Sloan Capital Companies; Stuart M. Sloan v. Sloan E-mail Service

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

(1) Sloan Capital Companies (2) Stuart M. Sloan v. Sloan E-mail

Services

Case No. D 2001-0138

1. The Parties

The Complainants are Sloan Capital Companies, 1301 Fifth Avenue, Seattle, Washington,

98101, USA and Stuart M Sloan, 1301 Fifth Avenue, Seattle, Washington 98101,

USA.

The Respondent is Sloan E-mail Services, 4 Harotem Street, 46915 Rishpon, Israel.

2. The Domain Name and Registrar

The Domain Name is <sloan.com>.

The Registrar is Network Solutions, Inc..

3. Procedural History

The Complaint was received by WIPO by email on January 25, 2001 and in hardcopy

form on January 26, 2001. WIPO has verified that the Complaint satisfies the

formal requirements of the Policy, the Rules and the Supplemental Rules and

that payment was properly made. The Administrative Panel ("the Panel")

is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph

2(a). The Registrar has confirmed that <sloan.com> ("the Domain Name")

was registered through Network Solutions, Inc. and that Sloan E-mail Services

is the current registrant. The Registrar has further confirmed that the Policy

is applicable to the Domain Name.

On February 5, 2001, WIPO notified the Respondent of the Complaint in the usual

manner and informed the Respondent, inter alia, that the last day for sending

its Response to the Complainants and to WIPO was February 24, 2001. The Response

was received by email on February 24, 2001 and in hard copy form on February

28, 2001.

The Panel was properly constituted. The undersigned Panelist submitted a Statement

of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence

of which the date originally scheduled for the issuance of the Panel’s Decision

was March 30, 2001.

However, on reading the papers, the Panel decided to issue a procedural order

pursuant to paragraph 12 of the Rules seeking further information/documentation

from the parties. A copy of the order is annexed to this decision. The Complainants

responded on

March 27, 2001. The Respondent responded to neither the procedural order, nor

the Complainants’ response.

4. Factual Background

The Complainants are well known to the US business community. Sloan Capital

Companies is a Seattle based business, which was founded in 1984. It includes

a family of businesses with "Sloan" names including The Sloan Foundation,

Sloan & Stroum Partnership and The Sloan Family Winery. Stuart Sloan, the

Chairman of Sloan Capital Companies, is well-known in the US both as a businessman

and, more widely, as a philanthropist.

The Domain Name was registered by the Respondent in November, 1998.

In or about June 1999 and in response to an inquiry from the Complainants,

the Respondent sent the Complainants an email in which it indicated it thought

$100,000 would be an adequate price for the name. This was disputed in the Response,

but has been verified by the Complainants’ response to the procedural order

to which, as indicated, the Respondent has not responded. The circumstances

and content of that email exchange are important and will be related in greater

detail below.

This administrative procedure was launched by the Complainants in January 2001.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Name is identical to the name SLOAN,

a name under which they trade in various forms and in respect of which they

claim common law rights.

They further contend that the Respondent has no rights or legitimate interests

in respect of the Domain Name. They say they are not aware of any legitimate

reason the Respondent could have for registering the Domain Name. They assert

that none of the circumstances set out in paragraph 4(c) of the Policy apply

to the Respondent.

Finally, they contend that the Respondent registered the Domain Name in bad

faith and is using it in bad faith. In support, they assert that (i) the Respondent

registered the Domain Name primarily for the purpose of selling, renting, or

otherwise transferring the Domain Name to the Complainant or one of its competitors;

and, (ii) by registering the Domain Name the Respondent has created a likelihood

of confusion with the Complainants’ name and mark.

They say that the Respondent has filed false information with the Registrar

as to its name and address. They say that in reality the Respondent is a Mr.

Yoshiki Okada, the administrative, technical and billing contact for the Domain

Name. They point to the fact that Mr. Okada is the registrant of a large number

of domain names, not all of them being generic in nature, and that he has also

been on the wrong end of an earlier decision (WIPO Case No. D2000-0492 - <jt.com>)

in which he was held to be a cybersquatter. They also point to Mr. Okada’s price

of $100,000 for the Domain Name.

B. Respondent

The Respondent contends that the Complainants have failed to demonstrate that

SLOAN is a trade mark or service mark of the Complainants. The Respondent points

out that the applicant for registration of the mark SLOAN for wine in class

33 is Sloan Family Winery LLC, which is not one of the Complainants. It observes

that the name is a common surname and that the well-known Alfred P. Sloan Foundation

is not connected to the Complainants. It points to a US court decision, which

it claims is authority for the proposition that "if the mark is the last

name of someone connected with the applicant’s business, there is an assumption

of surname significance. It cites Section 2 of the US Lanham Act, which it claims

provides that "no mark shall be registered on the Principal Register which

is primarily a surname."

The Respondent contends that the allegation that the Respondent is an alias

of Mr. Okada is false. It claims to have operated, under its name, a legitimate

email service to persons with the surname SLOAN. It claims to have done so since

November 1998. It claims to have no domain names other than the Domain Name.

With regard to the previous WIPO decision regarding the domain name, <jt.com>,

the Respondent points out even if Mr. Okada was relevant to this case, the earlier

decision is of no assistance because it was a default decision.

As to the Complainants’ allegation regarding the information filed with the

Registrar, the Respondent says it is false and draws attention to the fact that

the Respondent received the papers in this administrative procedure from WIPO.

The Respondent says that the reason the Complainants can claim to know of no

legitimate reason why the Respondent registered the Domain Name is because they

did not contact the Respondent and enquire. It says it has operated a bona fide

business under the Domain Name since November 1998 and has been commonly known

by that name since then.

For all those reasons, the Respondent claims to have registered and to have

used the Domain Name in good faith. As to the allegation in paragraph 8(l) of

the Complaint that "Respondent has advised that he will transfer the Domain

Name to Complainants for a $100,000 payment," the Respondent says "This

allegation is also unsubstantiated and false. The evidence shows only an unverifiable

declaration by a third party with no documentary support."

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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.

Identical or confusing similarity

The name SLOAN is, without doubt, a name under and by which the Complainants

operate by way of trade in the US in one shape or form. The fact that the name

may not be registered or even registrable as a trade mark in the US is not fatal.

The Policy is not restricted to registered rights, nor do those rights necessarily

have to be exclusive.

The points taken by the Respondent as to the identity of the applicant for

registration of the mark SLOAN for wine (not one of the Complainants) and as

to the extent to which the Domain Name can be said to be confusingly similar

to a name so widely used by a variety of other people raise interesting issues.

However, the Panel sees no reason to explore them further having decided to

dismiss the Complaint for another reason.

For the record, had it been necessary for the Panel to make a finding, the

Panel would almost certainly have held that the Domain Name is identical or

confusingly similar to a trade mark or service mark in which the Complainants

have rights.

Rights or legitimate interests of the Respondent

In response to the Complainants’ allegation in this regard, the Respondent

draws attention to its email service, which it says it has operated under its

name and by way of the Domain Name since November 1998. The Response contains

no evidence of any kind to support the bare assertion that the email service

exists. The procedural order sought further particulars of that service from

the Respondent. The Respondent has not responded.

Had it been necessary for the Panel to make a finding, the Panel would have

concluded that no such service existed and that the Respondent has no rights

or legitimate interests in respect of the Domain Name.

Bad Faith

A non-exclusive list of circumstances, which constitute bad faith registration

and use of a domain name, is set out in paragraph 4(b) of the Policy. All those

examples call for the respondent to have been aware of the existence of the

complainant and or its trade mark or service mark at the time of registration

of the domain name in question. Further it is a prerequisite for a bad faith

claim that the respondent’s bad faith intention is directed at the complainant.

Accordingly, to succeed under this head a complainant must prove that the respondent

registered the domain name primarily with a view to selling it at a profit to

the complainant or a competitor of the complainant, or to block the complainant,

or to disrupt the complainant’s business or to damage the complainant’s goodwill

or in some way take unfair advantage of the complainant or the complainant’s

goodwill or trade mark. The mere fact that visitors to a respondent’s site may

be confused or deceived by the domain name is of no significance to a bad faith

claim under the Policy unless the respondent intended it, or, perhaps, should

have known that this would be the inevitable consequence.

The circumstances set out in paragraph 4(b) of the Policy are non-exhaustive.

The examples set out in the immediately preceding paragraph here are non-exhaustive.

Nonetheless, the Panel is of the view that for this Complaint to succeed, the

Complainants must, at the very least, prove that the Respondent had the Complainants

or their business in mind when registering the Domain Name.

For present purposes, the Panel is prepared to hold that the Respondent is

a trader in domain names, which has registered its portfolio of domain names

with a view to selling them for the highest possible price. In so holding, the

Panel is effectively holding that the Respondent and its contact, Mr. Yoshiki

Okada, are to be treated as one and the same.

The Panel is not influenced by the bad faith finding by a previous panel in

relation to <jt.com>, partly because the decision was a default decision

and partly because the fact that the Respondent may have behaved badly in registering

one domain name in his portfolio does not necessarily mean that all his registrations

are similarly tainted. Each domain name needs to be treated on its merits.

If the Complainants’ trade mark or service mark had been in the ‘KODAK’ category,

it would not have been difficult to make assumptions of bad faith in the Complainants’

favour. For the same reason, the same would have been the case if the Domain

Name had pointed directly to the Complainants (e.g. <sloancapitalcompanies.com>

or <stuartmsloan.com>). But that is not this case.

The Panel, not being US-based, was not aware of the Complainants and conducted

a search for SLOAN on the <google.com> search engine. Several ‘Sloans’

emerged, the most prominent being the Alfred P. Sloan Foundation mentioned by

the Respondent, the MIT Sloan School of Management and a Canadian band named

Sloan. In the first 20 citations (the Panel looked no further) there was no

mention of the Complainants.

The fact that there are other Sloans around is not fatal to the Complaint so

long as the evidence shows that it was the Complainants whom the Respondent

had in mind at the time of registration. As indicated above, the Panel was not

aware of the Complainants prior to receiving the papers relating to this Complaint.

Is there any reason why the Respondent and Mr. Okada, both of whom have addresses

in Israel, should be any better informed?

One of the commonest ways of proving the relevant knowledge and intent is to

show that the Respondent offered the Domain Name for sale to the Complainant

at a price well in excess of the Respondent’s out-of-pocket expenses.

Here, the Complaint recites such an offer. Paragraph 8(l) of the Complaint

reads:

"Respondent has advised that he will transfer the domain name to Complainants

for a $100,000 (one hundred thousand dollar) payment. See Exhibit P."

Exhibit P is a declaration of Walter Taucher, a computer consultant to the

Complainants, the only substantive paragraph of which reads:

"In or about June 1999 I received an e-mail message from the owner of

the SLOAN.COM domain name, Yoshiki Okada, in which he demanded $100,000 for

the transfer of the domain name."

Had the Respondent not responded (as in the <jt.com> case) or not denied

the making of the demand, the Panel might well have concluded that the making

of the demand was sufficient indication that the Respondent had the Complainants

in mind for the Domain Name all along. In that event, the Complaint would, in

all likelihood have succeeded.

However, the Respondent responded with a denial and the Panel issued its procedural

order. In response to that order, the Complainants reproduced the following

email exchange dated June 1999:

Tauber (Complainants) to Respondent

Yes, we are trying to acquire sloan.com on behalf of a client. He

wishes to simply have a domain that matches his family name.

He is likely to pay a nominal fee for it and if within reason, cover the

costs of changing your stationery, rerouting your email, and website to

your new domain.

Respondent to Tauber

With due respect, I must say that nobody will be lucky enough to pay a nominal

fee for the domain that matches his family name especially when your name is

one of the popular family names as Sloan nowadays.

Tauber to Respondent

Do you have a value for Sloan.com in mind?

Respondent to Tauber

Yes. US$100,000 will be adequate for the domain.

In the view of the Panel that so-called "demand" is of no help whatever

to the Complainants. The full exchange has not been disclosed, but it is evident

from what has been disclosed that the Respondent did not open the negotiations.

Moreover, the opening e-mail in the exchange quoted above appears to be a response

to a request made by the Respondent of Tauber as to the identity of the prospective

purchaser. Family names/surnames in the <.com> domain do command very

high prices and there is nothing before the Panel to indicate that Mr. Okada

knew that he was dealing with the Complainants.

In light of the foregoing, the Panel finds that the Complainants have failed

to prove that the Domain Name was registered in bad faith and is being used

in bad faith.

The Panel is conscious that, as the Panel has assumed for the purposes of this

decision, the Respondent may in fact be an alias of Mr. Okada, which would mean

that the Respondent has not told the truth in that respect. Further, if the

assumption that the Panel has made (again simply for the purposes of this decision)

in relation to the Respondent’s alleged e-mail service is correct, the Respondent

has also not told the truth over that either. Why, it may be said, would the

Respondent lie unless it was to conceal bad faith? The Panel’s response is that

people lie for a variety of reasons and frequently completely unnecessarily

and out of ignorance. For example, the Respondent might not have realised how

narrowly the Policy defines cybersquatting. In this case, the fatal gap in the

evidence was the absence of anything to show that the Respondent knew or ought

to have known of the Complainants at the relevant time. No amount of lying by

the Respondent in other respects can plug that gap.

7. Decision

The Complaint is dismissed.

Tony Willoughby

Sole Panelist

Dated: March 31, 2001

ORGANISATION MONDIALE DE LA PROPRIETE INTELLECTUELLE

Centre d’arbitrage et de médiation de l’OMPI

WORLD INTELLECTUAL PROPERTY ORGANIZATION

WIPO Arbitration and Mediation Center

March 23, 2001

Re: Case No. D2001-0138

Procedural Order No. 1

The Panel has now read the papers submitted to WIPO by the parties. Pursuant

to paragraph 12 of the Rules, the Panel requests further documentation and/or

information from the parties as follows:

1. From the Respondent, such documentation as the Respondent may have to substantiate

the claim that the Respondent’s "Sloan E-Mail service has conducted its

business at sloan.com since November of 1998" and such further information/documentation

that the Respondent can provide to demonstrate that the service is and has always

been an active bona fide service.

2. From the Complainant, such documentation/information as the Complainant

can provide to demonstrate the circumstances of the offer for sale referred

to in the declaration of Walter Taucher. The Panel points out that the Respondent

has categorically denied that any such offer was made. Mr Taucher’s declaration

does not exhibit the email, nor does it explain how the offer came to be made.

Was it in response to a request for transfer or was it an unsolicited offer?

The Panel assumes that the email must have been lost, but believes there must

be other contemporary correspondence and/or internal memoranda between Mr Taucher

and his colleagues at the Complainant reporting on the offer.

The Panel requires that any responses to this procedural order are received

by WIPO by Tuesday March 27, 2001 and that each party is given a further 3 days

(ie until March 30, 2001) in which to put in a further submission in answer.

If neither party responds to this procedural order, the decision of the Panel

will be issued within the allotted time, otherwise the date for issuance of

the decision will be put back until April 4, 2001.

Pursuant to Section 8 of the UDRP Rules, the Respondent is to forward its submissions

to the WIPO Arbitration and Mediation Center, not to this Panel.

Respectfully submitted,

Tony Willoughby, Esq.

Sole Panelist