DECISION

Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. domain finders llc

Claim Number:  FA0401000226438

PARTIES

Complainants are Reed Elsevier Inc. and Reed Elsevier Properties Inc. (hereinafter “Complainant”), represented by J. Paul Williamson, of Fulbright & Jaworski L.L.P., 801 Pennsylvania Avenue, N.W., Washington, DC 20004.  Respondent is domain finders llc (“Respondent”), 7665 E. 75th Street, Indianapolis, IN 46256.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lexinexis.com>, registered with Fabulous.Com Pty Ltd.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 12, 2004; the Forum received a hard copy of the Complaint on January 13, 2004.

On January 13, 2004, Fabulous.Com Pty Ltd. confirmed by e-mail to the Forum that the domain name <lexinexis.com> is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 January 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 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@lexinexis.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 February 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <lexinexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark.

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

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

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

FINDINGS

Complainant, through its LEXISNEXIS operating division, offers a range of computer software and computer assisted research services under the LEXISNEXIS mark. Complainant began offering services under the LEXISNEXIS mark as early as 1983, and has obtained numerous registrations for the mark in the United States, such as U.S. Reg. Nos. 2,673,044; 2,670,069; and 2,670,068, all granted registration prior to Respondent’s registration of the disputed domain name. In connection with its services, Complainant operates a website at, inter alia, the <lexisnexis.com> domain name.

Respondent registered the <lexinexis.com> domain name on December 11, 2003, without license or permission to use Complainant’s LEXISNEXIS mark for any purpose. As of the date that Complainant filed the Complaint, Respondent used the disputed domain name to display a directory portal webpage containing links to popular Internet search topics such as gambling, shopping, travel and games. This portal webpage is followed by a “Popular Searches” webpage operated in connection with DomainSponsor.com, which utilizes an “Auto Optimized Domain Revenue Agreement” whereby domain name owners share advertising revenue with DomainSponsor.com.

Although Respondent did not file an official Response to the Complaint, it did submit an “Informal Response” to the Panel which stated, in part, that “the domain name was auto-registered and once made aware of the infringement (by arb-forum first) respondent immediately re-directed the domain to complainants website and proceeded to do everything in his power to transfer over the domain with his company’s sincear [sic] apologies during his 20 response period, to no avail.”

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 highly distinctive LEXISNEXIS mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through continuous use of the mark in commerce since as early as 1983.

Respondent’s <lexinexis.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark, as it only eliminates the letter “s” from the word LEXIS in the mark, and the deletion of one letter is an insignificant change for the purposes of 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 Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it.

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

Rights or Legitimate Interests

In its unofficial correspondence Respondent makes clear that it attempted to do everything in its power to transfer the disputed domain name registration to Complainant. These efforts alone are strong evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights.

However, sufficient evidence that Respondent lacks rights or legitimate interests in the disputed domain name can be gathered from Respondent’s use of the domain name to attract advertising revenue. In using Complainant’s highly distinctive LEXISNEXIS mark to draw Internet users towards websites where Respondent will presumably earn referral fees is not a situation that would vest rights or legitimate interests in the disputed domain name with Respondent. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name.

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

Registration and Use in Bad Faith

The Panel views Respondent’s tacit admission that its domain name registration was infringing on Complainant’s marks and its subsequent effort to transfer its domain name registration to Complainant as evidence that the domain name was registered and used in bad faith. See Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that Respondent’s failure to submit a formal response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies the requirements of  4(a)(iii).

Additionally, Respondent’s registration of a domain name that differs by only one letter from Complainant’s distinctive LEXISNEXIS mark supports the inference that Respondent had actual knowledge of Complainant’s rights in that mark when it registered the disputed domain name. Respondent’s attempt to capitalize on the goodwill that Complainant has built up around its mark to profit from online advertising is evidence that the domain name was registered and used in bad faith. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith; see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) finding bad faith when (1) the domain name contains Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name.

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

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 <lexinexis.com> domain name be TRANSFERRED from Respondent to Complainant, Reed Elsevier Inc.

Sandra Franklin, Panelist

Dated:  March 1, 2004

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