DECISION

Reed Elsevier Inc. & Reed Elsevier Properties Inc. v. Amcore & Company for Sale Domains $250 or best offer

Claim Number:  FA0402000236555

PARTIES

Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (hereinafter “Complainant”), represented by Tara M. Vold of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC, 20004. Respondent is Amcore & Company For Sale Domains $250 or best offer (“Respondent”), 166 Sohrevardi Shomali Record Building Second Floor, Tehran, Iran Postal District, U.S.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwlexisnexis.com>, registered with Bulkregister.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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 9, 2004; the Forum received a hard copy of the Complaint on February 10, 2004.

On February 13, 2004, Bulkregister.com confirmed by e-mail to the Forum that the domain name <wwwlexisnexis.com> is 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 February 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 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@wwwlexisnexis.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 March 18, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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. c/o LexisNexis.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwlexisnexis.com> domain name is confusingly similar to Complainant’s LEXIS-NEXIS marks.

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

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

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

FINDINGS

Complainant, through its LexisNexis operating division, has used the LEXIS mark (e.g. U.S. Reg. No. 1,020,214, registered on September 9, 1975) since as early as 1972 in connection with the offering of computer-assisted research services. Complainant has also obtained numerous registrations for the LEXIS-NEXIS mark (e.g. U.S. Reg. Nos. 2,354,849; 2,337,918; and 2,370,256) on the Principal Register of the U.S. Patent and Trademark Office, and has used this mark since as early as 1980 for services such as, inter alia, computer-assisted reseach in the field of legal directories and general business directories. Notably, Complainant operates a website at the <lexisnexis.com> domain name incorporating its LEXIS-NEXIS mark.

Respondent, named “Amcore & Company for Sale Domains $250 or best offer” in the WHOIS contact information for the <wwwlexisnexis.com> domain name, obtained its registration on May 12, 1998 without license or authorization to use Complainant’s LEXIS-NEXIS mark for any purpose. The disputed domain name resolves to a “Top 10 Sites” portal page which is followed by a series of random pop-up advertisements.

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 arbitrary LEXIS-NEXIS mark through continuous use of the mark in commerce since as early as 1980. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Respondent’s <wwwlexisnexis.com> domain name is confusingly similar to Complainant’s LEXIS-NEXIS mark. Except for the elimination of the hyphen in Complainant’s LEXIS-NEXIS mark, Respondent has only affixed the prefix “www” to Complainant’s mark, and this is insufficient to create a domain name that is distinct from Complainant’s mark. See Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

Accordingly, the Panel finds that the <wwwlexisnexis.com> domain name is confusingly similar to Complainant’s LEXIS-NEXIS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent’s placement of the “www” prefix in front of Complainant’s LEXIS-NEXIS mark is a well-known tactic for ensnaring Internet users who misspell a website’s address by failing to type the period between the abbreviation for the world-wide web and the second-level domain name. Such an underhanded tactic is evidence in and of itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using Complainant’s mark to earn profit from pop-up advertisements).

Further evidence that Respondent lacks rights and legitimate interests in the disputed domain name exists in Respondent’s unauthorized use of Complainant’s arbitrary LEXIS-NEXIS mark to generate advertising revenue. Respondent’s use of Complainant’s mark, and the goodwill surrounding that mark, for commercial gain is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwlexisnexis.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s typosquatted version of Complainant’s arbitrary LEXIS-NEXIS mark will create confusion in the minds of Internet users who attempt to access Complainant’s website at the <lexisnexis.com> domain name and end up at Respondent’s website. Such confusion commercially benefits Respondent through its generation of revenue with pop-up advertisements, and is thus evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that the absence of a dot between the “www”and “canadiantire.com” in the <wwwcanadiantire.com> domain name was likely to confuse Internet users and evidences bad faith registration and use of the domain name); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (Finding that the domain names were registered and used in bad faith, “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

Additional evidence of Respondent’s bad faith use and registration of the disputed domain name can be found through Respondent’s method of naming itself “Amcore & Company for Sale Domains $250 or best offer.” As the only party that would be conceivably interested in a domain name that fully incorporates Complainant’s arbitrary LEXIS-NEXIS mark would be Complainant, it appears that Respondent’s ultimate goal in registering the disputed domain name was to sell its domain name registration to Complainant. Rather than contact Complainant with an offer to sell its domain name registration, Respondent offers its registration for sale with its very name, evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp., D2000-0022 (WIPO Mar. 9, 2000) (finding bad faith where Respondent’s WHOIS registration information contained the words, “This is domain name is for sale”).

The Panel thus finds that Respondent registered and used the <wwwlexisnexis.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <wwwlexisnexis.com> domain name be TRANSFERRED from Respondent to Complainant, Reed Elsevier Inc. c/o LexisNexis.

Louis E. Condon, Panelist

Dated:  March 23, 2004

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