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
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.
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.
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.
The Complaint is dismissed.
Dated: March 31, 2001
ORGANISATION MONDIALE DE LA PROPRIETE INTELLECTUELLE
Centre d’arbitrage et de médiation de l’OMPI
WORLD INTELLECTUAL PROPERTY ORGANIZATION
WIPO Arbitration and Mediation Center
|March 23, 2001|
Re: Case No. D2001-0138
Procedural Order No. 1
The Panel has now read the papers submitted to WIPO by the parties. Pursuant to paragraph 12 of the Rules, the Panel requests further documentation and/or information from the parties as follows:
1. From the Respondent, such documentation as the Respondent may have to substantiate the claim that the Respondent’s "Sloan E-Mail service has conducted its business at sloan.com since November of 1998" and such further information/documentation that the Respondent can provide to demonstrate that the service is and has always been an active bona fide service.
2. From the Complainant, such documentation/information as the Complainant can provide to demonstrate the circumstances of the offer for sale referred to in the declaration of Walter Taucher. The Panel points out that the Respondent has categorically denied that any such offer was made. Mr Taucher’s declaration does not exhibit the email, nor does it explain how the offer came to be made. Was it in response to a request for transfer or was it an unsolicited offer? The Panel assumes that the email must have been lost, but believes there must be other contemporary correspondence and/or internal memoranda between Mr Taucher and his colleagues at the Complainant reporting on the offer.
The Panel requires that any responses to this procedural order are received by WIPO by Tuesday March 27, 2001 and that each party is given a further 3 days (ie until March 30, 2001) in which to put in a further submission in answer.
If neither party responds to this procedural order, the decision of the Panel will be issued within the allotted time, otherwise the date for issuance of the decision will be put back until April 4, 2001.
Pursuant to Section 8 of the UDRP Rules, the Respondent is to forward its submissions to the WIPO Arbitration and Mediation Center, not to this Panel.
Tony Willoughby, Esq.