The Complainant is Sallie Mae, Inc. of Reston, Virginia, United States of America, represented by Eric D. Reicin of Reston, Virginia, United States of America.
The Respondent is Chen Huang of Zengdu, Guangzhou,
China.
2. The Domain Name and Registrar
The disputed domain name <salliemaestudentloans.com>
(the “Domain Name”) is registered with iHoldings.com Inc. d/b/a
DotRegistrar.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2004. On October 25, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On October 26, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 29, 2004. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2004.
3.3 The Center appointed Matthew S. Harris as the
sole panelist in this matter on December 17, 2004. The Panel finds that it was
properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure
compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Complainant is a corporation incorporated and existing under the laws of the State of Delaware, and is located in Reston, Virginia. The Complainant is a wholly owned subsidiary of SLM Corporation, a Delaware corporation with principal place of business being in Reston, Virginia. SLM Corporation is better known as “Sallie Mae.” The Complainant defines SLM Corporation in the Complaint as “Sallie Mae” and the Panel adopts the same definition in this decision.
4.2 Sallie Mae was founded in 1972, as a United States government sponsored enterprise and underwent privatization in the late 1990’s. It is the leading provider of education funding in the United States, managing nearly US$98 billion in student loans for more than seven million borrowers.
4.3 The Respondent registered the Domain Name on January 26, 2004.
4.4 Through its in-house legal advisers, the Complainant
wrote to the Respondent demanding the transfer to them of the Domain Name by
letters dated September 28, 2004, and October 15, 2004. The Complainant received
no response to either letter.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
5.1 The Complainant refers to paragraph 4(a)(i), of the Policy, and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules and asserts that the Domain Name is confusingly similar with a trademark in which it owns the rights. In particular it asserts that:
(a) “Sallie Mae has registered trademark rights in the SALLIE MAE mark in the United States and elsewhere” (although earlier in the Complaint is to be found the statement that it is the Complainant that has registered the name SALLIE MAE);
(b) the Domain Name “contains a slight typographical error of Complainant’s mark”;
(c) “typographical errors consisting of one misplaced letter easily satisfy the requirement of similarity”; and
(d) “Respondent’s use of the domain name <salliemaestudentloans.com> is confusingly similar to that registered by Sallie Mae and the mark SALLIE MAE.”
5.2 In support of these contentions, the Complainant
relies upon the decision in Sallie Mae, Inc. v. Party Night, Inc (WIPO
Case No. D2003-0612), where it was held that by slightly misspelling
some portion of the mark, the respondent had failed to ‘take away the
impression of a connection with the Complainant.’
5.3 The Complainant also lists a number of cases (for example Diageo plc
v. John Zuccarini, Individually and t/a Cupcake Patrol (WIPO
Case No. D2000-0996) and Westfield Corporation, Inc and Westfield Limited
v. Graeme Michael Hobbs (Dynamic Marketing Consultants) (WIPO
Case No. D2000-0227)), which the Complainant asserts is authority for a
finding of confusing similarity where a domain name in dispute comprises the
complainant’s trademark followed by a generic term.
No rights or legitimate interests
5.4 The Complainant refers to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules. It asserts that the Respondent has no rights or legitimate interests in the Domain Name. In this respect the Complainant claims that:
(a) the Respondent “is not affiliated with Sallie Mae” and “salliemaestudentloans, to the best of Sallie Mae’s knowledge, is not an acronym of the Respondent’s name, its trading name or nickname”;
(b) “Sallie Mae has not licensed the Respondent to use its name and service mark for any purpose”; and
(c) “the Respondent in an attempt to reap financial gain, intentionally and misleadingly redirects patrons of the legitimate <salliemae.com> website to various financial services websites, and in doing so has tainted “Sallie Mae’s reputation as an educational lender.” Such use “evidences an illegitimate interest in a domain name.”
5.5 In support of its contentions, the Complainant
relies upon the decisions in two other UDRP proceedings in which it has been
involved. The first is Sallie Mae, Inc. v. Martin Marketing (WIPOCase No. D2004-0357), where it was held that the respondent had
no right or legitimate interest in the domain name because its registration
of the disputed domain name was ‘for the sole purpose of creating a likelihood
of confusion with the complainant’s mark.’ The second is Sallie
Mae, Inc. v. Ling Shun Shing (WIPO Case
No. D2003-0445)where the respondent’s diversion of Internet
users to a search engine website was not found to be a bona fide offering
of services pursuant to paragraph 4(c)(i) of the Policy, or a legitimate, noncommercial
or fair use pursuant to paragraph 4(c)(iii) of the Policy.
Bad faith
5.6 The Complainant refers to paragraph 4(a)(iii) of the Policy and paragraph 3(b)(ix)(3) of the Rules. It asserts that the Domain Name was registered and has been used in bad faith. In particular the Complainant claims that:
(a) the “Respondent registered a distinctive domain name, nearly identical to that of Sallie Mae in order to intentionally divert customers to its web site for financial gain”;
(b) the “Respondent’s use of a registered service mark evidences its bad faith”;
(c) “Sallie Mae has reserved the rights to the name SALLIE MAE by registering the service mark with the United States Patent and Trademark Office, and through its common law rights to the name”;
(d) “Sallie Mae is also registered in several foreign countries and Sallie Mae has filed for protection under the Madrid Protocol”;
(e) the Respondent “has constructive notice of Sallie Mae’s rights”;
(f) the United States congress has granted Sallie Mae and the Complainant “exclusive rights in the name “Sallie Mae” or any variation thereof” under section 440(e)(3) of the federal Higher Education Act 1965 (as amended);
(g) the “Respondent’s bad faith is further highlighted by the fact that the disputed domain name is a lengthened version of one commonly associated with and identified as Sallie Mae”;
(h) “combining a famous mark with a generic word or words (especially the product that the famous mark is associated with) does not alleviate the potential for confusion”;
(i) “The mark that is incorporated in the Respondent’s domain name is distinctive”; and
(j) “Sallie Mae is a well established and globally-known educational lender.”
5.7 In support of its contentions the Complainant relies upon the decision
in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kill
(WIPO Case No. D2000-1409) in
so far as it was held in that case that the addition of a suffix did not detract
from the overall impression of the dominant part of the name.
5.8 The Complainant also relies upon the decision
in Sallie Mae, Inc. v. Martin Marketing (WIPO
Case No. D2004-0357) to the effect that the respondent in that case was
deemed to be acting in bad faith when it chose a domain name that was confusingly
similar to a mark that was registered by the complainant and well known in the
trade.
5.10 Lastly, the Complainant makes reference to the fact that through in-house legal advisers, it has sent the Respondent two letters demanding the transfer of the Domain Name to which it has received no reply.
B. Respondent
5.11 The Respondent has not responded to the Complainant
and has thus put forward no submissions to the Panel.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark 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.
6.4 However, under paragraph 5(e) of the Rules, if the respondent does not submit a response and in the absence of exceptional circumstances, “the Panel shall decide the dispute based upon the Complaint.” Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
A. Identical or Confusingly Similar
6.5 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.
6.6 At this point a problem immediately arises. It is necessary that the Complainant has the relevant rights. In this case, the Complainant seems to be asserting that it is Sallie Mae that has the registered rights. Such evidence as is provided as to registered trademark ownership (i.e. copies of the two United States registrations) refer to the “Student Loan Marketing Association,” which is the old name of Sallie Mae. To add to the confusion here, although Sallie Mae is a defined term in the Complaint there is at one point a reference to “Sallie Mae’s parent company.”
6.7 To some, this complaint may seem pedantic. After all, both Sallie Mae and the Complainant are part of the same group and at least someone in that group is likely to be able to show the necessary rights. However, it is for the complainant to prove its rights. It is not for a panel or a respondent to have to try and discern the case that could or should have been made by one or a number of companies within the group of companies to which a complainant may belong.
6.8 Nevertheless, in this case, a search of the online register of the United States Patent and Trademarks Office shows that although trademark no.1,646,267 for the word mark SALLIE MAE (the “Trademark”) was initially registered in the name of the Student Loan Marketing Association, it was transferred to the Complainant on May 17, 2001. In short, at least so far as the Trademark is concerned, the Complainant has a trademark upon which it can rely.
6.9 Given this finding, the next question is whether
the Domain Name is “identical or confusingly similar” to the Trademark?
In the instant case, the Domain Name incorporates the Trademark and differs
only to the extent of the addition of the suffix ‘studentloans.’
6.10 Somewhat bizarrely, the Complainant in this case suggests that the Domain Name is confusingly similar because this is a case of ‘typosquatting’ (i.e. where the domain name comprises or contains a trademark in which a complainant has rights but the trademark has either been misspelt or has letters transposed). The case before the Panel is clearly not a case of typosquatting.
6.11 However, the Complainant’s reference to cases where a panel found confusing similarity where the domain name comprised a trademark with a non-distinctive suffix is more to the point. Here, the Respondent has chosen not only a generic suffix, but a generic suffix which directly relates to the services offered by the Complainant; i.e. student finance and student loans. In such a case there is undoubtedly confusing similarity.
6.12 In the circumstances, the Panel therefore finds that the Domain Name is confusingly similar to the Trademark. In light of this finding, it is not necessary to consider the Complainant’s contentions in relation to other registered trademarks. The Complainant has made out Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.13 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.
6.14 The Complainant asserts that the Respondent has no rights, or legitimate interest in the name “sallie mae student loans.” The Respondent has not put forward any evidence to the contrary.
6.15 Further, as is described in greater detail below in the context of bad faith, the Panel accepts the Complainant’s contention that the purpose of the registration was to obtain financial gain by intentionally redirecting potential and actual customers of the Sallie Mae group to the Respondent’s website. Such actions do not provide a Respondent with legitimate rights or interests.
6.16 The Panel therefore finds that the Respondent does not have any rights to, or legitimate interests in, the Domain Name. The Complainant has made out Paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
6.17 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent and has been used in bad faith.
6.18 A non exclusive list of circumstances that are evidence of registration in bad faith are set out in paragraph 4(b) of the policy. Although the Complainant does not expressly refer to paragraph 4(b)(iv), it is clear from the wording of the Complaint that the Complainant alleges bad faith in the form set out in paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) refers to a situation where:
… by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
6.19 In support of this assertion, the Complainant alleges that as a result of its trademark registrations, the Respondent has constructive notice of Sallie Mae’s rights.
6.20 The question whether any concept of constructive
notice should be imported into the Policy is a difficult one. There are numerous
cases in which panels have refused to adopt such a concept. A recent example
is the three-person panel decision in Olymp Bezner GmbH & Co. KG v. Olympus
Access Service (WIPO Case No. D2003-0958).
6.21 In Red Nacional De Los Ferrocarriles Espanoles
v. Ox90 (WIPO Case No. D2001-0981)
and Sibyl Avery Jackson v. Jan Teluch (WIPO
Case No. D2002-1180), constructive notice was deemed as sufficient. However,
these cases were (as both panels recognised) unusual. They involved the domain
name in question having been inadvertently allowed to lapse and the respondent
registering it because of its high hit rate rather than any knowledge of trademark
rights in the underlying name. Clearly, these unusual circumstances are not
relevant in this case.
6.22 There is, however, a line of cases where constructive
notice has been held to be a factor that can be taken into account. These include
Cellular One Group v. Paul Brien (WIPO
Case No. D2000-0028); Sterling Inc. v. Sterling Jewelers, Inc and Domain
Traffic (WIPO
Case No. D2002-0772); Biogen, Inc. v. Kel Ellis, KELCO (WIPO
Case No. D2002-0679); and Jeffrey S. Thompson d/b/a The Wedding Planner
v. Weddingchannel.com, Inc., (WIPO Case
No. D2002–0086).
6.23 As was recognized in The Sportsman’s Guide, Inc. v. Modern Limited,
Cayman Islands (WIPOCase No. D2003-0305),
these were all cases where both the complainant and the registrant of the disputed
domain name were located in the United States. Similarly, in Staples, Inc.,
Staples The Office Superstore, Inc., Staples Contract and & Commercial,
Inc. v. John Morgan (WIPO Case No. D2004-0537)the panel held “Because the Complainants and Respondents reside in
the United States, it is appropriate to apply the principle of constructive
notice.”
6.24 Therefore, even if the cases accepting constructive notice are correct (and the Panel expresses no opinion on the issue), they are clearly not applicable in this case. The parties are not both from the United States. The Complainant is a United States entity, but the Respondent gives an address in China. The Panel therefore rejects the Complainant’s contention that the concept of constructive notice is applicable to this case.
6.25 What is odd in this case is that the Complainant feels a need to allege constructive notice at all. All of the following factors suggest that the Respondent had actual knowledge of the Complainant’s use of the Sallie Mae name in this case:
(i) The inherent distinctiveness of the Sallie Mae name;
(ii) The worldwide fame of the Sallie Mae name;
(iii) The use of a generic suffix together with the Sallie Mae name which is directly associated with the goods and services offered by Sallie Mae;
(iv) The offering of services through the website in the same field in which Sallie Mae operates;
(v) The fact that these services appear to be directed to persons in the United States and extend to “federal student loans.”
6.26 Whilst it is not expressly asserted, the Panel believes that in this case this allegation is in fact made. It is inherent in the Complainant’s allegation that the Respondent chose the Domain Name “with the intent for commercial gain to misleadingly divert customers,” that the Respondent was aware of the Sallie Mae name and the goodwill attaching to it. After all, in order to mislead, the Respondent must first have been aware of what was already there.
6.27 Therefore, the Panel believes that it is entitled to find without injustice to the Respondent that the Respondent had actual knowledge of the Complainant’s rights and goodwill. The Panel therefore accepts the Complainant’s contention that the Respondent registered and used the Domain Name in an attempt to attract Internet users to its website by creating a likelihood of confusion with the Trademark.
6.28 The requirement in paragraph 4(b)(iv) of the
Policy that such an attempt be made for commercial gain is also made out in
this case. The screen prints provided by the Complainant suggest that the Respondent’s
website did not actually offer student loans or educational finance itself,
but merely advertised and linked through to other Internet sites that did so.
However, in the Panel’s view this is of no consequence. At least some
(if not all) of the sites advertised would appear to be commercial in nature.
In such circumstances, the Panel accepts that the Complainant has but formed
a prima facie case of use for commercial gain. In doing so, it follows
similar reasoning to that adopted by the Panel in V&S Vin&Sprit AB
v. Corinne Ducos (WIPO Case No. D2003-0301).
6.29 Further, the Respondent has not sought to counter the Complainant’s express allegation that the Respondent’s activities were for “financial gain.”
6.30 In the circumstances, the Panel finds that the Complainant’s allegations under paragraph 4(b)(iv) have been successfully made out.
6.31 Accordingly, the Panel concludes that the Domain
Name has been registered and used in bad faith and the Complainant has made
out Paragraph 4(a)(iii) of the Policy.
7. Decision
7.1 For all of the foregoing reasons, the Panel concludes that the Complainant has sufficiently proved:
(a) the Domain Name is confusingly similar to the Trademark; and
(b) the Respondent does not have any rights to or legitimate interests in the Domain Name; and
(c) the Domain Name was registered and has been used in bad faith.
7.2 Therefore, in accordance with paragraphs 4(i)
of the Policy and 15 of the Rules, the Panel orders that the Domain Name <salliemaestudentloans.com>
be transferred to the Complainant.
Matthew S. Harris Sole Panelist
Dated: December 24, 2004
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