WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HEMAR Insurance Corporation of America v. Doogdoog Software Ltda
Case No. D2002-0591
1. The Parties
The Complainant in this administrative proceeding is HEMAR Insurance Corporation of America ("HEMAR"), incorporated in South Dakota with its principal place of business in South Dakota, United States of America. HEMAR is a wholly owned subsidiary of HICA Holding, Inc. ("HICA") and HICA is a wholly owned subsidiary of SLM Corporation ("Sallie Mae"), a Delaware corporation with its principal place of business in Reston, Virginia, United States of America. The Complainant is represented in this proceeding by the Associate General Counsel of Sallie Mae, 11600 Sallie Mae Drive, Reston, VA 20193, United States of America.
The Respondent is Doogdoog Software Ltda, Av. Francisco Sales, 434 Bairro Floresta, Belo Horizonte, MG 30150-220, Brazil.
2. The Domain Name and Registrar
The domain name at issue is <lawloans.com> (the "Domain Name"). The Registrar is Iholdings.com, Inc. d/b/a DotRegistrar.com, 13205 SW 137th Avenue, suite 133, Miami, FL 33186, United States of America.
3. Procedural History
The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on June 25, 2002. On June 28, 2002, the Center received a hard copy of the Complaint, with supporting evidence.
On June 28, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed, on July 4, 2002, that it had not received a copy of the Complaint, that the Domain Name was registered with it, and that the Respondent was the current registrant of the Domain Name. The Registrar transmitted to the Center the full Whois details related to the Domain Name and confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name.
On July 5, 2002, the Center advised the Complainant of two deficiencies: (1) the Registrar apparently had not received a copy of the Complaint and (2) the mutual jurisdiction election was unsatisfactory. The Center received an email version of an Amendment to the Complaint on July 8, 2002, a facsimile version on July 9, 2002, and a hard copy on July 11, 2002; the Amendment cured the above mentioned deficiencies
On July 11, 2002, the Center determined that the complaint satisfied the formal requirements of 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").
On July 12, 2002, the Center notified the Respondent of the commencement of this proceeding and set August 14, 2002 as the date for the submission of a Response.
The Center did not receive a Response. On August 5, 2002, the Center sent to the Parties, by email, and facsimile, a Notification of Respondent Default.
The Complainant elected to have the complaint resolved by a single panelist. On August 9, 2002, the Center invited Prof. Daniel Gervais to act as Sole Panelist. On August 12, 2002, the undersigned provided a Statement of Acceptance and Declaration of Impartiality and Independence. On August 14, 2002, the Center appointed the undersigned and by email, notified the Parties of this appointment and set August 28, 2002, as the Projected Decision Date.
The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
HEMAR, the Complainant, is a wholly owned subsidiary of HICA Holding, Inc, itself a wholly owned subsidiary of Sallie Mae. Sallie Mae is a Fortune 500, Forbes Super 200 Company and is publicly traded on the New York Stock Exchange under the symbol SLM.
Sallie Mae was founded in 1972 as a government-sponsored enterprise (the Student Loan Marketing Association). Sallie Mae provides education funding in the United States, primarily federally guaranteed student loans originated under the Federal Family Education Loan Program (FFELP). It offers comprehensive information and resources to guide students, parents and guidance professionals through the financial aid process. Through its specialized subsidiaries and divisions, the company also provides consumer credit loans, including those for lifelong learning and K-12 education, and business and technical outsourcing services for colleges and universities. The company has been progressively privatized since 1997. Its student loan portfolio currently approaches USD 73 billion.
The Complainant has provided loan and financial services to students of the United States as well as to eligible international students pursuing an advanced degree in the legal field since 1995. Under the LawLoans program, more than USD 2 billion have been lent to over 55,000 law students at over 200 U.S. law schools. Of those borrowers, 1,125 are from other countries, including Brazil.
According to information filed with the United States Patent and Trademark Office, ("USPTO") the Complainant and its predecessors have operated and offered financial services under name "Law Loans" since May 1989. The Complainant itself has been using the mark since 1995. On May 17, 2000, the Complainant applied to the USPTO to register "Law Loans" as a service mark. The registration was granted on April 2, 2002 (Registration number 2557463). Sallie Mae has registered three other service marks that contain the expression "Law Loans".
The Respondent, a company located in Brazil, registered the Domain Name on May 31, 2000. Typing the Domain Name brings Internet Users to a different Domain Name (<xxsex.com>), which purveys hard core pornography.
5. Partiesí Contentions
The Complainant relies on the following arguments to ask that the Domain Name be transferred to it.
The Respondentís domain name <lawloans.com> is identical or confusingly similar to the Complainantís registered mark. Law Loans, Sallie Mae, and salliemae.com are well known and commonly associated with the facilitation and administration of loans to students pursuing a legal education. By virtue of its registration as a service mark and its global use in commerce for several years, the mark Law Loans has become distinctive. The Respondent registered the Domain Name long after it had been used in the international marketplace. Respondentís registration is prima facie evidence that the Respondent has used and registered a service mark which is identical to one which is already well-established and employed by Sallie Mae.
The Respondent has no rights or legitimate interests with respect to the Domain Name. "Law Loans" is not an acronym of the Respondentís name, trading name nor its nickname. Sallie Mae has not licensed the Respondent to use their name and mark. The Respondent, in an attempt to receive financial gain, intentionally misleads Internet users by directly diverting them to its pornographic web site, and taints Sallie Maeís reputation as an educational lender to students, national as well as international, including Brazil. This evidences an illegitimate interest in a domain name.
The Respondent registered the Domain Name in bad faith. The Respondentís bad faith is evidenced by its usurpation of Sallie Maeís registered service mark to display pornographic material instead of its intended and commonly identifiable use of providing information about and offering financial services to foreign and U.S. students seeking a law degree. This diversion caused and continues to cause harm to the good will represented by the mark. The mark was infringed upon solely for the purpose of financial gain.
The Respondentís registration of "Law Loans" constitutes an abuse of service pursuant to section 20 of its registration agreement, according to which an abuse of service includes "any activity involving the use of services . . . which (iii) adversely affects the ability of DotRegistrar to abide by ICANN . . . policies and procedures . . . [and] (v) adversely affects the legal rights of a third party." Examples of abuse of service include "(iv) [r]egistering a domain name with the intent to deprive a rightful holder of a trademark the value or benefit of that holderís use or possession of such trademark."
Because Complainant provides evidence that it believes satisfies all required element of the Policy, it submits that it is entitled to injunctive relief in the form of a transfer of the disputed domain name.
The Complainant asks that the Domain Name be transferred to it.
The Respondent has not submitted a Response nor any other comments.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
As to the first question, the record confirms that the Complainant or its predecessors have used the mark since 1989, that the Complainant itself has used the mark since 1995, that the Complainant filed for registration of the mark two weeks before the Respondent registered the Domain Name, and that the Complainant succeeded in obtaining registration of the mark on April 2, 2002. The fact that the mark was not registered at the time that the Respondent registered the Domain Name is not fatal to the Complainantís case. The Rules do not require that a mark be registered by a government authority or agency for such a right to exist. In this respect, the Panel refers to WIPO's Final Report on the Internet Domain Name Process [April 30, 1999] paragraphs 149 - 150. This was also mentioned in several cases: see Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000); and Askonas Holt Ltd v. Webocracy Inc., WIPO Case No. D2000-0392 (July 3, 2000). Here, the Complainant asserts use of the trademark LawLoans since at least 1995, or five years before the Domain Name was registered. The Panel finds in favor of the Complainant on the first question.
As to the second question, the Panel finds that the Domain Name is confusingly similar to the trademark LawLoans. When a domain name wholly incorporates a complainantís mark, that is sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (January 29, 2001); Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000); Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002)). Here, apart from the ".com", the Domain Name is the mark.
6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on Complainantís prior use of the LawLoans mark. The Respondent, which did not file a Response, did not dispute this contention nor provide information as to its interests to use the Domain Name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
The Respondent only used the Domain Name to redirect users to a website selling pornography and not in connection with any other bona fide offerings of goods or services. The Respondent offers no goods or services under the name "LawLoans". Moreover, there are no elements showing that the Respondent is or was commonly known by the Domain Name. Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. On the contrary, the web site to which the Domain Name refers appears to offer services for commercial gain.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances in which:
"by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Complainant offers no direct evidence of the Respondentís intentions. Nothing in the evidence submitted indicates that the Complainant tried to contact the Respondent before initiating this proceeding. Neither is there any evidence that LawLoans was or is well known in Brazil. At most we know that some loans were offered to Brazilian students to pursue a law degree in an American Bar Association-accredited law school [Complainantís Exhibit 4].
That being said, there is no justification in the statements and documents submitted, for the use of the Complainantís trademark in the Domain Name, other than to intentionally divert Internet users, for commercial gain, to the Respondent's web site, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site.
The Respondent did and does not use the expression "lawloans" to offer goods and/or services through the Domain Name. It only uses the Domain Name to redirect users to a different site where only pornography is offered under a different name. Try as it may, this Panel has failed to conceive of any possible association between the contents of the web site to which the Domain Name resolves and the name "lawloans". As a rule, when there is no evidence to show a connection--and no obvious logical connection--between a (confusingly similar) domain name and the site to which it resolves and which offers, for commercial gain, completely unrelated services under a different name, in the absence of evidence to the contrary a Panel is entitled to conclude that the Domain Name was registered and is being used "to attract, for commercial gain, Internet users ... by creating a likelihood of confusion with the complainantís mark".
Having reached this conclusion, it is unnecessary to discuss the alleged breach of the Registration Agreement, which would in any event be of limited importance under Paragraph 2 of the Policy.
In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
On the basis of the elements set out above, the Sole Panelist finds that:
1. The domain name <lawloans.com> is confusingly similar to the trademark LawLoans, in which the Complainant has rights;
2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;
3. The Domain Name was registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lawloans.com> be transferred to the Complainant.
Dated: August 22, 2002