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Sallie Mae, Inc. v. Mr. John Sansone [2005] GENDND 1315 (11 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sallie Mae, Inc. v. Mr. John Sansone

Case No. D2005-0368

1. The Parties

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

The Respondent is Mr. John Sansone, Denver, Colorado, United States of America.

2. The Domain Names and Registrar

The disputed domain names <aalliemae.com>, <dalliemae.com>, <saliemays.com>, <salilemae.com>, <sallieae.com>, <sallieemae.com>, <salliemaae.com>, <salliemaee.com>, <salliemaies.com>, <salliemaw.com>, <salliemays.com>, <salliemse.com>, <sallimeae.com>, <sallirmae.com>, <salloemae.com>, <salluemae.com>, <sallyemae.com>, <sallyemaes.com>, <sallymaes.com>, <sallymaie.com>, <sallymaies.com>, <salymae.com>, and <salymaes.com> are registered with Enom, Inc., of the United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005. On April 11, 2005, the Center sent an email to Complainant, acknowledging receipt of the Complaint. On April 11, 2005, the Center transmitted by email to Enom a request for registrar verification in connection with the domain names at issue. On April 13, 2005, Enom 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.

On April 14, 2005, the Center sent via email to the Complainant a deficiency notification regarding the electronic version of the Complaint. That same day, the Center sent two emails to Complainant. The first email indicated that two of the domain names listed in the Complaint were reflected twice and requested confirmation of the correct number of domain names. The second email indicated that the domain name <salliemeae.com> did not appear to be with eNom, Inc., appearing to be available for purchase. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed its first amendment to the Complaint on April 15, 2005, omitting the domain names that were reflected twice in the original Complaint. On May 3, 2005, the Center sent via email acknowledgement of the first amendment to the Complaint and indicated that Complainant still did not remove the domain name <salliemeae.com>. In response to this notification, on May 3, 2005, the Complainant filed via facsimile its second amendment to the Complaint, removing the domain name <salliemeae.com>.

On May 6, 2005, the Center sent to Enom via email a request for registrar verification of the domain name <sallimeae.com>. Enom confirmed receipt of the request and locked the domain name that day. On May 9, 2005, 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”). On May 10, 2005, the Center acknowledged receipt of the Complainant’s second amendment to the Complaint and requested an electronic version of the same.

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 10, 2005. In accordance with the Rules paragraph 5(a), the due date for Response was May 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2005. The Center appointed Jonathan Hudis as the sole panelist in this matter on June 24, 2005. 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

The Complainant in this proceeding is Sallie Mae, Inc., which is a Delaware corporation, wholly owned by SLM Corporation, with its principal place of business in Reston, Virginia. Complainant is the leading provider of education funding in the United States of America, managing approximately 108 billion United States dollars in student loans for more than 7 million borrowers. Since at least 1974, Complainant and/or its predecessors have used in commerce the SALLIE MAE service mark (U.S. Reg. Nos. 1,646,267 and 1,337,128) for originating and purchasing educational loans and for extending credit to educational and financial lenders for the purpose of funding educational loans. Complainant also owns several other marks incorporating SALLIE MAE, and it provides financial services via the <salliemae.com> domain name, which, according to WhoIs records, shows that it has been registered since 1995.

According to the WhoIs record for each of the 23 domain names at issue, the Respondent in this proceeding is John Sansone, an individual from Denver, Colorado.

Complainant contends that each of the 23 domain names registered and owned by Respondent consists of a misspelling of Complainant’s SALLIE MAE mark. Complainant believes that Respondent works with Commission Junction (a/k/a “Valueclick, Inc.”), a marketing affiliate that serves and tracks advertisement links and collects and processes click-through data, sales leads, and advertising revenue. According to the Complaint, when Internet users access one of the disputed domain names, they are presented with a web page served by Commission Junction’s <qksrv.net> domain name, which directs Internet users to the Educational Loan Company (ELC) website, at “www.educationalloancompany.com”. The ELC website offers financial services, including education funding through student loans, which compete with Complainant’s services. The Complaint avers that when the disputed domain names re-direct Internet users to the ELC website, Respondent receives click-through advertising revenues.

This is not the first time the parties have been involved in a dispute. Beginning in October 2004, Complainant sent several letters to Respondent regarding Respondent’s registration and use of the <sallieame.com> domain name. Hearing nothing from Respondent, Complainant submitted a formal Complaint to the Center. As in this proceeding, Respondent did not reply to the Complaint. During the course of the prior proceeding, the ELC indicated that it was not affiliated with and had no knowledge of Respondent. On January 3, 2005, a panel found that the domain name was confusingly similar to Complainant’s SALLIE MAE mark, that Respondent had no rights or legitimate interests in respect of the domain name, and that Respondent’s domain name was registered and used in bad faith. Therefore, the panelist ordered the domain name transferred to Complainant.

Between February 2005 and the present, Complainant identified the 23 domain names at issue in this proceeding, and sent cease and desist letters to Respondent, as well as the ELC, complaining of the same activities described above. Again, Respondent never responded to Complainant, and the ELC disavowed affiliation with or knowledge of Respondent and Commission Junction.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names are identical or confusingly similar to the SALLIE MAE mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not respond to the Complainant’s contentions.

6. Discussion and Findings

Transfer of the disputed domain names will be ordered if Complainant has shown that the following three elements are present (paragraph 4(a) of the Policy):

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The disputed domain names have been registered and are being used in bad faith.

In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present.

A non-exhaustive list of circumstances, if found by the Panel to be present, which may be considered as evidence of the registration and use of domain names in bad faith, may be found at paragraph 4(b) of the Policy. On the other hand, a non-exhaustive list of circumstances, if found by the Panel to be proved based upon its evaluation of all the evidence presented, demonstrating the Respondent’s rights or legitimate interests in the domain names, may be found at paragraph 4(c) of the Policy.

Respondent had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the disputed domain names. He chose not to do so. Complainant is not entitled to relief simply by reason of the default. However, the Panel can and does draw evidentiary inferences from the failure to respond. Cyberguard Corporation v. Cyber Surveillance Group, WIPO Case No. D2001-0972.

For example, paragraph 14 of the Rules provides that:

(a) In the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.

(b) If a party, in the absence of exceptional circumstances does not comply with any provision of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Complainant has adequately demonstrated its ownership, federal registration, and use of the mark SALLIE MAE, which are evidenced by its U.S. federal registrations and use of the mark on the “www.salliemae.com” website.

The Panel finds that all of Respondent’s disputed domain names are confusingly similar to Complainant’s SALLIE MAE mark. In each domain name at issue, Respondent has merely modified Complainant’s mark by strategically adding, subtracting, or

re-positioning one or more letters in order to create a word that is confusingly similar to Complainant’s mark in appearance, sound, and spelling. See, e.g., Sharman License Holding, Ltd. v. Icedlt.com, WIPO Case No. D2004-0713.

Respondent is obviously attempting to lure Internet users to the ELC website, which directly competes with Complainant’s services, by taking advantage of slight misspellings of Complainant’s mark. Respondent’s practices constitute a clear example of improper typosquatting. See, e.g., Playboy Enters. v. Movie Name Co., WIPO Case No. D2001-1201.

Therefore, the Panel finds for the Complainant on the first element — the disputed domain names are confusingly similar to Complainant’s SALLIE MAE mark.

B. Rights or Legitimate Interests

Respondent chose to not present any evidence or argument showing that he may have a right or legitimate interest in respect of the disputed domain names. Additionally, each of the disputed domain names resolves to the ELC website, which is not owned or operated by Respondent.

Complainant contends that Respondent’s use of the disputed domain names manifests his sole intent to gain financially by re-directing Internet users attempting to access Complainant’s website and services. Rather than reach Complainant’s website, however, Internet users are taken to a competitor’s website, offering services identical and/or similar to Complainant’s services.

Respondent’s use of the disputed domain names does not manifest uses or demonstrable preparations to use the domain names in connection with bona fide offerings of goods or services. Wachovia Corp. v. Carrington, WIPO Case No. D2002-0775 (finding that “a use that merely operates to redirect mistaken typists to other sites is not enough to create a legitimate use without a greater connection between the domain name and the redirected site”).

In addition, Complainant is the leading provider of education funding in the U.S. Thus, it is more than likely that Respondent was fully aware of Complainant’s marks and services. Even were Respondent unaware of Complainant, it should have been since Respondent is guiding Internet users to a website that directly competes with Complainant. Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103.

The Panel, therefore, finds for the Complainant on the second element - Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Respondent’s practice of registering and using domain names that capitalize on misspellings of a registered trademark to divert Internet users away from the mark owner exhibits classic bad faith. Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654. In addition, the most plausible reason that Respondent engages in typosquatting is for financial gain at the expense of Complainant. Finally, Respondent has previously registered and used a domain name that improperly capitalized on Complainant’s SALLIE MAE mark. In Sallie Mae, Inc. v. Sansone, WIPO Case No. D2004-0879, the panel found that Respondent registered slight misspellings of Complainant’s famous mark and used the domain names to divert Internet users to a competitor’s website “with the intention to attract Internet users to an on-line location by creating a likelihood of confusion with the Complainant’s mark”.

These facts all point to the inevitable conclusion that Respondent has registered and is using the disputed domain names in bad faith. Therefore, the Panel finds for the Complainant on the third and final element.

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 following domain names be transferred to Complainant:

<aalliemae.com>
<dalliemae.com>
<saliemays.com>
<salilemae.com>
<sallieae.com>
<sallieemae.com>
<salliemaae.com>
<salliemaee.com>
<salliemaies.com>
<salliemaw.com>
<salliemays.com>
<salliemse.com>
<sallimeae.com>
<sallirmae.com>
<salloemae.com>
<salluemae.com>
<sallyemae.com>
<sallyemaes.com>
<sallymaes.com>
<sallymaie.com>
<sallymaies.com>
<salymae.com>
<salymaes.com>

Jonathan Hudis
Sole Panelist

Dated: July 11, 2005