Lexixnexus.com, Nexisuk.com

The timeline behind lexixnexus.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Lu Lan Claim Number: FA0912001297147 PARTIES Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara M. Vold, of Fulbright & Jaworski, Washington D.C., USA. Respondent is Lu Lan (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <lexixnexus.com> and <nexisuk.com>, registered with Above, Inc. 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 electronically on December 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2009. On December 2, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexixnexus.com> and <nexisuk.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names. Above, Inc. has verified that Respondent is bound by the Above, Inc. 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 December 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2009 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@lexixnexus.com and postmaster@nexisuk.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On January 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <lexixnexus.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark. Respondent’s <nexisuk.com> domain name is confusingly similar to Complainant’s NEXIS mark. 2. Respondent does not have any rights or legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names. 3. Respondent registered and used the <lexixnexus.com> and <nexisuk.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant offers a wide range of computer software, computer assisted research services, content-driven workflow solutions, and other computer-related services under the LEXISNEXIS and NEXIS marks. Complainant has offered these services since 1972, and has offered software products as early as 1983. The products and services offered by Complainant are promoted or sold in over 100 countries. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its NEXIS (Reg. No. 1,166,744 issued August 25, 1981) and LEXISNEXIS (Reg. No. 2,354,849 issued June 6, 2000) marks. Respondent registered the <lexixnexus.com> and <nexisuk.com> domain names no earlier than October 7, 2009. The disputed domain names resolve to parked websites featuring advertisements and hyperlinks resolving to third-parties unrelated to Complainant. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 registered its NEXIS (Reg. No. 1,166,744 issued August 25, 1981) and LEXISNEXIS (Reg. No. 2,354,849 issued June 6, 2000) marks with the USPTO. While Respondent resides in China, previous panels have found that a complainant is not required to register a trademark in the country a respondent resides in. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Therefore, the Panel finds Complainant’s registration of its NEXIS and LEXISNEXIS mark with the USPTO is sufficient to establish rights in these marks under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant contends Respondent’s <lexixnexus.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark. The disputed domain name contains a common misspelling of Complainant’s mark by replacing the letters “s” with “x” and “i” with “u.” The disputed domain name also contains the addition of a generic top-level domain (“gTLD”). The Panel finds the misspelling of a complainant’s mark and the addition of a gTLD to a mark fail to adequately distinguish the disputed domain name from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <lexixnexus.com> domain name is confusingly similar to Complainant’s LEXISNEXIS mark under Policy ¶ 4(a)(i). Complainant alleges Respondent’s <nexisuk.com> domain name is confusingly similar to Complainant’s NEXIS mark. The disputed domain name contains Complainant’s entire NEXIS mark and simply adds the geographic term “uk” and the gTLD “.com.” Previous panels have found the additions of a geographic term and a gTLD do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel concludes Respondent’s <nexisuk.com> domain name is confusingly similar to Complainant’s NEXIS mark pursuant to Policy ¶ 4(a)(i). The Panel finds Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has alleged that Respondent does not have any rights or legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) after Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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 assertions in this regard.”). Complainant asserts that Respondent has never been authorized to use the LEXISNEXIS or NEXIS marks. Respondent has failed to provide evidence that it is commonly known by the <lexixnexus.com> and <nexisuk.com> domain names. The WHOIS information lists Respondent as “Lu Lan.” Furthermore, the Panel fails to find evidence in the record suggesting that Respondent is commonly known by the <lexixnexus.com> and <nexisuk.com> domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Respondent’s <lexixnexus.com> and <nexisuk.com> domain names resolve to parked websites containing hyperlinks and advertisements resolving to third-parties unrelated to Complainant. Respondent likely receives click-through fees from the contained hyperlinks and advertisements. The Panel finds Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). Finally, the Panel finds that Respondent is engaged in typosquatting because Respondent is taking advantage of a common misspelling of Complainant’s aforementioned marks by diverting Internet users. Therefore, the Panel finds that Respondent’s engagement in typosquatting is further evidence that Respondent lacks rights and legitimate interests in the <lexixnexus.com> and <nexisuk.com> domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent uses the <lexixnexus.com> and <nexisuk.com> domain names to host parked websites that feature hyperlinks and advertisements. The links and advertisements resolve to third-parties unrelated to Complainant. The Panel infers, and the Complainant alleges, that Respondent receives click-through fees. Internet users interested in Complainant’s computer assisted research products and services may become confused as to Complainant’s association with and sponsorship of the disputed domain names and resolving websites. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the confusingly similar disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel finds that Respondent’s aforementioned engagement in typosquatting is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] 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.”). The Panel finds Complainant has satisfied 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 <lexixnexus.com> and <nexisuk.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: January 15, 2010 Click Here to return to the main Domain Decisions Page. 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