Complainant is Sallie Mae, Inc. of Newark, Delaware, United States of America.
Respondent is 林彦晓 of Guangzhou, Guangdong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) involving the domain names , and on July 2, 2013. On July 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 4 and 5, 2013, the Registrar transmitted by email to the Center its verification responses confirming that 林彦晓 is listed as the registrant for the disputed domain names and , and […] is listed as the registrant for the domain name , and providing the contact details for both registrants. The Center sent an email communication to Complainant on July 10, 2013 providing the registrants and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 16, 2013, in which specifically requested to omit the domain name . Accordingly, the Center notified the requested withdrawal of the domain name on July 17, 2013.
On July 17, 2013, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceedings. On July 18, 2013, Complainant requested that English be the language of the proceeding. Respondent did not comment on the language of the proceedings 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. Respondent did not submit any response. Accordingly, the Center informed the parties of Respondent’s default on August 26, 2013.
The Center appointed Yijun Tian as the sole panelist in this matter on August 26, 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.
On September 12, 2013, the Panel issued the Procedural Order No.1 requesting Complainant to provide the omitted Annexes 2 to 4 to the Complaint by September 17, 2013. Respondent was granted until September 22, 2013 for providing any comments regarding Complainant’s submission in response to the Procedural Order No.1. The decision due date was extended to September 27, 2013. On the same day, the Center received Complainant’s submission, which was forwarded to the Panel shortly. Respondent did not provide any comments by the specified due date. 4. Factual Background
Complainant, Sallie Mae, Inc, is a company incorporated in Newark, Delaware, United States of America (USA). Complainant is a leading USA financial services company specializing in education. Complainant has exclusive rights in the SALLIE MAE marks in the USA since 1991(Annex 3 to the Complaint). Sallie Mae Bank, established in 2005, is an affiliate of Sallie Mae, Inc. Sallie Mae Bank registered the SALLIE MAE BANK marks since 2006, and the SALLIE MAE logo in 2013 (Annex 3 to the Complaint). Moreover, Complainant has used the domain names and in conjunction with its financial and banking services.
Respondent is 林彦晓 of Guangzhou, Guangdong, China. The disputed domain names and were both registered on June 3, 2013, long after the SALLIE MAE marks became internationally well-known. 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are identical and confusingly similar to a trademark or service mark in which Complianant has rights.
Complainant has registered trademark rights in its SALLIE MAE and SALLIE MAE BANK marks in the USA and elsewhere from its continuous use of the marks for several years.
The disputed domain names are identical to the trademarks registered by Complainant.
Respondent has merely added descriptive terms to the disputed domain names.
In previous UDRP decisions, panels have found the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identical or confusingly similarity for purposes of the Policy.
Respondent has simply added the descriptive terms “loans” and “online” to Complainant’s well-known trademarks, arguably adding to the likelihood of confusion.
Complainant has satisfied the requirements of the Policy by showing that the disputed domain names are confusingly similar to Complainant’s registered SALLIE MAE and SALLIE MAE BANK marks.
(b) Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has no rights or legitimate interests with respect to the disputed domain names.
The use of a domain name with the intent for commercial gain to misleadingly divert consumers or to tarnish the service mark at issue evidences an illegitimate interest in a domain name.
Respondent is using these disputed domain names to financially benefit from pay-per-click ads that relate to similar services of Complainant.
The fact that this domain name refers to a parking page tends to demonstrate the lack of right or legitimate interest of the Respondent.
Respondent, in an attempt to receive financial gain, intentionally purchased the disputed domain names to profit from Complainant’s marks.
Respondent does not have rights or legitimate interests in the disputed domain names.
(c) The disputed domain names were registered and are being used in bad faith.
Respondent registered the disputed domain names in bad faith. Respondent registered the disputed domain names incorporating Complainant’s marks in order to intentionally divert customers to its website for financial gain.
Respondent has registered and is using the disputed domain names in bad faith.
It is evident that Respondent registered the disputed domain names for the purpose of selling the domain name registrations for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain names.
Complainant has reserved the rights to the names SALLIE MAE and SALLIE MAE BANK by registering the service marks with the United States Patent and Trademark Office (USPTO).
Respondent’s bad faith is highlighted by the fact that the disputed domain names incorporate the entirety of Complainant’s marks or misspellings thereof.
There can be no doubt that Respondent registered and has used these disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
The language of the registration agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:
(a) Complainant’s trademarks incorporated into the dispute domain names are federally registered with the USPTO (Annex 3 to the Complaint);
(b) Complainant’s trademarks are all owned by Sallie Mae, Inc., a USA corporation incorporated in the State of Delaware;
(c) Respondent has registered and is using the disputed domain names incorporating Complainant’s trademarks;
(d) The disputed domain names and the websites associated with the disputed domain names are in English (Annex 4 to the Complaint);
(e) Given the above facts, it should be assumed that Respondent speaks English and would anticipate these proceedings to be conducted in English.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain names include Latin characters “sallie mae” and English words “bank”, “loans” and “online” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names and are registered in Latin characters and particularly in English language, rather than Chinese script; (b) the websites at the disputed domain names are English-based websites; (c) the websites appear to have been directed to Internet users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English; and (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceedings is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the SALLIE MAE and SALLIE MAE BANK marks acquired through registration. The SALLIE MAE and SALLIE MAE BANK marks have been registered in the USA since 1991, and Complainant has a widespread reputation as a leading national financial services company specializing in education in the USA.
The disputed domain names and comprise the SALLIE MAE and SALLIE MAE BANK marks in their entirety. The disputed domain names only differ from Complainant’s trademark by the addition of the word “loans” and “online” to the mark SALLIE MAE BANK respectively. These do not seem to eliminate the identity or at least the similarity between Complainant’s registered trademarks and the disputed domain names.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
The mere addition of the descriptive term “loans” or “online” as a suffix to Complainant’s marks fails to distinguish to this Panel the disputed domain names from Complainant’s trademarks. By contrast, it may increase the likelihood of confusion. “Loans” is one of the major services of Complainant. Internet users who visit the website at the disputed domain name are likely to be confused and may falsely believe that “www.” is operated by Complainant for providing Sallie Mae-branded loan services. Similarly, Internet users who visit the website at the disputed domain name are likely to be confused and may falsely believe that “www.” is operated by Complainant for providing Sallie Mae/Sallie Mae Bank-branded online banking services.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the SALLIE MAE and SALLIE MAE BANK marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
As discussed above, Complainant has rights in the SALLIE MAE and SALLIE MAE BANK marks in the USA since 1991. Sallie Mae Bank, established in 2005, is an affiliate of Sallie Mae, Inc, and provides education loans and savings products to students and their families as part of Sallie Mae’s overall dedication to help students and families save, plan and pay for college. Sallie Mae registered the SALLIE MAE BANK mark since 2006. As such, both SALLIE MAE and SALLIE MAE BANK marks registrations long precede Respondent’s registration of the disputed domain names (June 3, 2013).
Moreover, according to Complainant, Complainant is a leading national financial services company specializing in education in the USA. Respondent is not an authorized dealer of Sallie Mae and/or Sallie Mae Bank branded services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the words “sallie mae” or “sallie mae bank” in its business operation or the use of the SALLIE MAE and/or SALLIE MAE BANK marks and design on its websites (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the SALLIE MAE and/or SALLIE MAE BANK marks or to apply for or use any domain name incorporating the SALLIE MAE and/or SALLIE MAE BANK marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domains names and respectively on June 3, 2013. The disputed domain names are identical or confusingly similar to Complainant’s SALLIE MAE and/or SALLIE MAE BANK marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising and, offering for sale the disputed domain names.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraphs 4(b)(i) and 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the SALLIE MAE and SALLIE MAE BANK marks with regard to its education loan services. Complainant has registered its SALLIE MAE and SALLIE MAE BANK marks in the USA since 1991 and 2006 respectively. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain names. The Panel therefore finds that the SALLIE MAE and SALLIE MAE BANK marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s Sallie Mae and/or Sallie Mae Bank branded services. b) Used in Bad Faith
Complainant has adduced evidence to prove that “Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names”. Complainant has also adduced evidence to prove that by using a confusingly similar domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
According to the information provided by Complainant, each website resolved by the disputed domain names has a banner stating that the domain “is listed for sale for $1,500. Click here to purchase this domain”. Moreover, given the widespread reputation of the SALLIE MAE and SALLIE MAE BANK marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names are resolved.
In other words, Respondent has through the use of confusingly similar domain names created a likelihood of confusion with the SALLIE MAE and SALLIE MAE BANK marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the webpage of the disputed domain names, potential Internet users are led to believe that the websites at the disputed domain names are either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. See paragraph 4(b)(iv) of the Policy. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names were used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain names, which are confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites on to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 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 disputed domain names and be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 23, 2013
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