WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sallie Mae, Inc. v. Party Night, Inc.
Case No. D2003-0612
1. The Parties
Complainant is Sallie Mae, Inc., Reston, Virginia, United States of America, represented by Eric D. Reicin, United States of America.
Respondent is Party Night, Inc., Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names and are registered with Key-Systems GmbH d/b/a , Bexbach, Germany.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2003. On the same date, the Center transmitted by email to Key-Systems GmbH d/b/a a request for Registrar Verification in connection with the domain names at issue. On August 7, 2003, Key-Systems GmbH d/b/a transmitted by email to the Center its Verification Response confirming that the Respondent is listed as the Registrant for the domain names at issue and providing the contact details for the Administrative, Billing, and Technical contact. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy is applicable to the registrations.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2003. Respondent did not submit any Response and the Center accordingly notified the Respondent�s default.
The Center appointed Mr. Henry Olsson as Sole Panelist in this matter on September 5, 2003. The Projected Decision Date was September 19, 2003.
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 is a corporation which is organized and existing under the laws of the State of Delaware and has its principal place of business in Reston, Virginia, United States of America. It is placed on the Fortune 500 and Forbes 200 Company list and is publicly traded on the New York Stock Exchange. Complainant is the fully owned subsidiary of SLM Corporation and is the leading provider of education funding in the United States and manages in that capacity almost US$81 billion in student loans for more than seven million borrowers. It primarily provides federally guaranteed student loans under the Federal Family Education Loan Program and offers comprehensive information and resources to guide students, parents and guidance professionals through the financial aid process.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant has declared that it will submit, with respect to any challenges that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain names that are the subject of the Complaint, to the jurisdiction of the courts of the Netherlands.
5. Parties� Contentions
A. Complainant
General
Complainant first alleges that, as serving a global population, it has developed a strong reputation as a provider of financial services and that it has offered legitimate financial services under the service mark "SALLIE MAE" since 1972, and has also used the domain name in conjunction with its financial services.
Sallie Mae, Inc. registered the trademark "SALLIE MAE" on May 21, 1985, and May 28, 1991, with the United States Patent and Trademark Office (USPTO) under registration numbers 1337128 and 1646267 and is also the owner of several other trademark registrations such as "SALLIEMAE CUP," "SALLIE MAE SOLUTIONS" etc. Those registrations constitute constructive notice of the claim of Complainant to rights in the trademark "SALLIE MAE" and those marks are incontestable under the United States law.
Furthermore, according to Complainant, it has, in addition to the statutory rights in the trademark at issue, also common law trademark rights through the use and recognition of the mark "SALLIE MAE."
Identity or Confusing Similarity
Complainant recalls in this context that it has trademark rights in the "SALLIE MAE" mark both in the United States and elsewhere stemming from its continuous use for several years in connection with its financial service operations. The domain names at issue and are confusingly similar to the trademarks registered in the United States and to the mark "SALLIE MAE." The only difference is a slight typographical error in relation to the mark of Complainant, and Complainant argues that such errors consisting of one misplaced letter easily satisfy the requirement of similarity and are, in the view of Complainant, an example of typosquatting that has been found to constitute confusing similarity, as established in other earlier cases.
Rights or Legitimate Interests
In this respect, Complainant submits that the domain names at issue were registered for a company with the name of "Party Night, Inc." and not for any entity under the names of "Saillie Mae" or "Sallei Mae," nor are those indications, to the best of the knowledge of Complainant, any acronym, trading name or nickname of Respondent. Respondent uses the domain names at issue to misleadingly divert consumer users from the intended website to a pornographic site "" as well as to a separate pop-up window for the advertising website "." This display of pornography has tarnished and continues to tarnish the reputation of Sallie Mae as a reputable lender to students both nationally in the United States and internationally and causes thus dilution of the distinctive mark created, enhanced and developed by Sallie Mae since 1972. Sallie Mae has never licensed Respondent to use its name and service mark for this or any other purpose, and Respondent has thus, in the view of Complainant, no rights or legitimate interests in the domain names at issue.
Registration and Use in Bad Faith
Complainant submits that Respondent registered the distinctive domain names at issue being nearly identical to that of Complainant in order to intentionally divert customers to its pornographic website for financial gain. Furthermore, the use made of the domain names by Respondent evidences bad faith, as the name "SALLIE MAE" is both registered by the USPTO and protected through common law rights and furthermore the United States Congress has given "Sallie Mae" the exclusive right of the name under the Federal Higher Education Act of 1965 which grants SLM Corporation (Sallie Mae) and its affiliates exclusive rights to the name "Sallie Mae."
According to Complainant, the bad faith of Respondent is further highlighted by the fact that the domain names at issue are misspellings of one commonly associated with and identified as "Sallie Mae," and the mark that is incorporated in the domain names registered by Respondent is distinctive. "Sallie Mae" is a well-established and globally known provider of educational loans with valuable goodwill upon which Respondent, according to Complainant, draws to divert users to the disputed websites.
Complainant adds that Respondent has a history of registering domain names in bad faith that are confusingly similar to registered trademarks and in which Respondent has no rights or legitimate interests. In this context Complainant refers to a number of earlier cases, adjudicated by, inter alia, WIPO Panels.
B. Respondent
Respondent did not reply to the Complainant�s contentions and is thus in default.
6. Discussion and Findings
Para. 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
In the case of default by a Party, Para. 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, Respondent has been duly notified the Complaint but has submitted no Response and none of the contentions by Complainant has been contested, despite the opportunity given to do so. The Panel will therefore have to operate on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
From the Verification Response it follows that the Policy applies to the domain name registrations at issue. Respondent is consequently obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain names.
Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:
- that the domain names registered by Respondent are identical with, or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain names; and
- that the domain names have been registered and are being used in bad faith.
In the following parts of this Decision, the Panel discusses each of those elements.
A. Identical or Confusingly Similar
In this respect, Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain names at issue are identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.
The domain names at issue are and .
From the submission by Complainant, supported by documentary evidence, follows that Complainant has registered trademark rights in the United States of America for the service mark "SALLIE MAE." The Panel also considers that Complainant has acquired common law trademark rights in the mark through its use for many years in connection with the provision of educational loans in the United States and elsewhere in the world.
It is also established that Complainant has used the domain name in conjunction with its financial services.
The domain names at issue contain the distinctive trademark of Complainant in a slightly misspelled form. In the view of the Panel, any user accessing the domain names at issue would do so in the belief that he or she accesses the website of the widely known Complainant. The character of the misspellings are not such as to take away the impression of a connection with Complainant.
On the basis of those considerations, the Panel concludes that there exists a confusing similarity between the domain names at issue and the trademark in which Complainant has rights.
B. Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain names at issue.
Complainant has submitted essentially that the domain names do not seem to have any relation to any company with the same name linked to Respondent and that Complainant has not licensed Respondent to use its name or service mark for any purpose. The use of the domain names at issue to redirect Internet users seeking the website of Complainant to a pornographic website is, according to Complainant, not a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Respondent has not submitted any Response and has thus not objected to or commented upon the allegations made by Complainant in this respect.
Upon consideration of the circumstances present in the case, the Panel accepts the allegations by Complainant to the effect that Respondent has not been authorized in any way to use the mark of Complainant and also that Respondent has made no legitimate or non-commercial use of the domain names. The Panel also finds that the actions by Respondent to use the domain names at issue to divert Internet users to a pornographic website does not constitute any legitimate interest on behalf of Respondent.
On the basis of these considerations, the Panel finds it to be established that Respondent has no rights or legitimate interests in the domain names at issue.
C. Registered and Used in Bad Faith
In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain names at issue have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.
Complainant has basically alleged that Respondent registered the domain names at issue which are nearly identical to that of Complainant, in order to intentionally divert customers to its pornographic website for financial gain. Furthermore, Respondent had, in the view of Complainant, constructive notice of the protection of the trademark of Complainant, and the disputed domain names are misspellings of one commonly associated with, and identified as, "Sallie Mae." Finally, and with reference to earlier cases, Complainant submits that Respondent has a history of registering domain names in bad faith that are confusingly similar to registered trademarks and in which Respondent has no rights or legitimate interests.
The Panel considers it inconceivable that Respondent was not aware of Complainant and its trademark at the time of the registration of the domain names at issue. On the basis of the circumstances present, the Panel furthermore concludes that Respondent attempted, and attempts, to attract, through the use of the domain names at issue, for commercial gain Internet users to its pornographic website by creating a likelihood of confusion with the well-known name and mark of Complainant. These actions amount, in the view of the Panel, to registration and use of the domain names at issue in bad faith under the Policy.
D. Conclusions
On the basis of these considerations, the Panel considers it to be established that the domain names at issue are confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and are being used in bad faith. The request by Complainant for the transfer of the domain names shall consequently be approved.
7. Decision
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 names and be transferred to Complainant.
Henry Olsson
Sole Panelist
Dated: September 9, 2003
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