SAS Institute Inc. v. OS
Domain Holdings VIII, LLC
Claim Number: FA0904001259735
PARTIES
Complainant is SAS Institute Inc. (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sascurriculmpathways.com>,
registered with Nameking.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 28, 2009; the
National Arbitration Forum received a hard copy of the Complaint on April 28, 2009.
On April 28, 2009, Nameking.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <sascurriculmpathways.com> domain
name is registered with Nameking.com, Inc.
and that the Respondent is the current registrant of the name. Nameking.com,
Inc. has verified that Respondent is bound by the Nameking.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On May 1, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 21, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@sascurriculmpathways.com by e-mail.
A timely Response was received and determined to be complete on May 20, 2009.
On May 22, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant was founded in 1976 and has since that time continually and
exclusively used the SAS mark to identify its computer software related
products and services. Complainant is the largest privately owned software
company in the world and serves more than tens of thousands of business,
government and university sites across 119 countries. The SAS Marks are recognized and identified
worldwide to identify excellence in software solutions. One of Complainant’s popular software
management products is CURRICULUM PATHWAYS.
Complainant registered the trademark with the U.S. Patent and Trademark
Office and advertises its products over the Internet on the website SASCURRICULUMPATHWAYS.COM,
a domain name registered to Complainant in 2006.
Respondent registered the Domain Name, <SASCURRICULMPATHWAYS.COM> on September 30, 2008. The domain name is used to connect with a
click-through site featuring links to a variety of products and services. The domain name is confusingly similar to
Complainant’s trademark. Respondent has
no rights to or legitimate interests in the disputed domain name. Respondent registered and used the disputed domain
name in bad faith.
B. Respondent
Respondent offers the voluntary transfer of the domain name to
Complainant.
FINDINGS
1.
The
disputed domain name is confusingly similar to Complainant’s mark.
2.
Complainant
demands transfer of the disputed domain name.
3.
Respondent
agrees to transfer the disputed domain name to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
The Panel agrees with Complainant that Respondent has engaged in
typosquatting because it is taking advantage of a common misspelling of
Complainant’s CURRICULUM PATHWAYS mark in the <sascurriculmpathways.com> domain name. The Panel takes notice of Respondent’s
previous domain name dispute cases which have found that Respondent registered
domain names infringing upon the marks of others. See SYTradingPost v. OS Domain Holdings IV, LLC, D2008-0815 (WIPO
July 31, 2008) and BHP Billion Innovation
Pty Ltd, v. OS Domain Holdings IV LLC, D2008-0488 (WIPO June 18, 2008).
However, in cases where a respondent agrees to complainant’s demand to
transfer the domain name, it is proper to order transfer without a formal
review of the elements of the Policy. See Boehringer Ingelheim Int’l GmbH v.
Modern Ltd-Cayman Web Dev. FA 133625 (Nat. Arb. Forum Jan. 9, 2003) which
transferred the domain name registration where the respondent stipulated to the
transfer. See also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc. FA
212653 (Nat. Arb. Forum Jan. 13, 2004) in which it was stated “In this case,
the parties have both asked for the domain name to be transferred to the
Complainant…Since the requests of the parties in this case are identical, the
Panel has no scope to do anything other than to recognize the common request,
and it has no mandate to make findings of fact or of compliance (or not) with
the Policy.” See also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb.
Forum June 24, 2005) wherein it was stated “[U]nder such circumstances, where
Respondent has agreed to comply with Complainant’s request, the Panel felt it
to be expedient and judicial to forego the traditional UDRP analysis and order
the transfer of the domain names.”
The Panel is aware of the holding in Graebel Van Lines, Inc. v.
DECISION
There being no contested issues in this case and the demands of
Complainant being unopposed and there being no reason to deny the relief sought
by Complainant under the ICANN Policy, the Panel concludes that relief shall be
GRANTED.
Accordingly, it is Ordered that the <sascurriculmpathways.com> domain
name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 5, 2009
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