SAS Institute Inc. v. OS Domain Holdings VIII, LLC
Claim Number: FA0904001259735
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
Respondent offers the voluntary transfer of the domain name to Complainant.
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.
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.
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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