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Sallie Mae, Inc. v. Michele Dinoia [2004] GENDND 1343 (18 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sallie Mae, Inc. v. Michele Dinoia

Case No. D2004-0648

1. The Parties

The Complainant is Sallie Mae, Inc. of Reston, Virginia, United States of America, represented by Eric D. Reicin of Reston, Virginia, United States of America.

The Respondent is Michele Dinoia of Pineto, Teramo, Italy, represented by Avvocato Valerio Donnini of Pescara, Pescara, Italy.

2. The Domain Name and Registrar

The disputed domain name <sallie.com> is registered with Tuonome.it.srl.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2004, (electronic version) and confirmed on August 19, 2004 (hardcopy). On August 18, 2004, the Center transmitted by email to Tuonome.it.srl a request for registrar verification in connection with the domain name at issue. On August 20, 2004, Tuonome.it.srl transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 27, 2004. 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 September 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2004. The Response was filed with the Center on September 17, 2004.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on October 4, 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.

4. Factual Background

Complainant has submitted evidence of registration of the following trademarks:

Respondent registered the disputed domain name on July 3, 2001.

5. Parties’ Contentions

A. Complainant

A.1. Identity or Confusing Similarity

Complainant asserted the following:

Respondent’s use of the domain name <sallie.com> is confusingly similar to the trademark SALLIE MAE. The identical copy of another’s trademark creates a presumption of likelihood of confusion among Internet users as a matter of law (and cites People for the Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915, 920 (E.D. Va. 2000)). Respondent’s registration and use of the domain name <sallie.com> is prima facie evidence that the Respondent has used and registered a service mark which creates a likelihood of confusion among Internet users.

Complainant has acquired common law rights to the trademark SALLIE MAE, through use and recognition thereof.

Complainant cites two UDRP cases in which it has acted in its capacity as Complainant, in which the corresponding Respondents had registered typographical errors or variations of Complainants trademark SALLIE MAE: Sallie Mae, Inc. v. Martin Marketing, WIPO Case No. D2004-0357 and Sallie Mae, Inc. v. Party Night, Inc., WIPO Case No. D2003-0612.

A.2. Respondent’s lack of rights or legitimate interests in respect of the domain name

Complainant submitted the following statements and cited the following cases:

Respondent, in an attempt to receive financial gain, intentionally redirected patrons of <salliemae.com> to various dating service websites, and tainted Sallie Mae’s reputation as an educational lender. This is contrary to Paragraph 4(c)(iii) of the Policy.

Complainant cites Sallie Mae v. Ling Shun Shing, WIPO Case No. D2003-0445, another typosquatting case, to state that “[in that case,] Respondent’s diversion of Internet users to an identical or similar search engine website was not found to be a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).”

Respondent, in order to obtain a captive and unsuspecting audience, misleads Internet users by directly diverting them from the intended “www.salliemae.com” website, to one that displays various dating service venues. Respondent’s use of this domain name to exhibit and sell dating services is prima facie evidence of dilution of Complainant.

The usurpation and direct diversion of the <sallie.com> domain name tarnishes Complainant’s service mark (and cites Online Partners.Com Inc. v. Atlanticnet Media Corp., 2000 U.S. Dist. LEXIS 783, at *24 (N.D. Cal. 2000) (quoting, in turn, Panavision Int’l v. Toeppen, [1998] USCA9 991; 141 F. 3d 1316, n.7 (9^th Cir. 1998): “Tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service.”)

A.3 Bad faith registration and use

Complainant submitted the following arguments:

Respondent registered a domain name nearly identical to that of Complainant, in order to intentionally divert customers to its website for financial gain.

Respondent’s use of a registered service mark evidences its bad faith.

Respondent had constructive notice of Sallie Mae’s rights, therefore, its unauthorized use of the service mark is illustrative of a bad faith intention.

The United States Congress has given Complainant exclusive use of the name Sallie Mae.

The disputed domain name <sallie.com> is a shortened form commonly associated with and identified as Complainant.

Complainant sent Respondent a demand letter requesting Respondent to remove all data relating to Complainant from Respondent’s Website. The Respondent did not respond to any of these demand letters.

B. Respondent

B.1. Identity or Confusing Similarity

Respondent submitted the following arguments:

The disputed domain name <sallie.com> is based on a generic word, “sallie,” which is a common name for a woman, derived from the name Sarah or from the name Sally or from the word Lady (and cites Webster’s on-line dictionary – Rosetta edition).

Said proper name cannot be suggestive of the services of Complainant, and must be considered a common descriptive word when used in the contexts and channels of commerce outside the services provided by Complainant.

Complainant’s trademark is SALLIE MAE. It is not identical to the disputed domain name <sallie.com>, which is limited to the name <Sallie>, which is a common name. The rights of Complainant cannot be established on a generic word. Said word cannot be protected without proof of acquired distinctiveness or secondary meaning (and cites 2 McCarthy on Trademarks, § 15:2 (2000)).

There is no evidence that the term SALLIE, on its own, has acquired secondary meaning or distinctiveness in the eyes of the purchasing public, nor is there evidence that the Complainant is identified with the name “Sallie”; all the arguments and evidence provided by Complainant are related to the mark SALLIE MAE, not to the name SALLIE.

According to Televisa v. Retevision Interactiva S.A, WIPO Case No. D2000-0264, a Complainant cannot claim exclusive rights to a highly generic and descriptive word (and cites Successful Money Management Seminars Inc. v. Direct Mail Express, National Arbitration Forum Case No. FA96457; FilmNet Inc. v. Onetz, National Arbitration Forum Case No. FA96196 and eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, National Arbitration Forum Case No. FA157287.

A mark consisting entirely of a common, descriptive word is entitled to less protection under United States trademark law. Ownership of the mark SALLIE MAE does not ipso facto give Complainant the exclusive right to the descriptive name “Sallie” in all contexts (and cites PRIMEDIA Special Interest Publications Inc. v. John L. Treadway, WIPO Case No. D2000-0752). In the public mind, the mark SALLIE will be regarded as generic.

A Google search for “SALLIE” excluding “SALLIEMAE” yielded about 243,000 third-party uses of the first name.

There is no evidence of any association of the name “Sallie,” on its own, with Complainant’s business, no evidence showing that the name “Sallie” has become distinctive of Complainant or of its goods or services, no evidence of any investment in the name SALLIE by way of use or advertising, and no evidence that Respondent or the Domain Name has diverted customers from Complainant.

Complainant has not met the onus of proof that the name SALLIE is deemed inherently distinctive of its services; there is no distinctiveness in the name SALLIE on its own, while the exclusive rights of the Complainant can be claimed only on the words SALLIE MAE.

The UDRP decisions cited by Complainant: WIPO Case No. D2003-0612 and WIPO Case No. D2004-0357 cannot lead to the conclusion that there is confusing similarity between the disputed domain name and Complainant’s mark, because in both cases the contested domain names were misspellings of Complainant’s mark; in the present case, the disputed domain name is a common name, which cannot create confusion and cannot be considered similar to Complainant’s mark.

B.2. Respondent’s rights or legitimate interests in respect of the domain name

The business model of the Respondent is, among others, to register numerous domain names incorporating common names, and to resell or to use them for websites, also for vanity-type e-mail websites; the registration of such domain names is made by the Respondent also in order to allow customers to match their name (and cites Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620, to argue that Respondent’s activity is legitimate).

Respondent selected the name “Sallie” because it has a considerable commercial value.

The use of terms that may be appropriate for vanity e-mail, or even for sale, is a legitimate business (and cites International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210, and General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), National Arbitration Forum Case No. FA92531).

Since the business of registering, even for re-selling, generic domain names is a legitimate business activity, Respondent, who is a dealer in generic domain names, has a legitimate interest in the contested domain name <sallie.com> (and cites John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403).

Registration of an ordinary word as a domain name, and use of that domain name for an ordinary, non-trademark significance, can be a legitimate interest (citing Thrifty, Inc. and Thrifty Rent-A-Car System, Inc. v. Peter George, WIPO Case No. D2002-0140; Seaway Bolt & Specials Corp. v. Digital Income Inc., National Arbitration Forum Case No. FA114672; and, Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc., WIPO Case No. D2002-0658).

Respondent has rights and a legitimate interest in the disputed domain name by virtue of the commonly descriptive character of the word “Sallie” (and cites Energy Source Inc. v. Your Energy Source, National Arbitration Forum Case No. FA96364; Ultrafem, Inc. v. Warren R. Royal, National Arbitration Forum Case No. FA97682, and Rusconi Editore S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875 – citing in turn Shirmax Retail Ltd. v. CES Marketing, Inc., eResolution Case No. AF-0104: “Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner.”)

Given the inherent non-distinctiveness of the name, it was open to anyone to register the disputed domain name (and cites Deanna S.p.A. v. Worldwide Media Inc., WIPO Case No. D2003-0964: Respondent was entitled to register the domain name consisting of a common name for a woman).

B.3 Bad faith registration and use

Complainant has not provided any evidence of facts which might indicate that the Respondent knew or should have known of Complainant’s trademarks or that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interests or even that Respondent was aware of Complainant’s existence when it registered the domain name. Complainant has failed to prove by a preponderance of the evidence that Respondent had actual or constructive notice of the Complainant’s trademark at the time Respondent registered the disputed domain name. Moreover, Complainant did not bring any evidence showing that the Respondent was aware of the Complainant or its business activity prior to being informed by Complainant of said fact. Complainant and Respondent live in different countries. Since there is no evidence of the fame of Complainant’s trademark in Respondent’s country, this cannot be considered as a case of mala fide registration and use of the domain name (citing Bernardaud Porcelaines de Limoges S.A. and Bernaudaud N.A. Inc. v. Chapman Capital LLC, WIPO Case No. D2001-0247.)

Considering that the name “Sallie” is a common first name, it is not possible to conclude that Respondent’s registration was motivated by bad faith (citing Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654: <tammy.com> legitimately registered because it contained a common female name; Rusconi Editore S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875; and Deanna S.p.A. v. Worldwide Media Inc., WIPO Case No. D2003-0964.)

Complainant has not argued, and has not submitted evidence showing that the Respondent registered the disputed domain name specifically for the purpose of selling it to the Complainant or to a competitor of the Complainant. It would appear unlikely that Respondent, an Italian citizen, living and having a place of business in Italy, was aware that a United States organization had a registered trademark or a common law mark in what would appear to be a generic name.

There is no evidence showing that Respondent registered the disputed domain name with intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark or to confuse consumers, together with a pattern of such conduct, or to attract customer’s seeking to purchase its products.

Respondent did not register, and has not used the disputed domain name in bad faith. To prove bad faith registration and use of a common word domain name, the Complainant must prove either that the disputed domain name was registered specifically to sell to the Complainant, or that its value derives exclusively from the fame of the Complainant’s mark. There is no evidence to support either basis for bad faith registration and use. The disputed domain name incorporates the extremely common word “sallie.”

Respondent’s business, relating to the registration of generic names, and reselling or useing them for websites, as well as for vanity e-mail websites, is different from Complainant’s activity, which is based on financial services.

Complainant has not produced evidence that Respondent’s domain name has caused confusion between Complainant and Respondent. In the remote chance that a consumer types <sallie.com> into the browser in hopes of arriving at Complainant’s site, there is no chance of “initial interest” or other confusion. There is no evidence showing that Respondent was using <sallie.com> to sell products that compete with those of Complainant. Clearly, anybody who goes to the <sallie.com> website would know immediately that it has not reached Complainant.

Registration of dictionary terms with obvious generic meanings does not show a pattern of cybersquatting (citing Trans Continental records, Inc v. Compana LLC, WIPO Case No. D2002-0105; Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich v. Beyonet Services, WIPO Case No. D2000-0161: <zero.com> legitimately registered because “zero” is a short, common word; Shirmax Retail Ltd. v. CES Marketing Group, eResolution Case No. AF-0104, id.).

The statement of the Complainant that the Respondent did not reply to the request of transfer of the domain name by the Complainant is false. On behalf of the Respondent, Respondent’s Representative sent an email on July 29, 2004, to Ms. Correllus, Senior Paralegal of Sallie Mae, Inc., assuring the removal of every data related to Complainant from the domain name, if present.

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has proven its rights in the trademark SALLIE MAE in the United States.

Respondent’s domain name <sallie.com> incorporates a common female first name, “Sallie.”

Complainant has not submitted evidence showing that it has any rights to the name “Sallie,” alone, or that Complainant’s use of said name alone has acquired secondary meaning. Likewise, no common law rights have been claimed in the name SALLIE.

Complainant has prevailed in other cases handled under the Policy. However, said cases were typosquatting cases, i.e.,: Sallie Mae, Inc. v. Martin Marketing, WIPO Case No. D2004-0357 and Sallie Mae, Inc. v. Party Night, Inc. WIPO Case No. D2003-0612, and Sallie Mae, Inc. v. Ling Shun Shing, WIPO Case No. D2003-0445. This Panel agrees with those Panels that found the disputed domain names in each of the cited cases confusingly similar with Complainant’s trademark SALLIE MAE. However, this case is distinct. This Panel faces not a typosquatting case. The case is about the elimination of an entire word: MAE, from the trademark SALLIE MAE, which can hardly be considered a misspelling or typographical error, especially considering that the remaining part of the mark, SALLIE, has a significance of its own, being a common and frequently used name of a female. In such a case, Complainant’s trademark must be compared to a domain name that reproduces an ordinary and common first name of a woman.

Complainant has built a strong trademark in the United States, relating to financial services linked to educational loans. This Panel has found that said mark is well established in the United States market, and that it is a solid source identifier for the services it offers. This Panel is also convinced that Complainant is perceived as the leading provider of said services in the United States. Complainant’s United States trademark rights have not been contested by Respondent and thus their validity remains unchallenged.

The name “Sallie” is entirely comprised within Complainant’s trademark SALLIE MAE. This makes the former undoubtedly similar to the latter. The question is whether it is confusingly similar thereto.

Complainant has not claimed any rights to the word “sallie” and has not shown that said word is, or has been in any way associated to its services, when considering the word independently. No trademark rights can be claimed to a common, generic or descriptive word, if said word has not acquired distinctiveness through use and recognition in the market (see, mutatis mutandis, Televisa v. Retevision Interactiva S.A., WIPO Case No. D2000-0264.)

This Panel agrees with the reasoning set forth by the Etam, plc v. Alberta Hot Rods (supra) Panel: Because it cannot be said that Complainant has exclusive rights to this fairly short, non-fanciful name, Respondent may legitimately develop its own use of the name in an unrelated field (citing, in turn, Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).

Complainant has failed to provide any proof of actual confusion between its trademark SALLIE MAE and the disputed domain name <sallie.com>. Complainant has not proved its point that a given consumer, looking for Complainant’s services would be misled or confused when facing Respondent’s domain name, which is active and resolves to an active website by means of which Respondent offers services that are unrelated to those of Complainant.

Respondent claims to be engaged in the business of acquiring generic domain names, and selling them for websites, as well as vanity e-mail applications. Domain names that Respondent has acquired include <filings.net>, <streetcars.net> and <grands.net>. Respondent claims that the disputed domain name reproduces a generic, common first name to which Complainant has no trademark rights. Respondent submitted evidence showing that the word SALLIE is mentioned in Webster´s on-line dictionary, as a name that signifies or is derived from “a lady,” “a princess,” which “was first used in popular English literature sometime before 1868.” Webster’s dictionary also states that SALLIE is a “common misspelling or typo for: saline, sallied, Sallies, sally, silly.” No reference is made to misspellings or typographical errors regarding SALLIE MAE. Etam, plc v. Alberta Hot Rods (supra), and Deanna S.p.A. v. Worldwide Media Inc. (supra) have already established that it is permissible for a Respondent to register the common name of a woman. Complainant has not claimed or established exclusive rights to the word “sallie,” or proved that it has used said name in such a manner as to achieve the acquired distinctiveness or secondary meaning of said word, in connection with its services.

Furthermore, when comparing the trademark SALLIE MAE, and the disputed domain name <sallie.com>, considering that the latter reproduces a common name of a woman, that Complainant has proved ownership of trademark rights and extensive use of its trademark in the United States, but not in the jurisdiction where Respondent lives, Italy, and that Complainant has not put before this Panel a convincing argument showing that consumers looking for educational loans would be mislead or diverted to Respondent’s site offering vanity e-mail or dating services, the Panel finds that Complainant’s trademark and the disputed domain name, taken as a whole, are not confusingly similar.

With respect to Complainant’s allegations that Respondent’s use of the disputed domain name tarnishes Complainant’s mark, this Panel finds that Respondent’s vanity e-mail or dating services are offered through the domain name <sallie.com>, which could be associated in the minds of Respondent’s consumers to any of such services, due to the fact that said domain name is the name of a female person. Respondent is not using Complainant’s trademark SALLIE MAE, or any misspelling or variation thereof. Respondent is not offering services that could cause confusion among Complainant’s customers or prospective customers. This Panel also finds that Complainant’s mark has not been “improperly associated with an inferior or offensive product or service.” Complainant has not established any relationship with or comparison to Respondent’s services, and thus it cannot be said that one service is inferior or superior when compared to the other, because financial services focused on education are in a category that is very different from dating or vanity e-mail services. Complainant has not provided any evidence showing that Respondent’s services rendered through the disputed domain name <sallie.com> may be deemed offensive. No improper association between Complainant’s trademark and the disputed domain name has been proven.

In light of the above, the Panel finds that Complainant has solid trademark rights in the mark SALLIE MAE in the United States, and that the word “sallie”is certainly similar to the trademark SALLIE MAE, but that in the context of this controversy and under its circumstances, there is no confusing similarity between Complainant’s trademark and the disputed domain name.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests in a contested domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, Paragraph 4(c)).

Respondent offers dating services and vanity e-mail services through domain names which it deems generic. As long as said domain names are actually generic or common, as long as Respondent does not harm third parties and as long as legitimate trademark owners do not hold rights to any of the names that Respondent owns, Respondent’s activity is normally not classified as illegitimate under the Policy (see Todito.com, S.A. de C.V. v. Michele Dinoia, WIPO Case No. D2002-0620, where the Panel found Respondent’s activities not to be illegitimate). However, special care should be taken in cases like this one; this Panel agrees with Todito.com, S.A. de C.V. S.A. v. Michele Dinoia, in that the registration of generic names “is forbidden when it could be deemed abusive or whose use is intended to tease consumers about the origin of the services or goods provided.”

Complainant has argued that Respondent has used the disputed domain name <sallie.com> with intent for commercial gain by misleading and diverting Complainant’s customers to Respondent’s services. Complainant has also argued that Respondent is tarnishing Complainant’s trademark. However, the Panel finds no convincing evidence showing that Complainant’s customers have been or could be mislead, when looking for financial services and presented with dating/vanity e-mail services offered through a domain name that is essentially the common name of a woman. No evidence of dilution was found either (see Point 6A supra).

It is doubtful whether the Complainant has documented absence of legitimate interests on the side of Respondent,but it is not necessary for the Panel to reach a conclusion under this element.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Complainant argues that Respondent registered a distinctive domain name, nearly identical to that of Complainant in order to intentionally divert customers to Respondent’s website for financial gain. No convincing evidence of actual or possible misleading or diversion was submitted by Complainant (see Points 6A and 6B supra).

Respondent has submitted evidence showing that its domain name reproduces a common name of a woman, one which is mentioned in a Dictionary (see point 6A supra). No evidence of actual or possible misleading of Complainant’s customers or diversion of traffic to Respondent’s dating/vanity e-mail service site has been submitted before this Panel.

Complainant alleges that this is a typosquatting case. This Panel thinks otherwise (see point 6A supra). Therefore, those precedents under the Policy involving Complainant are not applicable to the present controversy.

Complainant has not furnished evidence proving that it has trademark registrations for SALLIE MAE in Respondent’s jurisdiction, or that said mark has been used or publicized in Italy, or that Respondent had any sort of constructive notice in that country and legal system. The right granted by the United States Congress to Complainant to use the name SALLIE MAE is obviously limited to the territory of the United States. Thus, it is difficult to establish that Respondent knew of Complainant or its trademark, and that thus Respondent registered the disputed domain name for the purpose of profiting from Complainant, by selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

Absent sufficient and convincing evidence showing that Respondent registered and is using the disputed domain name in bad faith, the Panel finds that the third element of the Policy has not been met. Based on the evidence in this case, it seems more likely that the Respondent had the common name “Sallie” in mind rather than the Complainant’s trademark SALLIE MAE when it registered the domain name in question.

D. Reverse Domain Name Highjacking

Respondent argues that the Complainant’s Complaint is an effort to obtain <sallie.com> from a legitimate good faith registrant and to acquire by administrative action what it is not entitled to. Respondent supports its allegation on the grounds that its legal representative allegedly replied to Complainant’s letter, and that Complainant declared in this proceeding that such a reply was never received. Respondent also argues that this Panel should find reverse domain name hijacking on the side of Complainant, because the latter does not have a trademark in the country where the domain name was registered (and cites Supremo n.v./s.a. v. Rao Tella (supremo.com), WIPO Case No. D2001-1357).

According to paragraph 15(e) of the Rules, reverse domain name highjacking may be found under the following circumstances:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”

Paragraph 1 of the Rules establishes that reverse domain name highjacking is “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” To prevail on such a claim, a respondent must show either that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151; or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.

None of these circumstances is present here. With respect to Respondent’s first allegation, it is the opinion of this Panel that Complainant was enforcing its rights, as it has done in the past. The issue regarding the transmission, receipt and/or non-repudiation of a data message consisting of an e-mail sent by one party to the other falls outside the scope of the Policy and the sphere of action of this Panel. The second claim, relating to the absence of trademark rights in a given jurisdiction is extreme and the application of such a rule may lead to unfair results; therefore, this Panel rejects said affirmation.

In the view of this Panel, Complainant has not engaged in reverse domain name highjacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Kiyoshi I. Tsuru
Sole Panelist

Dated: October 18, 2004