|Panelist||Towns, William R.|
|Date of Decision||25.09.2007|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Upromise Inc. v. William Parker
Case No. D2007-0993
1. The Parties
The Complainant is Upromise Inc., Reston, Virginia, United States of America, represented by Sallie Mae Inc., United States of America.
The Respondent is William Parker, Specialneedadvisors, Harrisburg, Pennsylvania, United States of America, represented by Traverse Legal, PLC, United States of America.
2. The Domain Names and Registrar
The disputed domain names as listed below are registered with Go Daddy Software:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2007. On July 9, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 9, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
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 July 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2007. The Center granted, based on party agreement, an extension to the Response due date until August 17, 2007. The Response was filed with the Center on August 17, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on September 10, 2007. 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 provides rebate-funded savings and investment services and is an administrator of “529” college savings plans. A 529 plan is a tax-advantaged savings vehicle designed specifically for college savers, which takes its name from Section 529 of the United States Internal Revenue Code. The Complainant has used UPROMISE as a trade name and service mark since 2000, and owns two federal registrations for the UPROMISE mark, issued by the United States Patent and Trademark Office (“USPTO”) on September 10, 2002 and December 31, 2002. The Complainant also has registered and uses the domain name <upromise.com> to provide information concerning its services on the Internet.
The Complainant provides services for the Pennsylvania TAP Guaranteed Savings Plan. The Respondent, a resident of Pennsylvania, registered the twenty-four (24) disputed domain names on December 23, 2006. The disputed domain names resolve to parked, pay-per-click websites, containing “sponsored links” to various websites related to college saving plans, including websites of several of the Complainant’s competitors.
The Complainant placed the Respondent on notice of this dispute by means of letters dated January 23, 2007, and February 12, 2007, on each occasion requesting transfer of the disputed domain names. The Respondent directed the Complainant to an attorney, Wayne Pecht, who passed on a request from the Respondent to speak with the Complainant regarding a “business plan.” After the Complainant indicated it had no desire to confer with the Respondent regarding any business proposals, Mr. Pecht advised the Complainant that he did not represent the Respondent.
5. Parties’ Contentions
The Complainant identifies itself as a wholly owned subsidiary of SLM Corporation, commonly known as “Sallie Mae”. According to the Complaint, Sallie Mae and the Complainant offer college students and their parents comprehensive financial solutions for college, including college savings vehicles and student loans. The Complainant also provides it members with automatic savings through rebates on purchases.
The Complainant claims to be the largest administrator of direct-to-consumer 529 college savings plans, providing such services to approximately 1.2 million college savings accounts. In Pennsylvania, where the Respondent resides, the Complainant asserts that it services the Pennsylvania TAP Guaranteed Savings Plan.
The Complainant alleges that its UPROMISE mark is famous. The Complainant describes the Respondent as a cybersquatter who has registered 24 domain names incorporating the entirety of the Complainant’s mark – often with “529” or “plan” in the domain name – in order to create a false sense of association with the Complainant. The Complainant contends that the Respondent is intentionally trading on the goodwill in the UPROMISE mark in order to generate Internet traffic to the Respondent’s pay-per-click sites, thereby producing income for the Respondent.
The Respondent states that he has been in the financial and estate planning business since 1982. The Respondent contends that he possesses a securities license enabling him to sell exchanged traded funds (EFTs) and 529 plans. He claims that he has used his financial expertise not only to make a living but also in connection with many philanthropic activities, all of which center around providing financial solutions for individuals with special needs.
The Respondent states he is the founder of The National Fragile X Foundation, a non-profit organization related to fragile X syndrome (FXS). This organization, according to the Respondent, employed his financial expertise for a fundraising program called “The Promise Cube Campaign”. According to materials provided as annexes, the Promise Cube Campaign uses the slogan “I Promise”. According to the Respondent, he is currently working with legal counsel to “patent and trademark the Promise Cube in its various forms and advance the strategic business and marketing plan”.
The Respondent claims that he is one of the leading experts in EFTs, and that with a partner he developed a business plan involving a financial model that used EFTs with 529 plans. According to the Respondent, he presented his business plan to the Pennsylvania Treasury Department (i.e., Pennsylvania TAP). He also claims his partner met with and presented the Respondent’s business plan to Jim Fadule, the president of Upromise Investments, Inc., a wholly owned subsidiary of the Complainant that provides plan management and administration services to state-sponsored 529 plans and their participants.
The Respondent alleges that Fadule indicated he was not interested in the Respondent’s proposal, but subsequently he discovered that Fadule has presented what the Respondent claims to have been the “identical” plan to the Pennsylvania Department of Treasury, which the Treasury Department accepted. According to the Respondent, he was then given assurances by the Treasurer that his business plan might be used in the future. The Respondent alleges he then registered the 24 disputed domain names as a result of the foregoing.
The Respondent argues that the Complainant has not established trademark or service mark rights for purposes of paragraph 4(a)(i) of the Policy because “upromise” is generic. The Respondent further argues that he is making a “nominative” use of the Complainant’s mark, to which he is entitled under the Policy, and that in any event the Complainant cannot prevail under paragraph 4(a)(i) because there is no evidence of consumer confusion.
The Respondent further claims that he has rights or legitimate interests in the disputed domain names for two reasons. First, the Respondent maintains that prior to any notice of this dispute, he registered the disputed domain names for use in reliance on a contemplated partnership with the Complainant, a plan that he has not abandoned despite the Complainant’s alleged “hijacking” of his business plan. Second, the Respondent maintains that in the alternative he has a legitimate interest in securing a “priority” to use the disputed domain names in connection with The Promise Cube Program.
The Respondent denies any bad faith. He maintains that in light of his attempt to create a business relationship with the Complainant, there can be no finding of bad faith. The Respondent reiterates his contention that the disputed domain names are generic, and indicates that the disputed domain names constitute only 10% of his portfolio of domain names registered for and in furtherance of his business and marketing plan.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar to Trademark Rights
The Panel finds that each of the twenty-four disputed domain names registered by the Respondent is confusingly similar to the Complainant’s registered UPROMISE mark. The Complainant beyond question has established rights in its mark through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Each of the disputed domain names incorporates the Complainant’s mark in its entirety. The Respondent’s argument that no identity or confusing similarity can be found because there is no evidence of consumer confusion is misplaced. While such use factors might be relevant under a traditional trademark infringement analysis, in the internet context of paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based solely on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Caf, WIPO Case No. D2000-0068.
Based on such a comparison, the Panel concludes that the disputed domain names are identical to the Complainant’s UPROMISE mark. In the context of this case, the addition of descriptive or geographically descriptive terms such as “529”, “eft”, “plan” and “pa” (i.e, Pennsylvania), clearly do not dispel the confusing similarity arising from the Respondent’s wholesale appropriation of the Complainant’s mark. Accordingly, for the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). It is undisputed that the Complainant has not authorized the Respondent to use the Complainant’s UPROMISE mark or to register domain names appropriating this mark, and the Panel is persuaded from its overall review of the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made.
The Respondent’s own declaration establishes beyond dispute that, assuming arguendo the Respondent’s business plan had been presented to the Complainant, the Complainant declined to do business with the Respondent. The Respondent’s declaration is equally clear that he made the decision to register the disputed domain names only after he became aware that the Complainant independently had obtained servicing rights for the Pennsylvania TAP Guaranteed Savings Plan, servicing rights that the Respondent by his own statement unsuccessfully competed for. The disputed domain names were then used by the Respondent to direct internet users to pay-per-click website advertising savings and investment products or services related to those offered by the Complainant.
Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii). The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent asserts that the Complainant’s UPROMISE mark consists of two generic or “dictionary” words – “you” and “promise”. On this basis the Respondent contends that the Complainant cannot claim exclusive rights to UPROMISE, and that the Respondent consequently has the right to register and use the disputed domain names.1 Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.
Nevertheless, the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. On the record of this case, the Panel is unable to conclude that the Respondent had formed such a good faith belief at the time he registered the disputed domain names. To the contrary, it is a fair inference from record in this case that the Respondent was well aware of the Complainant’s trademark rights when he registered the disputed domain names, and that he deliberately incorporated the Complainant’s UPROMISE mark in the disputed domain names in order to suggest an association between the domain names and the Complainant.
Further, while both “you” and “promise” may be generic in the sense that they are dictionary words, “Upromise” itself is not a dictionary word, and the USPTO’s registration of the UPROMISE mark on its principal register constitutes an official determination that the mark is not descriptive with respect to the services for which it was registered.2 Given the USPTO’s determination, the Panel doubts that any use of the disputed domain names by the Respondent in connection with the products or services related to those for which the Complainant’s mark is registered would constitute the use of the domain names in a descriptive as opposed to a trademark sense.
For all of the foregoing reasons, the Panel finds that the Respondent has failed to meet its burden under paragraph 4(c) of establishing rights or legitimate interests in the disputed domain names. The Panel has found nothing in the record that would bring the Respondent’s registration and use of the disputed domain names within any of the safe harbors of paragraph 4(c) of the Policy. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Respondent was aware of the Complainant’s UPROMISE mark at the time he registered the confusingly similar disputed domain names. The Panel finds from the circumstances of this case that the Respondent registered the disputed domain names in bad faith. His intent was to attract internet users based on confusion with Complainant’s trademark in violation of paragraph 4(b)(iv) of the Policy, and he has sought to profit from and exploit the Complainant’s UPROMISE mark by generating pay-per-click revenue based on the attractive quality of the mark.
The Panel concludes, in light of all of the factors discussed above, and given the particular circumstances of this case, that the Respondent registered and is using the disputed domain names in bad faith under the Policy. Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 the Complainant:
William R. Towns
Dated: September 25, 2007
1 A number of panels have concluded that a in the absence of indications of cybersquatting respondent has a right to register and use a domain name to attract internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
2 The USPTO by law must refuse registration of a mark on the principal register unless the mark is either inherently distinctive or has acquired distinctiveness through secondary meaning.