SAS Institute Inc. v. Juan Vasquez / inc
Claim Number: FA2204001992823
Complainant is SAS Institute Inc. (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Juan Vasquez / inc (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasinstitutecary.com>, registered with Tucows Domains Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2022; the Forum received payment on April 19, 2022.
On April 19, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <sasinstitutecary.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sasinstitutecary.com. Also on April 19, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Disputed Domain Name <sasinstitutecary.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the trademark SAS and the trade name SAS INSTITUTE since at least as early as 1976 established by its ownership of the portfolio of United States federal trademark registrations described below and extensive, continuous and exclusive use of the mark and trade name in its computer software business since it was founded in 1976.
Complainant claims to be the largest privately-owned software company in the world, serving more than tens of thousands of business, government and university sites across 119 countries.
Complainant asserts that it has advertised its products and services over the Internet on its website at <www.sas.com> for twenty-nine years and on its website at <www.sasinstitute.com> for twenty years.
Complainant alleges that the Disputed Domain Name is confusingly similar to the SAS trademark in which it has rights arguing that the Disputed Domain Name contains the Complainant's SAS trademark in its entirety with the addition of insignificant descriptive insignificant terms.
Complainant submits that the addition of the descriptive terms “Institute” and “Cary” after the SAS mark is insufficient to avoid a likelihood of confusion between the Disputed Domain Name and the SAS mark. The additional words simply replicate Complainant’s corporate name and its location in Cary, North Carolina, serving to encourage confusion, rather than distinguish the Disputed Domain Name from Complainant’s mark.
Several panels have found that the addition of generic or descriptive words to another's trademark creates a confusingly similar domain name and have ordered the transfer of such domain names. See Google Inc. v. Smith Smithers (Forum Dec. 7, 2006) (finding googleforums.com confusingly similar to the trademark Google).
Complainant next alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name
Complainant argues that Respondent is not known by a mark which indicates that the Respondent has no rights in the mark. See Strojirny v. Rautiainen, WIPO Case D2000-1394 (Dec. 20, 2000) (finding that respondent has no rights or legitimate interests in the domain name where respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).
Complainant adds that Respondent has no connection or affiliation with Complainant and asserts that neither Respondent nor its affiliated businesses are known by the name “SAS” or “SAS INSTITUTE”.
Complainant further asserts that Respondent is not authorized by Complainant to use its trademark and Complainant did not register or authorize the registration of the Disputed Domain Name.
Complainant refers to a copy screen capture of the web location to which the Disputed Domain Name resolves, which has been annexed to the Complaint, which shows that the disputed domain name is inactive resolving to a page that states “[w]e can’t connect to the server at www.sasinstitutecary.com”.
Referring to copies of an exchange of emails from February 14 to February 17, 2022 which are exhibited in an annex to the Complaint, Complainant alleges that it has been informed that some of its customers and suppliers have received emails originating from the Disputed Domain Name (i.e., from the source address xxxx@sasinstitutecary.com) purporting to be from Complainant’s Services Delivery Principal, Professional and Program Manager.
The exhibited emails falsely include a signature block containing Complainant’s company name and a name similar to the actual name and company email address for Complainant’s Program Manager. Complainant alleges that these misleading emails are an attempt to collect personal information or financial information.
Complainant argues that Respondent does not use the Disputed Domain Name to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Instead, Respondent’s use of the Disputed Domain Name to transmit emails using a name and contact information highly similar to and purporting to be that of Complainant’s Program Manager manifests a clear intention to use the Disputed Domain Name for fraudulent purposes.
Complainant next alleges that Respondent registered the Disputed Domain Name in bad faith, arguing that the SAS mark is well-known in the software industry, and it is clear that the Respondent registered the Disputed Domain Name with the intent to divert or mislead users seeking information about Complainant. Complainant has maintained its website at <www.sas.com> since 1990, 31 years prior to registration of the Disputed Domain Name, and the website <www.sasinstitute.com> since April of 1999 or 22 years prior to registration of the Disputed Domain Name.
Complainant contends that the fact that the Disputed Domain Name has been registered to be confusingly similar to Complainant’s trademarks is obvious given the content of Respondent’s phishing emails which seek to mislead recipients into believing that the communications originate from the Complainant.
Additionally, Complainant argues that Respondent clearly had constructive notice of Complainant’s SAS mark prior to the selection of the Disputed Domain Name because Complainant’s federal registrations, dating back to at least as early as 1980, serve as constructive notice of its use of the SAS mark. See Pfizer, Inc. v. United Pharmacy, Ltd., WIPO Case D2001-0446 (June 8, 2001) (actual or constructive knowledge of the complainant’s rights in the trademarks is a factor supporting bad faith)
Complainant next alleges that the Disputed Domain Name is being used in bad faith, and by adopting a name which incorporates Complainant’s well-known SAS mark, as well as Complainant’s company name (SAS Institute) and location (Cary), Respondent seeks to benefit from the recognition of Complainant’s SAS mark and SAS Institute company name in order to mislead third parties into providing financial information or other private information.
Complainant adds that Respondent’s phishing emails constitute clear evidence of bad faith. Respondent has been sending emails from the email address jonathan.farley@sasinstitutecary.com in an effort to mislead third parties, into believing Respondent’s communications originated from Complainant’s Program Manager and to cause the recipient to provide personal or financial information.
Complainant further submits that the use of an elaborate signature block displaying the correct title and physical mailing address for Complainant’s Program Manager, with the addition of a false telephone number and email address, demonstrates a clear intent to mislead and deceive and argues that these phishing activities are classic examples of bad faith. See Takeda Pharmaceutical Company Limited v. Leonel Herneandez, FA 1704001725525 (Forum May 11, 2017) (finding bad faith where Respondent sent recruiting emails from email addresses such as hrdept@takedausapharma.com inviting recipients to participate in interviews where they would be asked to provide personal information).
Complainant refers to a statement by Respondent in the alleged phishing email exchange that it has an interest in placing a “bulk order” and submits that the statement leaves no room for any conclusion other than Respondent is using the Disputed Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a provider of computer software-related products and service using the SAS mark for which it owns a portfolio of trademark registrations including the following
· United States of America federal trademark mark SAS registration number 1,132,122 registered on the Principal Register on April 1, 1980, for goods in international class 9
· United States of America federal service mark SAS, registration number 2,484,944, registered on the Principal Register on September 4, 2001 for services in international class 36;
· United States of America federal service mark SAS registration number 2,593,712; registered on the Principal Register on July 16, 2002, for services in international class 42;
· United States of America federal service mark SAS registration number 2,657,842, registered on the Principal Register on December 10, 2002, for services in international class 35;
· United States of America federal service mark registration SAS registration number 2,687,081, registered on the Principal Register on February 11, 2003, for services in international class 38; and
· United States of America federal trademark SAS registration number 2,583,378, registered on the Principal Register on June 18, 2002, for goods in international class 16.
Paragraph 15(a) of 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence that long established and extensive rights in the SAS mark established by its ownership of the United States trademark registrations described above and long, continuous, and extensive use of the mark dating back to when Complainant was established in 1976.
The disputed domain name <sasinstitutecary.com> consists of Complainant’s mark in its entirety, in combination with the elements “institute”, “cary”, and the generic Top Level Domain “(gTLD”) extension <.com>.
Complainant’s SAS mark is the initial and dominant element in the disputed domain name. The phrase “SAS Institute” is Complainant’s trade name, and “cary” is the name of the town where Complainant is situated.
The use of the SAS mark as the dominant element of the Disputed Domain Name is sufficient to make a finding of that it is confusingly similar to Complainant’s mark. In context the addition of the elements “institute” and “cary” add to the confusion.
The gTLD extension <.com> does not prevent a finding of confusing similarity as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <sasinstitutecary.com> is confusingly similar to the SAS mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
• Respondent is not known by a mark which indicates that the Respondent has no rights in the mark.
• Respondent has no connection or affiliation with Complainant;
• neither Respondent nor its affiliated businesses are known by the name “SAS” or “SAS INSTITUTE”;
• Respondent is not authorized by Complainant to use its SAS trademark;
• Complainant did not register or authorize the registration of the Disputed Domain Name;
• The copy screen capture of the results of a browser search for the Disputed Domain Name which has been annexed to the Complaint, shows that the disputed domain name is inactive resolving to a page that states “[w]e can’t connect to the server at www.sasinstitutecary.com”;
• copies of an exchange of emails on February 14 to February 17, 2022 are evidence that, as Complainant has been informed, some of its customers and suppliers have received emails originating from the Disputed Domain Name (i.e., from the source address xxxx@sasinstitutecary.com) purporting to be from Complainant’s Services Delivery Principal, Professional and Program Manager;
• the exhibited emails falsely include a signature block containing Complainant’s company name and a name similar to the actual name and company email address for Complainant’s Program Manager;
• Complainant alleges that these misleading emails are an attempt to collect personal information or financial information.
• Respondent’s use of the Domain Name to transmit emails using a name and contact information highly similar to and purporting to be that of Complainant’s Program Manager manifests a clear intention to use the Disputed Domain Name for fraudulent purposes;
• Respondent’s use of the Disputed Domain Name neither constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has enjoyed substantial growth and recognition in the software industry and has built a strong reputation and goodwill in its SAS mark and brand, including by maintaining a continuous Internet presence with its website at <www.sas.com> since 1990, 31 years prior to registration of the Disputed Domain Name.
The Disputed Domain Name is a unique combination of Complainant’s SAS trademark, the additional element “institute” forming Complainant’s trade name, and the geographical place name “Cary” where Complainant is established. There is no room for any doubt that the registrant of the disputed domain name was actually aware of Complainant when the disputed domain name was registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant’s mark in mind in order to take predatory advantage of Complainant’s name, mark and goodwill in order to confuse Internet users.
The uncontested allegations supported by evidence in the form of copies of emails exchanged between Respondent and a business associate of Complainant, show that Respondent has engaged in sending phishing emails, by purporting to impersonate Complainant, using the identity of one of Complainant’s employees, in order to gain the confidence of one of Complainant’s business associates.
The emails show that Respondent was clearly endeavoring to mislead the recipient, creating the impression that the communications originated from Complainant’s Program Manager and intending to collect personal or financial information.
As alleged by Complainant, Respondent’s use of the correct title and physical mailing address for Complainant’s Program Manager, with the addition of a false telephone number and email address, demonstrates a clear intent to mislead and deceive and allows a finding that Respondent is using the disputed domain name in bad faith to engage in phishing activities.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sasinstitutecary.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 18, 2022
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