WIPO Arbitration and Mediation Center
Sallie Mae Inc. v. Richard Jones
Case No. D2006-1558
1. The Parties
The Complainant is Sallie Mae Inc., Reston, Virginia, United States of America, represented by Amy M. Hallett of Reston, Virginia, United States of America.
The Respondent is Mr. Richard Jones, with a non-existent address of Residence Emeraude apt. 160, Building D5 Rue Insel, Toulose [sic], na 31 200, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <sallieme.com>, is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 10, 2006, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. On December 11, 2006, eNom transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing incorrect contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 18, 2006. 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”).
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 December 29, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on January 19, 2007.
The Center appointed David W. Quinto as the sole panelist in this matter on January 30, 2007. 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
Complainant Sallie Mae, Inc. is a wholly owned subsidiary of SLM Corporation, popularly known in the United States as “Sallie Mae.” Sallie Mae is a Fortune 500 and Forbes Super 200 company and is the leading provider of education funding in the United States, managing nearly $123 billion in student loans for more than 9 million borrowers. Sallie Mae is the largest originator of federally-insured student loans in the United States.
Since 1972, Sallie Mae has offered financial services under the SALLIE MAE service mark. It registered the SALLIEMAE logo on the Principal Register of the United States Patent and Trademark Office in 1985 and subsequently registered various other marks that all incorporated the term “Sallie Mae.” Complainant avers that the SALLIE MAE mark is both well known and distinctive and that Complainant’s “wwwsallieme.com” website is an essential component of its marketing program.
Respondent registered the disputed domain name on February 12, 2004, and has used said domain name without Complainant’s authorization. Further, Respondent is using the domain name to re-direct Internet users to other Web sites offering financial services in competition with Complainant’s services.
Although not noted by Complainant, Respondent has apparently provided incorrect and fictitious contact information to the registrar. Respondent claimed a French-sounding address on a non-existent street in a city which to the Panel’s knowledge does not exist in the United States of America, but which Respondent located in the United States of America. Respondent accompanied that address with a telephone number located in India. (Interestingly, Complainant evidently concluded that Respondent is resident in Namibia.)
In at least one prior case, Respondent was found to be a cyber pirate. See Yokohama Tire Corp. v. Jones, NAF Case No. FA0606000739888 (August 3, 2006) (ordering the domain name <yokahamatires.com> transferred to complainant Yokohama Tire Corp.).
5. Parties’ Contentions
Complainant contends that the challenged domain name, <sallieme.com>, is confusingly similar to its registered SALLIE MAE mark. Further, Complainant maintains that Respondent has used the challenged domain name with the intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark. Complainant further alleges that § 440(e)(3) of the federal Higher Education Act of 1965, as amended, grants SLM Corp. and its affiliates, including Complainant, the exclusive right to the name “Sallie Mae.” See 20 U.S.C. § 1087-3(e)(3) (“the [Student Loan Marketing] Association may assign to the Holding Company, or any subsidiary of the Holding Company, the ‘Sallie Mae’ name as a trademark or service mark”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a) of the Policy, to prevail, a complainant must show that it has rights in a trademark or service mark and that the respondent’s domain name is identical or confusingly similar to it. Here, Complainant has attached copies of certificates of registration showing that the SALLIE MAE mark was registered to the Student Loan Marketing Association. Complainant does not allege any assignment to it, but the records of the United States Patent and Trademark Office reflect that the mark was, in fact, assigned to Complainant. For that reason, and by virtue of the cited federal law, Complainant has demonstrated that it has rights in the SALLIE MAE mark.
The Panel is aware that there have sometimes been differing views expressed by previous panels concerning what standard to apply to determine whether a domain name is confusingly similar to a mark when the domain name does not incorporate the mark verbatim. Some panels have applied a judicial test for likelihood of confusion, such as the eight-factor test analysis in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349-54 (9th Cir. 1979). In Sleekcraft, the Ninth Circuit directed that trial courts consider the following factors in determining whether there is a likelihood of confusion: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care likely to be exercised by the purchasers; (7) the defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines. The Panel notes in this respect that the Ninth Circuit has modified the Sleekcraft test for use in domain name disputes, weighing the second, third and fifth factors most heavily. See Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002); GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999). However, the application of a national (or, in this case, regional) law is, in the Panel’s view, fundamentally at odds with the notion that the Policy should be a universal dispute resolution procedure. That is especially the case where, as here, it is not clear that the respondent is even from the nation whose law is being applied. Further, the Panel considers that the trademark confusion test addresses a different problem than the Policy. Trademark confusion tests are applied to determine whether the use of two marks is likely to cause confusion in the marketplace and ignore that cyber pirates and cyber squatters may register domain names for many reasons other than to brand a service. Some panels have also declined to apply such tests. See, e.g., Playboy Enters. Int’l, Inc. v. Vileshome, No. D2001-1082 (WIPO October 30, 2001). (“The test of confusing similarity under the Policy, unlike trademark infringement … cases, is usually confined to a consideration of the disputed domain name and the trademark.”).
The Panel also notes that in certain cases panels have sometimes examined the registrant’s intent. For example, in Wal-Mart Stores, Inc. v. Walsucks, WIPO Case No. D2000-0477 (July 20, 2000), the panel cited Brookfield Communications for the proposition that “law has long been established that if an infringer ‘adopts his designation with the intent of deriving benefit from the reputation of the trade-mark or trade name, its intent maybe sufficient to justify the inference that there are confusing similarities.’“ Logically, however, the Panel considers that the Respondent’s intent primarily relates to the third element a complainant must prove, that the domain name has been registered and is being used in bad faith. Thus, the conclusion reached in America Online, Inc. v. Zuccarini, WIPO Case No. D2000-1495 (January 22, 2001), that “[d]emonstrable bad-faith in selecting a domain name may contribute to a finding of confusing similarity” is best viewed as a bootstrap argument.
The Panel also notes that because the Policy does not permit discovery, a complainant may rarely manage to adduce evidence of actual confusion. Indeed, it has been stated that “[e]vidence of lack of actual confusion is irrelevant.” Gateway, Inc. v. Pixelera.com, Inc., No. D2000-0109 (WIPO April 6, 2000).
In Wal-Mart Stores, Inc. v. MacCleod, WIPO Case No. D2000-0662 ( September 19, 2000), a panel first announced what is commonly referred to as an “objective” test of confusing similarity. The panel concluded that “a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy if the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.” (Emphasis added.) As regards letter strings that are similar, but not identical, to a mark, the quoted language is, of course, tautological.
The Panel notes that there now appears to be a consensus view on the test for confusing similarity, being a comparison between the trademark and the domain name to determine the likelihood of confusion. See e.g. paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein. The Panel further notes such comparisons typically involve an element of common sense.
Here, the challenged domain name does have a similar, although not identical, sight and sound to the Complainant’s mark. The addition of the letter “a” in the right position would render it identical to the Complainant’s mark. Thus, this appears to be a clear case of “typo squatting”, or perhaps more accurately in this case, “typo piracy”. Previous WIPO panels have routinely found such domain names to be confusingly similar to the proved trademark rights. See e.g. Pfizer Inc v BargainName.com, WIPO Case No. D2005-0299. It is also well established that an obvious misspelling of a complainant’s mark does not defeat a claim of confusing similarity under the Policy. See e.g. Caesar’s World, Inc. v. Lester Bakator, WIPO Case No. D2005-0125.
That Respondent offers links to sites offering services in competition with Complainant is further prima facie evidence that Respondent intended to capitalize on confusion with Complainant’s mark. Further, because Complainant and Respondent are both offering services in competition with one another, the application of a “likelihood of confusion” test would militate in Complainant’s favor.
Thus, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that accordingly, Complainant has satisfied the first element.
B. Rights or Legitimate Interests
Paragraph 4(a) of the Policy also requires that to prevail the complainant prove that the respondent has no rights or legitimate interests in respect of the domain name. That burden is often difficult to meet except when a respondent defaults. In that situation, a panel may accept the allegations of the complaint as true. See e.g., Benchmark Stuffing, Inc. v. Peter Parker and Executive Solutions, WIPO Case No. D2002-0226 (May 30, 2002) (“Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interest in respect to the domain name at issue. This entitles the panel to assume the truth of the allegation.”). This approach to the complainant’s burden is justified by the desire not to afford respondents a procedural advantage by defaulting. Here, Complainant has alleged that “Respondent, in an attempt to receive financial gain, intentionally redirected patrons of the above-mentioned website to competitors of the Complainant, and tainted Sallie Mae’s reputation as an educational lender.” Complainant does not point to any basis for concluding that the tarnishment of a parent corporation’s reputation is actionable under the Policy. However, Complainant has accurately characterized Respondent’s Web site and, accordingly, has shown that Respondent is not engaged in a legitimate use of the challenged domain name. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (February 22, 2001) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”)
Once a complainant has made a prima facie showing that the respondent lacks rights or legitimate interests in the domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in a domain name by showing that it (1) used, or made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services before receiving notice of a dispute; (2) has been commonly known by the domain name, even if it does not have trademark rights in the name; or (3) has made a legitimate non-commercial or fair use of the domain name without intent for commercial gain, to divert customers, or to tarnish the mark at issue. Here, there are no facts alleged that would support any of those three fact patterns. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant alleges that Respondent has registered and is using the challenged domain name in bad faith under Paragraph 4(b)(iv) of the Policy. Specifically, Complainant alleges that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s Web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Web site or location or of a product or service on Respondent’s Web site or location.
Under Paragraph 4(b)(iv), bad-faith use cannot be shown solely by the Respondent’s intent at the moment of registration. Creo Products, Inc.& anor v. Website in Development, WIPO Case No. D2000-0160 (May 1, 2000). Instead, separate showing both of bad-faith registration and of bad-faith use are required. Bad-faith registration can be shown by the fact that “the respondent was (or was likely to have been) aware of the existence of the complainant or, more particularly, the complainant’s rights in respect to the trademark in question” when the respondent registered its domain name. See Rusconi Editore S.p.A. v. BestInfo, WIPO Case No. D2001-0656 (July 5, 2001). Here, it is evident that Respondent was aware of Complainant’s rights in the SALLIE MAE mark by virtue of Complainant’s service mark registrations, the size of Complainant’s business, and Respondent’s use of a challenged domain name to compete directly with Complainant.
Based on the foregoing, Complainant has demonstrated that Respondent has registered and is using the challenged domain name in bad faith. See Sallie Mae, Inc. v. Martin Marketing, WIPO Case No. D2004-0357 (July 14, 2004) (holding that “the registering of a domain name that contains a slight typographical error . . . while knowing that the domain name is owned and used by another and without proper permission or license to do so, is a sufficient basis for finding bad faith registration and use.”).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sallieme.com> be transferred to the Complainant.
David W. Quinto
Dated: February 7, 2007