WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sallie Mae, Inc. v. John Sansone
Case No. D2004-0879
1. The Parties
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 John Sansone of Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sallieame.com> is registered with eNom.
3. Procedural History
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 eNom a request for registrar verification in connection with the domain name at issue. On October 25, 2004, eNom. transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent, John Sansone, was the current registrant of the disputed Domain Name.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 1, 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”).
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 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2004.
The Center appointed R. Eric Gaum as the sole panelist in this matter on December 16, 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
Complainant Sallie Mae, Inc. owns the rights to the registered service mark SALLIE MAE for “originating and purchasing educational loans, extending credit to educational and financial lenders for the purpose of funding educational loans,” which was registered on May 28, 1991, as United States Reg. No. 1,646,267, with a claimed first use as early as February 1974. Complainant is also the owner of numerous United States service mark registrations that contain the phrase SALLIE MAE.
Respondent registered the domain name <sallieame.com> on July 12, 2004. The domain name redirects Internet users to a third party’s website, which happens to offer similar services to those of Complainant. The third party has submitted a response to WIPO disclaiming any affiliation with the Respondent.
5. Parties’ Contentions
Complainant Sallie Mae, Inc. is a corporation duly organized and existing under the laws of the State of Delaware, with its principal place of business in Reston, Virginia. Sallie Mae, Inc. is a wholly owned subsidiary of SLM Corporation (“Sallie Mae”), a Delaware corporation with its principal place of business in Reston, Virginia. 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, Inc. registered the name SALLIE MAE on May 21, 1985 and May 28, 1991, (Reg. Nos. 1,337,128 and 1,646,267) with the United States Patent and Trademark Office (“USPTO”), acquiring and reserving exclusive rights to the domain name. Sallie Mae is also the owner of SALLIEMAE CUP, USPTO Reg. No. 2,383,132; SALLIE MAE SOLUTIONS, USPTO Reg. No. 2,447,641; SALLIE MAE 10K, USPTO Reg. No. 2,438,321; SALLIE MAE VALLEY CLASSIC RACES, USPTO Reg. Nos. 2,471,463 and 2,473,400; SALLIEMAE 10K, USPTO Reg. No. 2,535,793; SLM FINANCIAL CORPORATION A SALLIE MAE COMPANY, USPTO Reg. No. 2,577,328 and SALLIE MAE CASH BACK, USPTO Reg. No. 2,701,947. United States registrations constitute constructive notice of Complainant’s claim of rights in the trademark SALLIE MAE under 15 U.S.C. §1072. These marks are incontestable under 15 U.S.C. §1065.
The Respondent, John Sansone, an individual who is not affiliated with Sallie Mae, registered the disputed domain name on July 12, 2004, long after Sallie Mae had made use of its “www.salliemae.com” web site in the international marketplace and well after Sallie Mae had established itself and the association of its name with educational lending for post-secondary school education.
‘Sallieame,’ to the best of Sallie Mae’s knowledge, is not an acronym of the Respondent’s name, trading name nor its nickname. Respondent is using the domain name <sallieame.com> to re-direct Internet users seeking Complainant’s web site to a website offering similar financial services. This commercial web site links to the Educational Loan Company, a student loan provider and competitor of the Complainant.
Sallie Mae has not licensed the Respondent to use its name and service mark for this or any other purpose, and Respondent has no rights or legitimate interests in respect of the domain name <sallieame.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the “Policy”), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded notification of the Complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. The Center also forwarded notification of default to the Respondent via email.
Based on the methods employed to provide the Respondent with notice of the Complaint and default, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
As the Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, (February 29, 2000).
A. Identical or Confusingly Similar
Based upon the United States service mark registrations for SALLIE MAE and the continuous use of the marks, the Complainant clearly has rights in the mark.
Complainant asserts that the domain name <sallieame.com> is confusingly similar to the service mark SALLIE MAE. The only difference between the two is that <sallieame.com> contains a slight typographical error of Complainant’s mark.
The Panel agrees with the Complainant that <sallieame.com> is confusingly similar to the service mark SALLIE MAE. The only actual differences between the domain name and the service mark is the misspelling, which is trivial. (See Sallie Mae, Inc. v. Party Night, Inc., WIPO Case No. D2003-0612 (September 9, 2003).
The Panel finds the <sallieame.com> domain name is confusingly similar to the registered service mark SALLIE MAE, and that the Complainant has established it has rights in the mark SALLIE MAE, pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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 trademark or service mark at issue.
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <sallieame.com> and the Complainant has made out a prima facie case that none of the circumstances in paragraph 4(c) apply.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <sallieame.com>, pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iv) states:
(iv) by using the domain name, you 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 complainant’s 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 Respondent registered a slight misspelling of a famous mark and uses the domain name to divert Internet users to a third party’s web site, who happens to be a competitor of the Complainant. This was clearly done with the intention to attract Internet users to an on-line location by creating a likelihood of confusion with the Complainant’s mark.
The third party at issue filed a response with the Center indicating that it had no connection with the Respondent and nothing to do with the link to its web site. If true, and the Panel has no reason to suspect otherwise, the commercial gain of the Respondent is unclear. Nevertheless, the Complainant has alleged that “Respondent’s unauthorized and unapproved redirection of sallieame.com customers to its alias website is solely for the purpose of achieving greater financial gains.” Respondent may well have redirected the domain name in an effort to disrupt Complainant’s business and extort financial gain from the Complainant, as was the case in two prior UDRP proceedings involving the Respondent, Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018 (February 26, 2004) and EasyGroup IP Licensing Limited v. John Sansone, WIPO Case No. D2004-0763 (November 16, 2004).
Further, a finding of bad faith is not limited to the factors listed in paragraph 4(b) of the Policy. The facts set forth herein and the Respondent’s failure to defend its actions satisfy the Panel that Respondent has acted in bad faith.
The Panel finds the Complainant has established that the Respondent registered and used the domain name <sallieame.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
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, <sallieame.com> be transferred to the Complainant.
R. Eric Gaum
Dated: January 3, 2005