of Lexis International as an incorporated entity does not support Respondent’s
claim that
it has a legitimate right and interest in the domain name.
FINDINGS
Complainants are Elsevier, Inc. and Reed Elsevier Properties Inc.
(collectively “Complainant”).
Complainant, through one of its operating
divisions, LexisNexis, 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, LEXIS-NEXIS and LEXISNEXIS
(collectively
the “LEXIS Marks”).
Complainant, through LexisNexis,
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.
Complainant, through LexisNexis, has
offered computer assisted and on-line legal research services under the marks
LEXIS-NEXIS and
LEXISNEXIS since at least as early as 1983, has offered
software products under the marks LEXIS-NEXIS since at least as early as
1985,
and has offered consulting services under the marks LEXIS-NEXIS since at least
as early as 1984. As part of its
consulting services, LexisNexis provides various types of technology management
support, including web page development
and customization.
Reed Elsevier Properties Inc. is the
owner (and Reed Elsevier Inc., through its LexisNexis division, is the licensee
of all rights
in and to the marks) outright or by assignment of the numerous
United States trademark registrations for LEXIS and LEXIS-NEXIS, including
LEXIS.COM. Some of these registrations
are incontestable under U.S. Law 15 U.S.C.
§ 1065. Complainant also
has numerous pending applications for the mark LEXISNEXIS.
Complainant also has developed a
formidable international presence on the Internet, with its web sites
accessible through the addresses
<lexis.com>, <lexisnexis.com> and
<lexis-nexis.com>, among others (the “LEXIS domain names”). Over 2.5 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 and LEXISNEXIS marks and LEXIS domain
names. LEXIS.COM is used as a mark, and
is registered in the U.S. Complainant
has spent tens of millions of dollars internationally promoting its services
through varied promotional and advertising
media.
By virtue of Complainant’s extensive
marketing of its LEXIS, NEXIS, LEXIS-NEXIS and LEXISNEXIS branded products and
services, Complainant’s
LEXIS marks and domain names have become recognized by
consumers throughout the world as designating Complainant as the source of
the
products and services so marked.
Accordingly, the aforementioned marks and domain names are extremely
valuable to Complainant.
Respondent registered the domain name <lexisusa.com>
on September 19, 2001, long after the LEXIS marks achieved worldwide consumer
recognition. Respondent
is not a licensee of Complainant nor is Respondent otherwise authorized to use
Complainant’s marks for any purpose.
Respondent is not commonly
known by the domain name in question.
The <lexisusa.com> domain
name currently resolves to a promotional site for AnythingEmail.com, which
appears to be a domain name ownership and website
development services
provider.
The site makes no use of
the term “lexisusa” or <lexisusa.com> other than the simple
inclusion of the typed term in the upper left-hand corner of the site’s home
page.
Complainant
became aware of Respondent’s registration of the <lexisusa.com>
domain name registration as a result of an ongoing investigation regarding the
registration and use of the domain name <lexisinternational.com>
by Lexis
International, Inc., a purported provider of “on-line legal question analysis
services.” At the time Respondent
registered the <lexisusa.com> domain name, Complainant had made
repeated contacts with Lexis International to inform the company of its prior
rights in the LEXIS
mark and of its objection to the company’s use of
“lexisinternational” as a tradename or domain name. The domain name <lexisinternational.com> is the subject of
a separate ICANN proceeding. See
Reed Elsevier Inc., et al. v. Lexis Int’l,
FA 118182 (Nat. Arb. Forum October 2, 2002).
Respondent was the original
billing contact for the domain name <lexisinternational.com>. Although the address for Respondent listed
in the <lexisinternational.com> domain name registration was different
than that
listed for him in the <lexisusa.com> domain name
registration, the unusual nature of Mr. Palmese’s name and the connotation
similarities of the terms “lexisinternational”
and “lexisusa” strongly suggests
a relationship between the two registrations.
Further, the email address used by Respondent for the <lexisusa.com>
domain name is in the same format as that provided by him for at least one of
the NSI handles he used for Lexis International. Complainant recently learned that Mr. Palmese was removed as the
billing contact for the <lexisinternational.com> domain name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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.
Identical and/or Confusingly Similar
The
domain name registered by Respondent <lexisusa.com> is confusingly
similar to the LEXIS marks and domain names in which Complainant has
rights. Respondent’s <lexisusa.com>
domain name contains a complete and exact reproduction of Complainant’s LEXIS
mark.
Complainant’s
LEXIS mark has been recognized as a famous mark, particularly in the legal
field. See Reed Elsevier Inc. et al. v. Pacific Coast Studios, FA 95747
(Nat. Arb. Forum October 27, 2000) (“It is well settled under UDRP decisions
that incorporation of a famous trademark into
a domain name together with a
generic term satisfies the requirements of ICANN Policy ¶ 4(a)(i)”); see
also Reed Elsevier Inc. et al. v.
Andrew Christodoulou, FA 97321 (Nat. Arb. Forum June 26, 2001); see also
Reed Elsevier Inc. et al. v.
Reginaldo Cepeda, FA 97689 (Nat. Arb. Forum July 27, 2001). LEXIS, NEXIS, LEXIS-NEXIS, and LEXISNEXIS
are arbitrary terms, which 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.
Furthermore,
the combination of a geographic prefix or suffix to a famous mark does not
prevent the domain name from being found confusingly
similar. See Net2phone Inc v. Netcall Sagl,
D2000-0666 (WIPO September 26, 2000) (finding as to the domain name <net2phone-europe.com>
that "the combination of a
geographic term with the mark does not prevent
a domain name from being found confusingly similar"); see also Cellular One
Group v. Paul Brien, D2000-28 (WIPO March 10, 2000) (finding that the
registration of <cellularonechina.com> clearly violates Paragraph 4(a)(i)
of the Policy in that CELLULARONE is unique and inherently distinctive coined
word and that respondent had not been known as Cellularone
or
Cellularonechina); see also CMGI,
Inc. v. Reyes, D2000-0572
(WIPO August 8, 2000) (finding that <cmgiasia.com> is confusingly similar
to complainant's CMGI mark); and Wal-Mart Stores, Inc. v. Lars Stork,
D2000-0628 (WIPO August 11, 2000) (finding the domain name
<wal-mart-europe.com> confusingly similar to complainant's mark,
that
persons perusing the website of <wal-mart-europe.com> could easily
conclude that registrant of domain name was associated
with Wal-Mart's
operation in Europe. "Geographical
destinations can be irrelevant to users of the Internet"). Respondent's registration of the domain name
<lexisusa.com> with the addition of the suffixes "usa"
to a registered mark does not add any uniqueness or distinguishing features to
the existing trademark LEXIS.
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
The
fame and recognition associated with Complainant’s established LEXIS marks
creates a presumption that Respondent does not have
any rights or legitimate
interests in the marks pursuant to Policy ¶ 4(c)(ii). 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 Nike, Inc. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who
may show a right or legitimate interest” in a domain name
containing Complainant’s distinct and famous NIKE trademark).
Respondent’s use of the famous LEXIS mark
to provide similar services would not be a bona fide offering of goods or
services pursuant
to Policy ¶ 4(c)(i). See
Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that
Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also Am.
Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept.
6, 2000) (finding that Respondent’s operation of a website offering essentially
the same services as Complainant
was insufficient for a finding of bona fide
offering of goods or services); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that
Respondent does not have a legitimate interest in using the domain names
<caterpillarparts.com>
and <caterpillarspares.com> to suggest a
connection or relationship, which does not exist with Complainant’s mark
Caterpillar).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered and
used the domain name <lexisusa.com> in bad faith with knowledge of
Complainant’s rights in the famous LEXIS marks. See Reed Elsevier Inc. et al. v. Pacific Coast Studios,
supra (when Respondent registered and began using the domain name
<lexistech.com> to promote law-related products and services, Respondent
knew or should have known that use of the domain name in this fashion would
violate Complainant’s trademark rights in LEXIS); see also 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).
Given the widely recognized fame of the LEXIS mark, particularly in the
legal field, Respondent had
constructive, if not actual, knowledge of Complainant’s rights in the LEXIS
marks and domain names well prior to the
registration of the <lexisusa.com>
domain name in 2001.
The LEXIS marks and domain
names are arbitrary and famous marks which have enjoyed worldwide recognition
and valuable good will, and
Respondent has registered a domain name which
incorporates a portion of that mark without any bona fide use of the mark. The domain name is so obviously connected
with Complainant and its services that its use by someone with no connection to
Complainant
suggests opportunistic bad faith.
See Veuve Cliguot Pongardin Maison, Fondée en 1772 v. The Polygenix
Group, D2000-163 (WIPO May 1, 2000); see also Deutchebank AG v.
Giego-Arhro Bruckner, D2000-277 (WIPO May 30, 2000).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
GRANTED.
Accordingly, it is Ordered that the
domain name <lexisusa.com> be
TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 2, 2002
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