DECISION

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Domain Deluxe

Claim Number:  FA0402000234414

PARTIES

Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (collectively, “Complainant”), of Newton, MA represented by J. Paul Williamson, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004.  Respondent is Domain Deluxe (“Respondent”), PO Box 7628, Central Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marindale.com>, registered with The Registry At Info Avenue, LLC d/b/a IA Registry.

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 February 2, 2004; the Forum received a hard copy of the Complaint on February 3, 2004.

On February 6, 2004, The Registry At Info Avenue, LLC d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <marindale.com> is registered with The Registry At Info Avenue, LLC d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry At Info Avenue, LLC d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue, LLC d/b/a IA Registry 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 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 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@marindale.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 12, 2004, 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.

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.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <marindale.com> domain name is confusingly similar to Complainant’s MARTINDALE marks.

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

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

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

FINDINGS

Complainant, through one of its operating divisions, Martindale-Hubbell, is in the business of providing information and directory services in the fields of law and business under the marks MARTINDALE.COM  (Reg. No. 2796593, Dec. 23, 2003), MARTINDALE-HUBBELL (Reg. No. 1542506, June 6, 1989 and Reg. No. 2057030, Apr. 29, 1997) and MARTINDALE-HUBBELL DISPUTE RESOLUTION DIRECTORY (Reg. No. 2724776, June 10, 2003), which were all registered with the United States Patent and Trademark Office (“USPTO”).

Through Martindale-Hubbell and its predecessors in interest, Complainant has offered printed information and directory services under the MARTINDALE mark since as early as 1868 and under the MARTINDALE-HUBBELL mark since as early as 1931.  Complainant asserts that its USPTO registration number 1542506 for the MARTINDALE-HUBBELL mark is now incontestable under U.S. Trademark Law 15 U.S.C. § 1065.

Complainant also maintains a sizeable presence on the Internet through its MARTINDALE.COM related websites, which result in over 15 million hits per month.

As a result of Complainant’s extensive marketing efforts, the MARTINDALE products, marks, and domain names have become recognized by consumers throughout the world as designating Complainant as the source of the products.

Respondent registered the disputed domain name on April 25, 2003.  Respondent uses the domain name to direct users to a general directory portal page and search engine that contains a number of popular online searching categories such as “travel,” “shopping,” “finance,” “entertainment,” etc.  The attached website also lists a number of topics on the left hand side of the site that relate to the legal field including, “California incorporation,” “Attorney in California,” “California injury lawyer,” and “California lawyer.”  Some of these links resolve to websites that offer legal directory services.  The website attached to the disputed domain name also displays at least one pop-up advertisement.

In the past, Respondent has been forced to transfer domain names that infringed upon third-party trademarks. E.g. Groupe Lactalis & BSA v. Domain Deluxe, D2003-0314 (WIPO June 23, 2003); Z-Tel Tech. v. Domain Deluxe, D2001-1427 (WIPO Feb. 20, 2002).

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 MARTINDALE related marks through multiple registrations with the USPTO and continuous use in commerce since as early as 1868. Specifically, the MARTINDALE.COM mark has been used since 2001, prior to the disputed domain name registration. See Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., [1985] USSC 8; 469 U.S. 189, 196 (1985) (“With respect to incontestable marks [15 U.S.C. § 1115(b)] provides that registration is conclusive evidence of the registrant's exclusive right to use the mark,” subject to certain conditions and defenses.); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

Respondent has merely omitted the letter “t” from Complainant’s MARTINDALE.COM mark.  The removal of a letter from a registered mark has consistently been held to be insufficient to distinguish the name from the mark under the Policy; thus, the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

Thus, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel may construe Respondent’s failure to respond to the Complaint as an admission that Respondent lacks rights to and legitimate interests in the name. 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

The record fails to indicate that Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also 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, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent is using the domain name to direct Internet users to a search engine, which displays pop-up advertisements presumably for purposes of earning revenue.  The site also contains links to other services that compete with Complainant’s business. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also 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).

Thus, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain name in bad faith by registering the domain name confusingly similar to Complainant’s mark.  The domain name is merely a common misspelling of the MARTINDALE.COM mark.  The fact that the domain name resolved to a site that offered legal services in competition with Complainant is evidence that Respondent likely intentionally misspelled Complainant’s mark in order to siphon off traffic from unsuspecting Internet users. See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).

By using the disputed domain name to host links that offer services that compete with Complainant’s business, Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attracting, presumably for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MARTINDALE.COM mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <marindale.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 18, 2004

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