WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sallie Mae, Inc. v. Whois Agent/ linyanxiao

Case No. D2013-1170

1. The Parties

The Complainant is Sallie Mae, Inc. of Newark, Delaware, United States of America (“US”).

The Respondent is Whois Agent/ linyanxiao of Hangzhou, Zhejiang, China, and Guangzhou, Guangdong, China, respectively.

2. The Domain Names and Registrar

The disputed domain names <saliiemaebank.com>, <sallaemaebank.com>, <salleimaebank.com>, <salliemacbank.com>, <salliemaebak.com>, <salliemaeban.com>, <salliemaebnk.com>, <salliemaibank.com>, <salliemaiebank.com> and <salliemarbank.com> are registered with Hangzhou AiMing Network Co., LTD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 9, 2013. On July 5, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On July 9, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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” or “UDRP”), 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 July 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 14, 2013. 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

The Complainant, Sallie Mae, Inc., is a US company based in Delaware. The Complainant is a leading company in the US for financial services specializing in education.

The Complainant offers products and services that include college savings plans, scholarship search and planning tools, education loans, insurance, and online banking.

In 2005 the Complainant established Sallie Mae Bank, as affiliate of the Complainant. The Sallie Mae Bank provides education loans and saving products to students and their families.

The Complainant owns US Trademark registrations as following:

Trademark registration No. 1646267 – SALLIE MAE, with registration date of May 28, 1991;

Trademark registration No. 3129656 – SALLIE MAE BANK, with registration date of August 15, 2006;

Trademark registration No. 4331347 – SALLIEMAE BANK (logo), with registration date of May 7, 2013.

The Complainant has also developed a presence on the Internet and has used the domain names <salliemae.com> and <salliemaebank.com>.

The Complainant sent the Respondent a cease and desist letter on June 4, 2013 via email and first class mail as well as a carbon copy to the Registrar. The delivery of the email to the Respondent has been delayed, and to the Registrar has failed since the WhoIs information is invalid.

The disputed domain names used to resolve to websites which included, as shown in Annex 4 to the Complaint, advertisements for the Complainant’s competitors and a banner stating that the domain is listed for sale for USD 1,500.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are identical or confusingly similar to the Complainant’s name and registered trademarks SALLIE MAE and SALLIE MAE BANK.

The Complainant further argues that the disputed domain names merely transposed letter and/or substituted letters with respect to the Complainant’s trademarks.

The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its SALLIE MAE and SALLI MAE BANK trademarks and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant argues that the disputed domain names were improperly registered and are being improperly used.

The Complainant argues that the disputed domain names are being used in bad faith and are used as a parking page, which offers links to websites belonging to the Complainant’s competitors.

The Complainant further argues that the Respondent registered the disputed domain names for the purpose of selling the domain name registrations for valuable consideration in excess of the Respondent’s out-of-pocket costs.

The Complainant further argues that the Respondent is clearly seeking to trade on the Complainant’s goodwill and reputation.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s trademarks when registering the disputed domain names.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain names is Chinese.

The Complainant requested that the language of proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain names <saliiemaebank.com>, <sallaemaebank.com>, <salleimaebank.com>, <salliemacbank.com>, <salliemaebak.com>, <salliemaeban.com>, <salliemaebnk.com>, <salliemaibank.com>, <salliemaiebank.com> and <salliemarbank.com> are primarily in the English language and include the word “bank” in English.

b) The content of the websites associated with the disputed domain names are entirely in Latin characters.

c) The disputed domain names are comprised of Latin characters.

d) The Respondent did not object to the language of the proceeding being English.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns US trademark registrations for the SALLIE MAE and SALLI MAE BANK marks as following: Trademark registration No. 1646267 – SALLIE MAE, with registration date of May 28, 1991;

Trademark registration No. 3129656 – SALLIE MAE BANK, with registration date of August 15, 2006;

Trademark registration No. 4331347 – SALLIEMAE BANK (logo), with registration date of May 7, 2013.

The Complainant also owns the following domain names: <salliemae.com> and <salliemaebank.com>.

The disputed domain name <saliiemaebank.com> differs from the registered SALLIE MAE BANK trademarks by replacing the second letter “l” in the word SALLIE with the letter “i" and the additional generic Top-Level Domain (“gTLD”) “.com”.

The disputed domain name <sallaemaebank.com> differs from the registered SALLIE MAE BANK trademarks by replacing the letter “i” in the word SALLIE with the letter “a” and the additional gTLD “.com”.

The disputed domain name <salleimaebank.com> differs from the registered SALLIE MAE BANK trademarks by the replacing the places of the letters “ie” in the word SALLIE to “ei” and the additional gTLD “.com”.

The disputed domain name <salliemacbank.com> differs from the registered SALLIE MAE BANK trademarks by the replacing of the letter “e” in the word MAE with the letter “c” and the additional gTLD “.com”.

The disputed domain name <salliemaebak.com> differs from the registered SALLIE MAE BANK trademarks by the omission of the letter “n” from the word BANK and the additional gTLD “.com”.

The disputed domain name <salliemaeban.com> differs from the registered SALLIE MAE BANK trademarks by the omission of the letter “k” from the word BANK and the additional gTLD “.com”.

The disputed domain name <salliemaebnk.com> differs from the registered SALLIE MAE BANK trademarks by the omission of the letter “a” from the word BANK and the additional gTLD “.com”.

The disputed domain name <salliemaibank.com> differs from the registered SALLIE MAE BANK trademarks by the replacing of the letter “e” in the word MAE with the letter “i” and the additional gTLD “.com”.

The disputed domain name <salliemaiebank.com> differs from the registered SALLIE MAE BANK trademarks by the additional letter “i” in the word MAE and the additional gTLD “.com”.

The disputed domain name <salliemarbank.com> differs from the registered SALLIE MAE BANK trademarks by the replacing of the letter “e” in the word MAE with the letter “r” and the additional gTLD “.com”.

The Panel finds that the Complainant’s trademarks, SALLIE MAE and SALLIE MAE BANK, are the dominant element in the disputed domain names.

The addition of the gTLD “.com” to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain names.

The replacement, omissions, transposing of letters in the disputed domain names as described above are not sufficient to escape a finding of confusing similarity (see Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042 and Barclays Bank PLC v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2012-1050).

Lastly, the aural and visual comparison of the domain names with a complainant’s trademark is an important part of the issue of confusing similarity. In addition, the content of a website may provide indication as to a respondent’s targeting of a specific trademark through the domain names chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441). In this case, the disputed domain names direct Internet users to webpages displaying commercial links to the Complainant’s competitors’ websites. The Panel thus considers that the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant’s websites, a practice known as “typosquatting”. This practice has been recognized not to avoid confusing similarity, in a number of UDRP panel decisions. (See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587, Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594, The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492, and Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641.

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests of respect to the disputed domain names (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its SALLIE MAE and SALLIE MAE BANK trademarks or a variation thereof. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the SALLIE MAE trademark since the year 1991. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved.

The disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

From the evidence provided by the Complainant, it appears that the disputed domain names resolved to websites which were used as a parking page offered links to websites of the Complainant’s competitors. The Respondent has been utilizing the Complainant’s trademarks in the disputed domain names for commercial gain by creating Internet user confusion through suggesting that the source of the Respondent’s websites is the Complainant. Such action constitutes bad faith registration and use of the disputed domain names. (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

Another indication for the Respondent’s bad faith is the fact that the disputed domain names resolved to websites which used to have a banner stating that the domain name is listed for sale (see Grundfos Holding A/S v. Sanjay Kumar, Flowguards / Sanjay K. Wighmal, Grund Fosseals / Sanjay / Sanjayk Wighmal, WIPO Case No. D2012-2355).

Finally, the Panel finds that the Respondent is a serial typosquatter who has registered multiple domain names incorporating the slightly modified trademarks or company names of the Complainant. It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name. See, ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (Finding serial typosquatting is evidence of bad faith); Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (Finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”).

Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the Respondent’s registration and using of the disputed domain names with no conceivable explanation for doing so, the websites under the disputed domain names were used as a parking page offering links to websites of the Complainant’s competitors and used to have a banner stating that the domain name is listed for sale, and the multiple typosquatting, the Panel finds this conduct amounts to evidence of bad faith.

The fact that the websites at the disputed domain names are currently inactive does not change the Panel’s findings.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <saliiemaebank.com>, <sallaemaebank.com>, <salleimaebank.com>, <salliemacbank.com>, <salliemaebak.com>, <salliemaeban.com>, <salliemaebnk.com>, <salliemaibank.com>, <salliemaiebank.com> and <salliemarbank.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: August 26, 2013