WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
(1) Sloan Capital Companies (2) Stuart M. Sloan v. Sloan E-mail
Services
Case No. D 2001-0138
1. The Parties
The Complainants are Sloan Capital Companies, 1301 Fifth Avenue, Seattle, Washington,
98101, USA and Stuart M Sloan, 1301 Fifth Avenue, Seattle, Washington 98101,
USA.
The Respondent is Sloan E-mail Services, 4 Harotem Street, 46915 Rishpon, Israel.
2. The Domain Name and Registrar
The Domain Name is <sloan.com>.
The Registrar is Network Solutions, Inc..
3. Procedural History
The Complaint was received by WIPO by email on January 25, 2001 and in hardcopy
form on January 26, 2001. WIPO has verified that the Complaint satisfies the
formal requirements of the Policy, the Rules and the Supplemental Rules and
that payment was properly made. The Administrative Panel ("the Panel")
is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph
2(a). The Registrar has confirmed that <sloan.com> ("the Domain Name")
was registered through Network Solutions, Inc. and that Sloan E-mail Services
is the current registrant. The Registrar has further confirmed that the Policy
is applicable to the Domain Name.
On February 5, 2001, WIPO notified the Respondent of the Complaint in the usual
manner and informed the Respondent, inter alia, that the last day for sending
its Response to the Complainants and to WIPO was February 24, 2001. The Response
was received by email on February 24, 2001 and in hard copy form on February
28, 2001.
The Panel was properly constituted. The undersigned Panelist submitted a Statement
of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence
of which the date originally scheduled for the issuance of the Panel’s Decision
was March 30, 2001.
However, on reading the papers, the Panel decided to issue a procedural order
pursuant to paragraph 12 of the Rules seeking further information/documentation
from the parties. A copy of the order is annexed to this decision. The Complainants
responded on
March 27, 2001. The Respondent responded to neither the procedural order, nor
the Complainants’ response.
4. Factual Background
The Complainants are well known to the US business community. Sloan Capital
Companies is a Seattle based business, which was founded in 1984. It includes
a family of businesses with "Sloan" names including The Sloan Foundation,
Sloan & Stroum Partnership and The Sloan Family Winery. Stuart Sloan, the
Chairman of Sloan Capital Companies, is well-known in the US both as a businessman
and, more widely, as a philanthropist.
The Domain Name was registered by the Respondent in November, 1998.
In or about June 1999 and in response to an inquiry from the Complainants,
the Respondent sent the Complainants an email in which it indicated it thought
$100,000 would be an adequate price for the name. This was disputed in the Response,
but has been verified by the Complainants’ response to the procedural order
to which, as indicated, the Respondent has not responded. The circumstances
and content of that email exchange are important and will be related in greater
detail below.
This administrative procedure was launched by the Complainants in January 2001.
5. Parties’ Contentions
A. Complainants
The Complainants contend that the Domain Name is identical to the name SLOAN,
a name under which they trade in various forms and in respect of which they
claim common law rights.
They further contend that the Respondent has no rights or legitimate interests
in respect of the Domain Name. They say they are not aware of any legitimate
reason the Respondent could have for registering the Domain Name. They assert
that none of the circumstances set out in paragraph 4(c) of the Policy apply
to the Respondent.
Finally, they contend that the Respondent registered the Domain Name in bad
faith and is using it in bad faith. In support, they assert that (i) the Respondent
registered the Domain Name primarily for the purpose of selling, renting, or
otherwise transferring the Domain Name to the Complainant or one of its competitors;
and, (ii) by registering the Domain Name the Respondent has created a likelihood
of confusion with the Complainants’ name and mark.
They say that the Respondent has filed false information with the Registrar
as to its name and address. They say that in reality the Respondent is a Mr.
Yoshiki Okada, the administrative, technical and billing contact for the Domain
Name. They point to the fact that Mr. Okada is the registrant of a large number
of domain names, not all of them being generic in nature, and that he has also
been on the wrong end of an earlier decision (WIPO Case No. D2000-0492 - <jt.com>)
in which he was held to be a cybersquatter. They also point to Mr. Okada’s price
of $100,000 for the Domain Name.
B. Respondent
The Respondent contends that the Complainants have failed to demonstrate that
SLOAN is a trade mark or service mark of the Complainants. The Respondent points
out that the applicant for registration of the mark SLOAN for wine in class
33 is Sloan Family Winery LLC, which is not one of the Complainants. It observes
that the name is a common surname and that the well-known Alfred P. Sloan Foundation
is not connected to the Complainants. It points to a US court decision, which
it claims is authority for the proposition that "if the mark is the last
name of someone connected with the applicant’s business, there is an assumption
of surname significance. It cites Section 2 of the US Lanham Act, which it claims
provides that "no mark shall be registered on the Principal Register which
is primarily a surname."
The Respondent contends that the allegation that the Respondent is an alias
of Mr. Okada is false. It claims to have operated, under its name, a legitimate
email service to persons with the surname SLOAN. It claims to have done so since
November 1998. It claims to have no domain names other than the Domain Name.
With regard to the previous WIPO decision regarding the domain name, <jt.com>,
the Respondent points out even if Mr. Okada was relevant to this case, the earlier
decision is of no assistance because it was a default decision.
As to the Complainants’ allegation regarding the information filed with the
Registrar, the Respondent says it is false and draws attention to the fact that
the Respondent received the papers in this administrative procedure from WIPO.
The Respondent says that the reason the Complainants can claim to know of no
legitimate reason why the Respondent registered the Domain Name is because they
did not contact the Respondent and enquire. It says it has operated a bona fide
business under the Domain Name since November 1998 and has been commonly known
by that name since then.
For all those reasons, the Respondent claims to have registered and to have
used the Domain Name in good faith. As to the allegation in paragraph 8(l) of
the Complaint that "Respondent has advised that he will transfer the Domain
Name to Complainants for a $100,000 payment," the Respondent says "This
allegation is also unsubstantiated and false. The evidence shows only an unverifiable
declaration by a third party with no documentary support."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or
service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the
Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
The name SLOAN is, without doubt, a name under and by which the Complainants
operate by way of trade in the US in one shape or form. The fact that the name
may not be registered or even registrable as a trade mark in the US is not fatal.
The Policy is not restricted to registered rights, nor do those rights necessarily
have to be exclusive.
The points taken by the Respondent as to the identity of the applicant for
registration of the mark SLOAN for wine (not one of the Complainants) and as
to the extent to which the Domain Name can be said to be confusingly similar
to a name so widely used by a variety of other people raise interesting issues.
However, the Panel sees no reason to explore them further having decided to
dismiss the Complaint for another reason.
For the record, had it been necessary for the Panel to make a finding, the
Panel would almost certainly have held that the Domain Name is identical or
confusingly similar to a trade mark or service mark in which the Complainants
have rights.
Rights or legitimate interests of the Respondent
In response to the Complainants’ allegation in this regard, the Respondent
draws attention to its email service, which it says it has operated under its
name and by way of the Domain Name since November 1998. The Response contains
no evidence of any kind to support the bare assertion that the email service
exists. The procedural order sought further particulars of that service from
the Respondent. The Respondent has not responded.
Had it been necessary for the Panel to make a finding, the Panel would have
concluded that no such service existed and that the Respondent has no rights
or legitimate interests in respect of the Domain Name.
Bad Faith
A non-exclusive list of circumstances, which constitute bad faith registration
and use of a domain name, is set out in paragraph 4(b) of the Policy. All those
examples call for the respondent to have been aware of the existence of the
complainant and or its trade mark or service mark at the time of registration
of the domain name in question. Further it is a prerequisite for a bad faith
claim that the respondent’s bad faith intention is directed at the complainant.
Accordingly, to succeed under this head a complainant must prove that the respondent
registered the domain name primarily with a view to selling it at a profit to
the complainant or a competitor of the complainant, or to block the complainant,
or to disrupt the complainant’s business or to damage the complainant’s goodwill
or in some way take unfair advantage of the complainant or the complainant’s
goodwill or trade mark. The mere fact that visitors to a respondent’s site may
be confused or deceived by the domain name is of no significance to a bad faith
claim under the Policy unless the respondent intended it, or, perhaps, should
have known that this would be the inevitable consequence.
The circumstances set out in paragraph 4(b) of the Policy are non-exhaustive.
The examples set out in the immediately preceding paragraph here are non-exhaustive.
Nonetheless, the Panel is of the view that for this Complaint to succeed, the
Complainants must, at the very least, prove that the Respondent had the Complainants
or their business in mind when registering the Domain Name.
For present purposes, the Panel is prepared to hold that the Respondent is
a trader in domain names, which has registered its portfolio of domain names
with a view to selling them for the highest possible price. In so holding, the
Panel is effectively holding that the Respondent and its contact, Mr. Yoshiki
Okada, are to be treated as one and the same.
The Panel is not influenced by the bad faith finding by a previous panel in
relation to <jt.com>, partly because the decision was a default decision
and partly because the fact that the Respondent may have behaved badly in registering
one domain name in his portfolio does not necessarily mean that all his registrations
are similarly tainted. Each domain name needs to be treated on its merits.
If the Complainants’ trade mark or service mark had been in the ‘KODAK’ category,
it would not have been difficult to make assumptions of bad faith in the Complainants’
favour. For the same reason, the same would have been the case if the Domain
Name had pointed directly to the Complainants (e.g. <sloancapitalcompanies.com>
or <stuartmsloan.com>). But that is not this case.
The Panel, not being US-based, was not aware of the Complainants and conducted
a search for SLOAN on the <google.com> search engine. Several ‘Sloans’
emerged, the most prominent being the Alfred P. Sloan Foundation mentioned by
the Respondent, the MIT Sloan School of Management and a Canadian band named
Sloan. In the first 20 citations (the Panel looked no further) there was no
mention of the Complainants.
The fact that there are other Sloans around is not fatal to the Complaint so
long as the evidence shows that it was the Complainants whom the Respondent
had in mind at the time of registration. As indicated above, the Panel was not
aware of the Complainants prior to receiving the papers relating to this Complaint.
Is there any reason why the Respondent and Mr. Okada, both of whom have addresses
in Israel, should be any better informed?
One of the commonest ways of proving the relevant knowledge and intent is to
show that the Respondent offered the Domain Name for sale to the Complainant
at a price well in excess of the Respondent’s out-of-pocket expenses.
Here, the Complaint recites such an offer. Paragraph 8(l) of the Complaint
reads:
"Respondent has advised that he will transfer the domain name to Complainants
for a $100,000 (one hundred thousand dollar) payment. See Exhibit P."
Exhibit P is a declaration of Walter Taucher, a computer consultant to the
Complainants, the only substantive paragraph of which reads:
"In or about June 1999 I received an e-mail message from the owner of
the SLOAN.COM domain name, Yoshiki Okada, in which he demanded $100,000 for
the transfer of the domain name."
Had the Respondent not responded (as in the <jt.com> case) or not denied
the making of the demand, the Panel might well have concluded that the making
of the demand was sufficient indication that the Respondent had the Complainants
in mind for the Domain Name all along. In that event, the Complaint would, in
all likelihood have succeeded.
However, the Respondent responded with a denial and the Panel issued its procedural
order. In response to that order, the Complainants reproduced the following
email exchange dated June 1999:
Tauber (Complainants) to Respondent
Yes, we are trying to acquire sloan.com on behalf of a client. He
wishes to simply have a domain that matches his family name.
He is likely to pay a nominal fee for it and if within reason, cover the
costs of changing your stationery, rerouting your email, and website to
your new domain.
Respondent to Tauber
With due respect, I must say that nobody will be lucky enough to pay a nominal
fee for the domain that matches his family name especially when your name is
one of the popular family names as Sloan nowadays.
Tauber to Respondent
Do you have a value for Sloan.com in mind?
Respondent to Tauber
Yes. US$100,000 will be adequate for the domain.
In the view of the Panel that so-called "demand" is of no help whatever
to the Complainants. The full exchange has not been disclosed, but it is evident
from what has been disclosed that the Respondent did not open the negotiations.
Moreover, the opening e-mail in the exchange quoted above appears to be a response
to a request made by the Respondent of Tauber as to the identity of the prospective
purchaser. Family names/surnames in the <.com> domain do command very
high prices and there is nothing before the Panel to indicate that Mr. Okada
knew that he was dealing with the Complainants.
In light of the foregoing, the Panel finds that the Complainants have failed
to prove that the Domain Name was registered in bad faith and is being used
in bad faith.
The Panel is conscious that, as the Panel has assumed for the purposes of this
decision, the Respondent may in fact be an alias of Mr. Okada, which would mean
that the Respondent has not told the truth in that respect. Further, if the
assumption that the Panel has made (again simply for the purposes of this decision)
in relation to the Respondent’s alleged e-mail service is correct, the Respondent
has also not told the truth over that either. Why, it may be said, would the
Respondent lie unless it was to conceal bad faith? The Panel’s response is that
people lie for a variety of reasons and frequently completely unnecessarily
and out of ignorance. For example, the Respondent might not have realised how
narrowly the Policy defines cybersquatting. In this case, the fatal gap in the
evidence was the absence of anything to show that the Respondent knew or ought
to have known of the Complainants at the relevant time. No amount of lying by
the Respondent in other respects can plug that gap.
7. Decision
The Complaint is dismissed.
