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Sallie Mae, Inc. v. Itzik Levi [2005] GENDND 2123 (12 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sallie Mae, Inc. v. Itzik Levi

Case No. D2005-1011

1. The Parties

The Complainant is Sallie Mae, Inc., Reston, United States of America, represented by a legal representative, United States of America.

The Respondent is Itzik Levi, Tel Aviv, Israel.

2. The Domain Name and Registrar

The disputed domain name <salliemaeedloans.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2005. On September 26, 2005, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 27, 2005, Bizcn.com, Inc. 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. 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 September 30, 2005, as the Respondent had agreed to transfer the domain name to the Complainant, the Complainant requested a suspension of the proceedings for 30 days, which was granted by the Center on the same date.

On October 28, 2005, the Complainant informed the Center that the Respondent was unable to transfer the domain name since the Registrar had kept the domain name locked, despite numerous communications requesting the Registrar to unlock the domain name.

Once the 30-day suspension expired and as requested by the Complainant, the Center formally notified the Respondent of the Complaint in accordance with the Rules, paragraphs 2(a) and 4(a), and the proceedings commenced on October 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2005.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on November 28, 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

Complainant is the owner of the trademark registrations SALLIE MAE Nº 11337128 and Nº 1646267 registered in 1985 and 1991, with the United States Patent and Trademark Office.

Respondent registered the domain name <salliemaeedloans.com> on June 20, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

Sallie Mae, Inc. is a wholly owned subsidiary of SLM Corporation, a leading paying-for-college company, managing more than $112 billion in student loans for more than eight million borrowers.

Sallie Mae, Inc. registered the name SALLIE MAE on May 21, 1985, and May 28, 1991, (registration numbers 1337128 and 1646267) with the United States Patent and Trademark Office.

Respondent’s domain name <salliemaeedloans.com> is confusingly similar to Complainant’s trademark SALLIE MAE.

Respondent has no rights or legitimate interests in respect of the domain name. Complainant has not granted any license to the Respondent to use its name and service mark.

The use of the domain name for commercial gain to misleadingly divert consumers evidences an illegitimate interest in the domain name. Respondent’s diversion of Internet users to its website is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use.

The domain name was registered and is being used in bad faith. Respondent registered the domain name in order to intentionally divert customers to its website for financial gain.

Respondent’s bad faith is further highlighted by the fact that the disputed domain name is a misspelling of Complainant’s domain name <salliemaeedloan.com>.

Respondent is using the domain name to re-direct Internet users seeking Complainant’s website to other websites offering similar financial services. Respondent’s commercial website links to “www.nybco.com”, “www.mycashnow.com”, “www.ratewiseusa.com”, “www.lowrateadvisors.com”, “www.instantlyapprovedcom”, and “www.careonecredit.com”, student loan providers and competitors of Complainant which offer financial services (including education funding). Presumably, the website owners who have posted the advertisements, as well as Respondent, are securing revenue each time a consumer views the advertisements and/ or “clicks through” the links.

Finally, Complainant requests that the domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name 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 disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint and in accordance with paragraph 14(b), if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences therefrom as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In accordance with the above, in previous UDRP decisions in which a respondent failed to file a response, the panels have based their decisions upon the complainant’s assertions, evidence and inferences drawn from the respondent’s failure to reply (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064) since the respondent’s failure to dispute the allegations of the complainant permits the inferences that the complainant’s allegations are true. Köstritzer Schwarzbierbrauerei GmbH & Co. v. Alexandr Smirnoff, Macros-Telekom Corp, WIPO Case No. D2001-0936.

Notwithstanding the above, the panel must not decide in the complainant’s favor solely given the respondent’s default. Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof which allow the panel to presume that its allegations are true.

A. Identical or Confusingly Similar

Complainant is the owner of the trademark registrations SALLIE MAE Nº 11337128 and Nº 1646267 registered in 1985 and 1991, with the United States Patent and Trademark Office.

The Panel finds that the domain name <salliemaeedloans.com> is confusingly similar to the trademark SALLIE MAE.

Adding the suffix “ed” and the generic word “loans” is not sufficient to distinguish the domain name from the trademark SALLIE MAE.

Numerous prior UDRP decisions have held that the addition of a generic term to a trademark in a domain name is not sufficient to distinguish the domain name from the trademark.

Furthermore, the trademark SALLIE MAE is used for providing and administrating loans for students. Therefore, the addition of the word “loans” clearly intensifies the likelihood of confusion.

Therefore, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.” The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

The Complainant argued that the Respondent has no rights or legitimate interests in the conflicting domain name and proved, as explained in point “C” below, that Respondent’s use of the domain name neither constitutes a bona fide offering of goods or services nor a legitimate non-commercial or fair use pursuant to the Policy. Moreover, Complainant asserts that it never granted any license to the Respondent to use the trademark SALLIE MAE.

On the other hand, the Respondent failed to file a Response and therefore it did not bring to these proceedings any element to show that the Respondent has rights or legitimate interests in the disputed domain name.

In view of the above, and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under the name and trademark SALLIE MAE, Complainant provides student loans and offers information and resources to assist students, parents and professionals with the financial aid process.

Complainant proved that the Respondent’s website “www.salliemaeedloans.com” contains a list of different websites offering financial services. It also proved that the main page contains a legend which reads: “At this web site we have information for sallie mae ed loans. In addition to information on sallie mae ed loans we also offer the best web sites on loans, erectile dysfunction treatment and erectile dysfunction.”

This shows that Respondent perfectly knew the Complainant and its financial activities when it registered the domain name and that it certainly chose Complainant’s trademark with the intention to attract, for commercial gain, Internet users to its website by creating confusion with Complainant’s trademark.

Moreover, Respondent chose a domain name almost identical to Complainant’s domain name <salliemaeedloan.com>, which reinforces the idea that Respondent acted in bad faith.

The above-mentioned reasons constitute sufficient evidence that the Respondent registered and uses the domain name in bad faith.

In view of the foregoing and in accordance with similar precedents and paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has registered and used the domain name in bad faith.

Consequently, the Complainant has proved the third element required in 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 domain name <salliemaeedloans.com> be transferred to the Complainant.

_____________________________________

Miguel B. O’Farrell

Sole Panelist

Dated: December 12, 2005