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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Reed Elsevier (UK) Ltd & Ors v Super Search [2007] DRS 4914 (31 August 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4914.html Cite as: [2007] DRS 4914 |
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Complainant 1: Reed Elsevier (UK) Ltd
Country: GB
Complainant 2: Reed Elsevier, Inc.
Country: USA
Complainant 3: Reed Elsevier Properties, Inc..
Country: USA
Respondent: Super Search
Address: Respondent is a non-trading individual
who elected to opt out of WHOIS
2.1 . Lexisnexus.co.uk (the "Domain Name").
3.1 . Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively). This is a multiple complainant case and the First Complainant (above) is the Lead Complainant. In this decision, the Complainants will be described by the numbers given above.
3.2 . Nominet received the hardcopy Complaint in full, with evidence, on 23 July 2007, validated it and sent it to the Respondent, advising the Respondent he had 15 working days to submit a Response. It was sent by fax and by email to a private email address and to [email protected]. No Response was received on the due date or thereafter. In accordance with paragraph 5(d) of the Procedure, on 15 August 2007, both parties were advised the dispute would be referred to an independent expert on payment of the requisite fee within the specified time period, and Nominet duly received the fee on or about 17 August 2007.
3.3 . Confirming there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as the independent expert in this dispute on 24 August 2007.
4.1 . Service
4.1.1. I need to say something briefly about service. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet ("the Contract"). Clause 14 of the Contract incorporates the Policy and Procedure by reference. By Clause 4.1 Registrants agree to ensure that Nominet has their correct postal address, telephone and fax number and email address. Even if a non trading individual or consumer elects to withhold their details from the public WHOIS database, failure to provide correct details, or keep them current, may be grounds for cancelation or suspension of a domain name, per clause 17.2.
4.1.2. The relevance of this is that §2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet's discretion by any of: first class post, fax or email to the contact details in the Register; by email to postmaster@; or any email addresses shown on any active web pages to which the domain name resolves. Other communications are also by fax, first class post or email, per §2(b).
4.1.3. Nominet served the Complaint on the Respondent on 23 July 2007 by: (a) fax to the fax number in the Register; (b) by email to: (i) the private email address in the Register; and (ii) [email protected]. The fax confirmation sheet shows the fax was transmitted. A delivery failure report was received from the [email protected] address but no such report was received in relation to the private email, which appears to have been delivered.
4.1.4. In any event, the Procedure stipulates that the postmaster and other email addresses will be used for service and the Contract renders the Respondent responsible for any failure to notify Nominet of changes to its details. The Complaint is therefore deemed served on 23 July 2007.
4.2 . Default
4.2.1. Although the Respondent has failed to submit a Response, or make any other submission, the Procedure does not provide for a default decision in favour of the Complainants. The Complainants must still prove their case to the requisite standard, see §15(b) of the Procedure. However, an expert may draw such inferences from a party's default as appropriate.
5.1 . The Complainants are part of a worldwide database services group. It provides global electronic publishing and business information services, in particular, to the legal profession, to whom it supplies legal information and case law and other related services. It has been trading since 1979 under the Lexis mark and, from 1981, under the Lexis-Nexis mark. In or about 2001, the hyphen was dispensed with. From January to May 2007 online revenue exceeded $0.5billion globally, with US $45 million of that in the UK. The Third Complainant owns various Community and UK registered trade marks and the group has the following domain names: lexis-nexis.com (1995), lexisnexis.com (1997), lexis-nexis.co.uk (1997) and lexisnexis.co.uk (2001).
5.2 . The Respondent registered the Domain Name on 25 May 2005, as evidenced by the Register report provided to me by Nominet.
5.3 . On 23 July 2007, the Domain Name resolved to a site purporting to offer legal research products. This is evidenced by the screen shot supplied to me by Nominet.
Complainant
6.1 . The Complainants say they have Rights in names or marks identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration. They request the transfer of the domain name lexisnexus.co.uk to the First and Lead Complainant, Reed Elsevier (UK) Limited.
6.2 . As to Rights:
6.2.1. The Complainants rely on their registered marks. The Third Complainant holds UK and Community word marks of 'LexisNexis,' namely UK trade mark no. 2269066 (filing date 2 May 2001, Classes 9, 16, 35, 38, 41 and 42) and Community trade mark no. 2192276 (filing date 26 April 2001, Classes 9, 16, 35, 38, 41 and 42). These registrations were exhibited at Exhibit C.
6.2.2. The Complainants also rely on their very extensive use of the names and marks in trade.
6.2.2.1. From 1979 to 1994, the Mead Corporation carried on business under the mark Lexis and, from 1981 to 1994, traded under the mark Lexis-Nexis. In 1994, the trade mark assets and goodwill of the Lexis-Nexis business were assigned to the Third Complainant. In 2001, the hyphen was dropped and the business has since been predominantly carried out under the LexisNexis mark.
6.2.2.2. Between 2002-2004, the worldwide turnover of the goods and services under the LexisNexis mark exceeded £1 billion per annum with European turnover between US$400m and US$450m per annum. Total online revenue from January to May 2007 exceeded US$0.5 billion worldwide and US$45m in the UK.
6.2.2.3. The Complainants have a formidable presence on the Internet, including their websites accessible through the various domain names referred to above. During 2004, the number of hits to lexisnexis.com totalled 13.6 million and there were over 4 million hits in the first quarter of 2007. Between October 2002 and July 2003, lexisnexis.co.uk received well over a million hits. The first 50 hits of a Google search for "lexisnexis" show that the first 9 hits are to the Complainants' websites with all other hits referring to the Complainants' business in some way (evidenced by Exhibit B).
6.2.2.4. The Complainants have acquired a vast reputation and goodwill associated with the LexisNexis mark around the world including the UK.
6.3 . As to Abusive Registration, the Complainants say the Domain Name in the hands of the Respondent is Abusive.
6.3.1. The Domain Name is strikingly similar to the Complainants' distinctive LexisNexis mark, differing only by the replacement of the penultimate letter "i" with "u". "Nexus" is an ordinary English word, an obvious variant and as "i" is next to "u" on the Qwerty keyboard, "lexisnexus" is the most obvious misspelling of the Complainants' mark. The Complainants hold the registration for lexisnexus.com as a defensive registration. Lexisnexus is also similar, visually and phonetically, to LexisNexis and the lexisnexis.co.uk domain name. This is a clear case of "typo-squatting" (e.g. see Yahoo! Inc. DRS 1770) whereby a domain name very similar to a distinctive mark has been used. This cannot be a legitimate purpose.
6.3.2. Given the immense reputation of the LexisNexis mark and the striking similarity, the registration is inherently unfair and abusive. In the circumstances, the registration can only have been intended by the Respondent for the purpose of unfairly disrupting the business of the Complainants by diverting traffic from the Complainants' website and causing confusion. This takes unfair advantage of, and is unfairly detrimental to, the Complainants' mark. See Policy 3(a)(i)(C).
6.3.3. The use of the Domain Name is also Abusive. On its website the Respondent incorporates hypertext links with titles such as "Legal research", "Legal cases", "Legal Information", "Court", "Cases" etc. These links direct users to pages of sponsored links to third party legal research related websites or other websites relating to legal services. See Exhibit D. One of the pre-eminent services provided by the Complainants under the LexisNexis mark are legal research database services and the LexisNexis mark is registered in relation to these goods and services. It is no coincidence that the Respondent has chosen both a misspelling of the Complainants name and offers products identical to their core services. This is to direct confused or mistaken users to other websites and is unfairly disrupting the business of the Complainants, see Policy 3(a)(i)(C).
6.3.4. This use will confuse people and businesses into believing the Domain Name and site is registered to, operated or authorised by, or otherwise connected with, the Complainants. See Policy rule 3(a)(ii). Indeed, one of the allegedly sponsored links is to the New Law Journal, published by the Complainants under the LexisNexis mark. This reinforces the confusion. It may be assumed that some of the links are genuinely sponsored and the Respondent is benefiting financially from the confusion.
6.3.5. The Complainants also rely on the Respondent's failure to give proper contact details to Nominet and the opting out of WHOIS despite the fact that it is apparently trading— on the face of its website, whereas opt out is only permitted for non-trading applicants. The registration was suspended by Nominet on 21 June 2007. See Policy 3(a)(iv).
6.3.6. The homepage of the Respondent's website includes links titled "Lexus" and "Nexxus". These are well known brands in the car and hair care products markets, and the links direct users to websites relating to these products—yet further evidence the Respondent is engaged in a pattern of cybersquatting and unlawful behaviour.
6.3.7. A Cease and Desist letter was sent by the Complainants Solicitors to eNom, Inc., the Registrar of lexisnexus.co.uk for forwarding to the Respondent. No response was received. A copy of this letter was at Exhibit E.
Respondent
6.4 . No Response was submitted.
General
7.1 . The DRS is designed as a fast, simple alternative to litigation. Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.
7.2 . Paragraph 2(a) of the Policy requires Complainants to prove 2 elements:
"i.The Complainant has Rights in respect of a name or mark which
is identical or similar to the Domain Name; and
ii. The Domain Name, in the hands of the Respondent, is an Abusive
Registration."
The Complainants bear the onus of proof and must prove both elements on the balance of probabilities. As mentioned above, even where no Response is submitted, the Complainants must meet this burden.
7.3 . Abusive Registration is defined in §1 of the Policy as:
"a domain name which was either: (i) registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or (ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
7.4 . The DRS's jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name. The Policy does not provide for the determination of allegations of trade mark infringement or passing-off proper.
Complainant's Rights
7.5 . Rights under the Policy include rights to registered and unregistered trade marks and names and contractual rights to the same. I find the Complainants have Rights arising from their registered marks and from their extensive use of those marks and names in trade.
7.6 . Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights "is identical or similar to the Domain Name." In determining this, suffixes are to be ignored. Case is irrelevant, as are hyphens and spaces. We are therefore comparing the relevant aspects of the Domain Name, namely "lexisnexus," with the name and mark, "lexisnexis." The only differential is the i and u. I am satisfied the Complainant has Rights in a name and mark similar to the Domain Name.
Abusive Registration
7.7 . The second element the Complainants must prove under §2(a) of the Policy, is the Domain Name is an Abusive Registration, defined in §1 thereof. §3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration. Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not an Abusive Registration.
7.8 . This case falls squarely within the Chivas test, see Chivas Bros Ltd v. D. W. Plenderleith DRS 00658, viz where a Respondent registers a domain name: (1) identical to a name in respect of which a Complainant has Rights; (2) that name is exclusively referable to the Complainant; (3) there is no obvious justification for the Respondent having adopted that name; and (4) the Respondent has come forward with no explanation for having selected the domain name; it will ordinarily be reasonable to infer that the Respondent registered the domain name for a purpose and that that purpose was Abusive.
7.9 . All of these factors are present. Further the name and mark are widely known and enjoy a very extensive reputation. I find it highly improbable the Respondent would not have been aware of the Complainants at the point of registration.
7.10 . If there was any doubt however, the Respondent's mode of use is determinative. The Respondent offers information services in the legal field—the Complainants' core market. The only possible finding, particularly in the face of the Respondent's silence, is that the Respondent is deliberately and blatantly leveraging the Complainants' reputation and goodwill to attract traffic and, no doubt, advertising revenue. This is a paradigm typosquatting. I find both the registration and use clearly take unfair advantage of, and are unfairly detrimental to, the Complainants' Rights.
7.11 . There is no need in these circumstances for me to go on and consider each of the arguments and other factors in turn, but had I done so, I would have found the Complainants had succeeded in making out Policy factor 3(a)(i)(C) unfair disruption, and also likelihood of confusion under Policy 3(a)(i)(ii), or otherwise, given the factors are non-exhaustive.
7.12 . Nothing in the facts suggests the Respondent could benefit from §4a of the Policy. The name and mark are not generic or descriptive and the use is neither fair nor non-commercial. There is no legitimate connection to the name or genuine offering based on the facts available.
8.1 . I find the Complainants have Rights in a name and mark similar to the Domain Name, which is an Abusive Registration in the hands of the Respondent. Accordingly, the Domain Name should be transferred to the First and Lead Complainant, Reed Elsevier (UK) Ltd.
Victoria McEvedy
31 August 2007
