WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sallie Mae, Inc. v. Martin Marketing
Case No. D2004-0357
1. The Parties
The Complainant is Sallie Mae, Inc. of Reston, Virginia, United States of America, represented by Eric D. Reicin, United States of America.
The Respondent is Martin Marketing of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows: The first Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May 13, 2004, and it identified the respondent as Jim Martin. On May�13,�2004, the Center transmitted by email to Intercosmos Media Group, d/b/a directNIC.com (“Intercosmos”), a request for registrar verification in connection with the domain name at issue. At the same time, on May 13, 2004, Intercosmos advised the Center by e-mail that they had received a Complaint by Complainant; that the current registrant of was Martin Marketing of New York, New York; that confirmed Respondent is listed as the registrant; and that provided the contact details for the administrative, billing, and technical contact. The Center then advised the Complainant that the Complaint was administratively deficient. Complainant filed an amendment to the Complaint on May�21, 2004, substituting the name for Respondent from Jim Martin to Martin Marketing. 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 May 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�13,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 14, 2004.
The Center appointed John E. Kidd as the sole panelist in this matter on June 30, 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.
Having reviewed the communication records, the Administrative Panel finds that the Center has discharged its responsibilities under Paragraph�2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondent.” In the view of the Administrative panel, the proper procedures have been followed, and it may issue its decision based upon the documents submitted in accordance with Policy, Rules and Supplemental Rules without the benefit of any response from Respondent.
4. Factual Background
The 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”). Sallie Mae is a Fortune 500 and a Forbes Super 200 Company. It is publicly traded on the New York Stock Exchange under the symbol SLM.
Sallie Mae is the leading provider of education funding in the United States, managing nearly $89,000,000,000.00 in student loans for more than 7,000,000 borrowers. Serving a global population, the Complainant has developed a strong reputation as a provider of financial services. In doing so, Complainant used the mark SALLIE MAE and its website, “”, extensively to promote and provide its services.
The Complainant registered the trademark SALLIE MAE on May�21, 1985, and May�28, 1991, with the United States Patent and Trademark Office (Registration numbers: 1,337,128 and 1,646,267). It holds a range of other trademark registrations that include the words “Sallie Mae.” All of the Complainant’s trademarks are incontestable under 15 USC ��1065.
In addition to Complainant’s statutory rights under the above-noted section of law, Complainant has also acquired common law trademark rights through the usage and recognition of the SALLIE MAE mark under 15 USC ��1127.
Respondent is the registrant of the Internet domain name, . Respondent registered the domain name in dispute on September�20, 2002, long after SALLIE MAE had made use of its mark and website in the international marketplace.
5. Parties’ Contentions
A. Complainant
The domain name in dispute is confusingly similar to the Complainant’s marks. Complainant has common law trademark rights in its SALLIE MAE mark in the United�States and elsewhere from its continuous use of the mark for many years. The Respondent’s use of the domain name, , is confusingly similar to that registered by Complainant and the mark SALLIE MAE. The disputed domain name contains a slight typographical error in relation to the mark of Complainant. Typographical errors consisting of only one inverted letter easily satisfy the requirements of similarity.
The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent and the individual are not affiliated with Sallie Mae or any other entity named “Sallie Mae.” Respondent has never been known by the name “Sallie Mae.”
The use of a domain name to misleadingly divert consumers with the intent of commercial gain evidences an illegitimate interest in a domain name. The Respondent’s unauthorized and unapproved redirection of customers when they make a slight error in typing its website appears to be solely for the purpose of achieving commercial gains. The Respondent’s misleads internet users by redirecting them from the intended website to one offering other financial services, including competing student loans, and it thus has no rights or legitimate interests to the disputed domain name.
The Complainant’s SALLIE MAE mark and “” website are essential components of its marketing program, and they have been in global use in commerce for over three years. Through this use, the SALLIE MAE mark has become distinctive and, together with its “” website, has acquired valuable goodwill. It is now well known and commonly associated with the facilitation and administration of loans to students who are pursuing post-secondary education.
The Respondent registered, and it is using the domain name in dispute in bad faith. The Respondent has constructive and actual notice of Complainant’s rights, and its continued unauthorized use of a slight, typographical error of SALLIE MAE mark is further illustrative of Respondent’s bad faith intention in its use of the disputed domain name.
Furthermore, the Respondent has a history of registering domain names in bad faith that are confusingly similar to registered marks of others and to which the Respondent has no rights or legitimate interests. See Pfizer v. Martin Marketing, WIPO Case No.�D2002-0793.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Identical or Confusingly Similar Domain Name
Pursuant to paragraph 4(a) of the policy, the Complainant has the burden to submit evidence in order to convince the panel to have the domain name in dispute transferred to Complainant. In light of Respondent’s failure to submit a response, the Administrative Panel, pursuant to the Rules, may draw such inferences, including adverse inferences, as it considers appropriate. See Charles Jourdan Holdings AG v. AAIM, WIPO Case No. D2000-0403.
The Complainant is the owner of trademark registrations for the trademark SALLIE MAE in the United States of America. The Complainant has established that it has a distinctive mark and that it is a well known, strong mark of significant value to the Complainant. The Administrative Panel finds that the use of the domain name in dispute is confusingly similar to the marks and website of Complainant, and it is likely to cause confusion to others.
6.2 Respondent’s Rights or Legitimate Interests in the Domain Name in Dispute.
The Respondent has not provided evidence of circumstance of the type specified in Paragraph�4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name in dispute. The Administrative Panel is satisfied that the Complainant has made out a prima facie case that the domain name in dispute was registered and used by Respondent for the sole purpose of creating a likelihood of confusion with Complainant’s mark and website address which, in the absence of any response from the Respondent, is sufficient to satisfy the second element of the test in Paragraph�4(a)(ii) of the Policy. See Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No.�D2001-0205. In view of the fact that Respondent is not affiliated with Sallie Mae; that Respondent, is not known by the domain name in dispute; that Complainant has prior rights in the domain name, that precede Respondent’s registration; and further that the Complainant has not licensed or otherwise permitted the Respondent to use its name and service mark, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name in dispute.
The Administrative Panel also views Respondent’s failure to respond as further evidence that it has no rights or legitimate interests in the domain name in dispute. See Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., WIPO Case No. D2000-1221, Geocities v. G, WIPO Case No.�D2000-0326.
Domain Name Registered and Used in Bad Faith
6.3 The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the acts of Respondent amounted to acting in bad faith. It concludes that it does. The circumstances of this case that lead to this conclusion are:
a. The Complainant’s registered mark is a strong mark that is well known in the trade. This is evidenced by the substantial and continuous use of the registered mark, SALLIE MAE, for over thirty (30) years in order to offer financial services under the mark to 7,000,000 borrowers. The fact that Respondent has chosen a confusingly similar domain name that is not an acronym of the Respondent’s name, trading name nor its nickname is evidence of bad faith.
b. The Complainant has made a prima facie case from which it can be inferred that Respondent had actual knowledge of, or should have been aware of, Complainant’s rights in the mark and domain name use of SALLIE MAE. Registration of a domain name that creates confusion, with actual knowledge of Complainant’s rights, as the uncontested facts shown here, is evidence of bad faith.
c. The Administrative Panel also finds that the Respondent is, in fact, using the domain name in dispute that can result merely from common misspelling in order to attract “for commercial gain, Internet users to Respondent’s website . . . by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.” In the opinion of the Administrative Panel, this is an example of bad faith use and registration under the Policy.
d. The Administrative Panel also finds, as another example of bad faith, the registering of a domain name which contains a slight typographical error by inverting two letters of “Mea” for “Mae” while knowing that the domain name, , is owned and used by another and without proper permission or license to do so. The Complainant has made a prima facie case that the inverting of the two letters by Respondent is a deliberate attempt by Respondent to exploit the typographical mistakes of Internet users when seeking Complainant’s website. This qualifies as a form of “typo-squatting” which has been recognized as a bad faith use of a domain name under the Policy. See Bank of American Corp. v. Inter Mos, NAF Claim No.�FA95092.
e. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name in dispute.
f. In light of these circumstances, the Administrative Panel concludes that the Respondent has both registered and used the domain name in dispute in bad faith.
7. Decision
The Administrative Panel decides that the Complainant has proven each of the three elements in Paragraph�4 of the Policy. Accordingly, the Administrative Panel for all of the foregoing reasons and in accordance with Paragraph�4(i) of the Policy and Paragraph�15 of the Rules orders that the domain name is to be transferred to the Complainant.
John E. Kidd
Sole Panelist
Dated: July 14, 2004
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