WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Upromise, Inc. v. Specialneedsadvisors Case No. D2008-1541 1. The Parties
The Complainant is Upromise, Inc. (“Complainant”), of Reston, Virginia, United States of America (“United States”), represented internally by Sallie Mae Inc., United States of America.
The Respondent is Specialneedsadvisors (“Respondent”), of Harrisburg, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2008 by email and October 13, 2008 in hardcopy. On October 9, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 9, 2008, the Registrar transmitted by email to the Center its verification response disclosing the Registrant and providing contact information for the Disputed Domain Name that differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 16, 2008 both by email and in hardcopy. On October 20, 2008, 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.
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 20, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 9, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on November 12, 2008.
The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on December 2, 2008. 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 wholly owned subsidiary of SLM Corporation, commonly known as Sallie Mae. Together, Complainant and Sallie Mae offer parents and students a comprehensive financial solution to access college - including a broad range of college savings vehicles, information, and student loans. Complainant assists its members with automatic savings through rebates on everyday purchases. Additionally, Complainant, through its subsidiary, Upromise Investments, Inc., is the largest administrator of direct-to-consumer 529 college savings plans, administering approximately 1.2 million college savings accounts.
Named after Section 529 of the Internal Revenue Code, a 529 savings plan is a tax-advantaged savings vehicle designed specifically for college savers. 529 savings plans are an innovative way to invest with the goal of paying the costs of higher education. Complainant offers its reward service members the opportunity to link their Upromise account to a participating 529 savings plan so that their savings can be transferred automatically into their plan on a periodic basis.
Complainant has operated and offered services under the mark UPROMISE since 2000. Complainant is the owner of United States Trademark Registration Nos. 2,618,696 for the mark UPROMISE, registered September 10, 2002, and 2,669,900 for the mark UPROMISE & Design, registered December 31, 2002, both for “providing rebate-funded savings and investment services for money to be spent on education; financial and investment consultation and investment management services in the field of savings for education; providing information via the Internet on the subjects of savings and investment for education; charitable fund-raising for educational purposes; [and] philanthropic services concerning monetary donations to be used for education” in [International] Class 36. These marks are incontestable under 15 U.S.C. § 1065. Complainant has also registered and used the domain name in conjunction with its financial services.
Respondent registered the Disputed Domain Name with the Registrar on December 23, 2006. Complainant provided evidence that the Disputed Domain Name is being used by Respondent to re-direct Internet users to other websites offering financial services in competition with Complainant's services.
Complainant notes that, on September 25, 2007, Complainant was awarded a favorable decision in Upromise Inc. v. William Parker,WIPO Case No. D2007-0993 against the administrative and technical contact for the Disputed Domain Name, with an identical address as the Respondent in this case (the “Prior Adverse WIPO Decision”), in which the panel ordered the domain name and 23 other similar domain names transferred to Complainant. 5. Parties' Contentions A. Complainant
In its Complaint, Complainant contends that the Disputed Domain Name is identical or confusingly similar to its UPROMISE mark. Complainant contends that its UPROMISE mark and “www.” website are essential components of its marketing program and have acquired valuable goodwill, being well known and commonly associated with providing rebate-funded savings and investment services for education. Complainant contends that the addition of the descriptive term “529” to Complainant's UPROMISE mark in the Disputed Domain Name does not dispel the confusing similarity arising from Respondent's wholesale appropriation of Complainant's mark. Complainant further contends that because the panel in the Prior Adverse WIPO Decision concluded that the domain name was confusingly similar to Complainant's mark and the only difference between that domain name and the Disputed Domain Name is the .com extension, this Panel should reach the same conclusion as the previous panel.
In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant contends that, to the best of its knowledge, the Disputed Domain Name is not an acronym of Respondent's name, a trading name, or its nickname. Complainant contends that Respondent, in an attempt to receive financial gain, intentionally redirected patrons to Complainant's competitors and tainted Complainant's reputation as a financial solution to saving for college. Complainant further contends that it has not licensed Respondent the rights to use Complainant's name and/or service marks for this or any other purpose.
Finally, Complainant contends that Respondent registered and is continuing to use the Disputed Domain Name in bad faith. Complainant contends that Respondent registered the Disputed Domain Name incorporating Complainant's UPROMISE mark in its entirety and did so in order to intentionally divert customers to its website for financial gain. Complainant also contends that it sought numerous attempts to amicably resolve this matter with Respondent and that Respondent's refusal to transfer the Disputed Domain Name to Complainant in light of the Prior Adverse WIPO Decision is further evidence of Respondent's bad faith.
In support of its contentions, Complainant has made several references to previous UDRP decisions. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Panel's jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name registered by Respondent has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel will decide this administrative proceeding based on Complainant's undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b). A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's registered UPROMISE mark. The Disputed Domain Name consists of Complainant's UPROMISE mark in its entirety and the addition of the descriptive term “529.”
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's UPROMISE mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). The addition of the term “529” as a prefix does not obviate the confusing similarity between the Disputed Domain Name and Complainant's UPROMISE mark. See, e.g., Oki Data Americas, Inc. v. Albert Jackson,WIPO Case No. D2004-0087 (holding that the inclusion of the generic term “printer” in was confusingly similar to complainant's trademark OKIDATA); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), supra (adding generic words to a distinctive mark “does not change the overall impression of the designations as being a domain names [sic] connected to the [c]omplainant”); America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark).
For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the UPROMISE mark, a service mark in which Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal.
Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. In fact, Complainant has offered evidence that Respondent has used the Disputed Domain Name to re-direct Internet users to other websites offering financial services in competition with Complainant's services. Complainant has also asserted Respondent never received a license from Complainant to use the mark for this or any other purpose. Respondent's use of the Disputed Domain Name to provide links to services that are related to those of the Complainant does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick's Foundation Inc. v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through' scheme does not serve to establish a bona fide offering of goods or services”).
Furthermore, the undisputed record indicates that Respondent registered the Disputed Domain Name more than five years after Complainant established rights in its UPROMISE mark through use. Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name and that Respondent deliberately incorporated Complainant's UPROMISE mark in its entirety in the Disputed Domain Name in order to suggest an association between the Disputed Domain Name and Complainant.
In short, there is simply no evidence in the record from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Name.
For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant also argues that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant has submitted evidence that the Disputed Domain Name resolves to an advertising portal with college savings plan services-related links. In other words, Respondent appears to have used the Disputed Domain Name in order to intentionally trade on the goodwill in the UPROMISE mark and to attract traffic to other websites for commercial gain (pay-per-click revenue), which previous panels have concluded may support a finding of bad faith. See St. Baldrick's Foundation Inc. v. Web Advertising, Corp., supra (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through' sites, can be considered to be evidence of bad faith.”); Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 (“[T]he practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.”). The Panel does note that Respondent is not currently using the Disputed Domain Name for this purpose. The Disputed Domain Name currently resolves to a holding page that states “Sorry! This site is not currently available.” This page does not offer any services or goods sold by reference to the registered UPROMISE marks. Respondent's current use of the Disputed Domain Name, however, does not affect the Panel's conclusion in this case because Respondent's passive holding of the Disputed Domain Name does not prevent a finding of bad faith.
As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name, which evidences bad faith on Respondent's part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Moreover, the Panel is further convinced of Respondent's bad faith because it is highly unlikely that there is any legitimate reason for Respondent's choice of the Disputed Domain Name incorporating Complainant's UPROMISE mark, and Respondent elected not to respond to the Complaint. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (the fact that the complainant was “widely known” by its trademarked name contributed to the panel's conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would not be illegitimate”); Justerini & Brooks Limited v. “Colmenar”,WIPO Case No. D2000-1308 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant); eBay, Inc. v. SGR Enterprises,WIPO Case No. D2001-0259 (quoting Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would be legitimate.”).
Furthermore, it is widely accepted that passive holding of a domain name does not as such prevent a finding of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (finding the respondent's passive holding of the domain name constituted bad faith); Also see, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409. In such cases, the panel must examine all the circumstances to determine whether the respondent is acting in bad faith.
In this case, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Name in bad faith. The Panel again notes that Complainant's UPROMISE mark is widely known, that Respondent has failed to respond to the Complaint or otherwise participate in these proceedings, and that the Panel can not conceive of a good faith use of the Disputed Domain Name by Respondent. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case. 7. Decision
For all the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the Disputed Domain Name, , be transferred to Complainant.
Steven M. Auvil
Sole Panelist
Dated: December 16, 2008
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