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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Complainant
is Lex Mundi, Ltd, Houston, TX
(“Complainant”) represented by John L.
Welch, of Foley Hoag LLP. Respondent is Chris Truax, La Mesa, CA (“Respondent”).
The
domain name at issue is <lexmundi.com>,
registered with Network Solutions.
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.
David A.
Einhorn appointed as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 6, 2002; the Forum received
a hard copy of the
Complaint on September 13, 2002.
On September
9, 2002, Network Solutions confirmed by e-mail to the Forum that the domain
name <lexmundi.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
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 September
16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”),
setting a deadline of October 7,
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@lexmundi.com by e-mail.
A late
Response was received and determined to be complete on October 8, 2002.
Complainant’s
additional submissions were timely received on October 14, 2002.
On October 25, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David A. Einhorn
as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
[a.]
Complainant
Lex Mundi, Ltd. is the owner of the following registered mark, among others:
LEX MUNDI, Reg. No. 1,610,249, registered
in the United States of America on
August 14, 1990 as a collective membership mark for indicating membership in an
organization providing
the professional exchange of information about the local
and global practice and development of law.
[b.]
Complainant
Lex Mundi, Ltd. is a well-known corporation that has since 1989 used marks
consisting of or containing the term LEX MUNDI,
in connection with offering
membership in an organization providing the professional exchange of
information about the local and
global practice and development of law. Complainant now has 159 member law firms and
more than 14,000 attorneys, in more than 155 countries, states and
provinces. Complainant maintains its
primary website at <lexmundi.org>, where a wealth of information
regarding the organization may be
found. It also owns the following domain
names, all of which are linked to the <lexmundi.org> website:
<lexmundi.biz> <lexmundi.cc>
<lexmundi.info> <lexmundi.bz>
<lexmundi.tv> <lex-mundi.com>
<lexmundi.ws> <lex-mundi.net>
[c.]Complainant has invested substantial
time, expense, and effort in promoting its LEX MUNDI mark by, inter alia, the operation of an
extensive website at <lexmundi.org>, by direct mailings to corporate
counsel and law firms, by participation
in corporate counsel events (such as
the annual meeting of the American Corporate Counsel Association (ACCA)), by
sponsorship of
events at the meetings of the International Bar Association and
the American Bar Association, by the presentation of four legal conferences
per
year on various topics, by way of press releases and other media-directed
public relations efforts, and through use of the LEX
MUNDI trademark by law
firm members on their websites, letterhead, and promotional materials. By virtue of these extensive activities of
Complainant, the mark LEX MUNDI has become a strong and distinctive source
indicator for
Complainant’s services and products.
[d.]
Complainant
also owns common law rights in the trademark and service mark LEX MUNDI based
on its widespread use of the mark to identify
and distinguish the source of its
products and services. Those products and services are described at the LEX
MUNDI website at <lexmundi.org>.
The products include guides to doing
business in numerous jurisdictions, international tax and intellectual property
deskbooks, and
reports on various legal topics prepared by its members. Its
services include comprehensive membership services, hosting of an extensive
website for members and non-members, and the offering of numerous seminars and
meetings on legal topics. Complainant prominently
features its LEX MUNDI mark
on its websites, promotional materials, and products.
[e.]
Complainant’s
use of the foregoing marks in the United States, and indeed worldwide, has been
continuous and extensive. As a result,
the LEX MUNDI trademark, service mark, and collective membership mark has
become a strong indicator of the source of
Complainant’s services and products.
[f.]
Respondent’s
domain name <lexmundi.com> is substantially identical and thus
confusingly similar to Complainant’s registered collective membership mark LEX
MUNDI, its common
law trademark and service mark LEX MUNDI, and its registered
Internet domain names listed above.
[g.]
On
information and belief, Respondent Chris Truax registered the domain name <lexmundi.com>
to divert or frustrate Internet users attempting to access Complainant’s
website, <lexmundi.org>. Users
who type in <lexmundi.com> on their Internet browser receive an
error message because Respondent has not connected <lexmundi.com>
to a website.
[h.]
The term
“Lex Mundi” (or any iteration thereof) is not used as a mark on Respondent’s
website because no website has been created
by Respondent during the more than
two (2) years since Respondent registered the <lexmundi.com>
domain name.
[i.]
Lex Mundi
is not a name by which Respondent is known or in which he has any trademark or
service mark rights, and Respondent has not
used the name Lex Mundi in
connection with a bona fide offering
of goods or services. Respondent has
operated a website called LexLaw, offering a service somewhat similar to that
of Complainant, at the Internet website
<lexlaw.com>. LexLaw claimed to provide a “coordinated
network of legal professionals with members in several countries around the
world”. Because Respondent thus has
essentially been in competition with Complainant, he is undoubtedly aware of
Complainant’s well-known
LEX MUNDI mark.
[j.]
The mere
fact that Respondent registered the domain <lexmundi.com>
is insufficient to convey to him a right to use it.
[k.]
Respondent
Chris Truax is an attorney based in California who has operated a service
called LexLaw, a “coordinated network of legal
professionals with members in
several countries around the world”.
Respondent is also closely associated with Domain Name Clearing Company,
LLC (DNCC), the named respondent in several recent Administrative
Panel
decisions. Respondent Truax has
represented DNCC as its attorney in its domain name disputes.
[l.]
Respondent
has registered and used the domain name in bad faith because he has hindered
customers and members of the LEX MUNDI organization
in their efforts to contact
Lex Mundi and has denied Complainant the opportunity to use the “.com” TLD in
connection with its business.
[m.]
Respondent
has registered and used the domain name in bad faith in view of the fact that
Respondent has disrupted the business of
its competitor, Complainant. LexLaw, Respondent’s business, purports to
offer services that are substantially similar to those of Complainant. Respondent has prevented his competitor, Complainant,
from utilizing its trademark LEX MUNDI in connection with offering a valuable
“.com” web address for its business, thereby preventing hindering and
frustrating customers of Complainant in their attempts to reach
the
Complainant’s website. Therefore, Respondent has registered and used the domain
name <lexmundi.com> in bad faith.
B. Respondent
Respondent's
brief was received one day after the deadline for response. Nevertheless, the following contentions of
Respondent have been considered:
[a.]
The domain
name at issue was originally registered by Chris Truax in 1996.
[b.]
Respondent
did not know of the existence of the LEX MUNDI registration with the Patent and
Trademark Office prior to his registration
of the domain name.
[c.]Respondent
used the name in connection with his own legal practice for a time until he
became aware of the existence of LEX MUNDI.
He then voluntarily ceased using the trade name.
C. Additional Submissions
Complainant's
additional submissions raised the following additional arguments, which were
influential in this Panel's decision:
[a.]
As a
trademark attorney, who, at the same time was in competition with Complainant,
Mr. Truax must have known of the Lex Mundi organization. Mr. Truax would have checked the Trademark
Register before adopting the <lexmundi.com>
domain name.
[b.]
Respondent's
assertion that he registered the <lexmundi.com>
domain name in 1996 is contradicted by WHOIS records for that domain indicating
that it was registered on February 3, 2000.
[c.]Assuming,
arguendo, that Respondent did register the <lexmundi.com> domain name in 1996, it would mean that
Respondent had held the domain name for six years without ever connecting it to
a website. That itself would constitute
bad faith.
Respondent claims that he did not know of the existence of
the LEX MUNDI collective membership mark registration with the U.S. Patent
and
Trademark Office at the time of registration.
However, as both an attorney and a competitor of Complainant, Respondent
knew or should have known of this mark through personal knowledge
or should
have conducted a trademark/service mark search before adopting this domain
name. Further, by his own admission,
Respondent has continued to maintain this domain registration without a website
for several years after
having been informed by Complainant of its LEX MUNDI
registration.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy 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 <lexmundi.com> is
nearly identical to Complainant's mark LEX MUNDI, except for the elimination of
the space between the two words.
Therefore, Complainant has satisfied Policy ¶ 4(a)(i).
Rights or
Legitimate Interests
Respondent
has not established any trademark or service mark rights in the term,
“lexmundi,” nor has Respondent shown that he is known
by that name in
connection with a bona fide offering
of goods or services. Thus, Respondent
has not demonstrated rights or legitimate interests in the term at issue. Complainant has therefore satisfied Policy ¶
4(a)(ii).
Registration and
Use in Bad Faith
As a
competitor and attorney, Respondent knew or should have known of the existence
of the collective mark registration for LEX MUNDI,
either through personal
knowledge or through a search of the records of the U.S. Patent and Trademark
Office. His maintaining of the
registration for several years without ever connecting it to a website is
further indication of his bad faith.
Therefore, Complainant has satisfied Policy ¶ 4(a)(iii).
As all
three elements required by the ICANN Policy paragraph 4(a) have been satisfied,
it is the decision of this Panelist that the
requested relief be GRANTED.
Accordingly,
for all of the foregoing reasons, it is ordered that the domain name <lexmundi.com> be TRANSFERRED
from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 8, 2002
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