WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. OMNI Consulting Group
Case No. D2006-1524
1. The Parties
The Complainant is SAP AG, Germany, represented by Akin, Gump, Strauss, Hauer & Feld, Washington, D.C., United States of America.
The Respondent is OMNI Consulting Group, Buffalo, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November�30,�2006. On November�30,�2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On December�1,�2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 December�12,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January�1,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January�3,�2007.
The Center appointed William R. Towns as the sole panelist in this matter on January�18, 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 is the world’s largest inter-enterprise software company and the world’s third largest independent software supplier overall. Launched in Germany in 1972 as a small software vendor developing applications for date processing, the Complainant has emerged as a global leader in collaborative, inter-enterprise business solutions for a wide variety of industries. The Complainant has established a significant presence in the United States, and owns certificates of registration issued by the United States Patent and Trademark Office (“USPTO”) for the trademarks SAP and SAP NETWEAVER, as well as other “SAP” formative marks (hereinafter collectively the “SAP marks”). The Complainant has used its SAP marks extensively in the United States since as early as 1993.
The Respondent registered the disputed domain name on December�5,�2000, according to the Dotster WHOIS database. The disputed domain name currently resolves to the Respondent’s website, where the Respondent offers staffing solutions for businesses, focused in areas such as IT, engineering, accounting and finance.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that its SAP marks are well known and famous, and that the disputed domain name is confusingly similar to its marks. The Complainant has not authorized or given permission to the Respondent to register a domain name reflecting the Complainant’s marks, and the Complainant maintains that the Respondent does not have rights or legitimate interests in the disputed domain name. Given the Complainant’s extensive use of its SAP marks in the United States, the Complainant infers that the Respondent had actual knowledge of the Complainant’s trademark rights, and that the Respondent intentionally registered and is using the disputed domain name in a bad faith attempt to profit from the goodwill in the Complainant’s marks, by creating confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s commercial website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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. See 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”. See 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 name 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 non-exhaustive 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, a number of panels have concluded that paragraph�4(c) of the Policy 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
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s SAP marks for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in the SAP marks through registration and use, and the disputed domain name incorporates the Complainant’s SAP mark in its entirety. At a minimum, the Complainant’s marks are 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.
Under paragraph 4(a)(i) of the Policy that the question of identity or confusing similarity is evaluated based 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; InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Caf�, WIPO Case No. D2000-0068.
Upon direct examination, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As the Complaint convincingly reflects, no affiliation exists between the Complainant and the Respondent, and the Complainant has not authorized or licensed the Respondent to use the Complainant’s SAP marks or to register domain names reflecting the Complainant’s marks. The disputed domain name and the Respondent’s use of the domain name on its website (linking the Respondent’s “Omni” name with the Complainant’s SAP mark, i.e., “OmniSAP.com”), in the absence of any disclaimer, could potentially mislead Internet users seeking information about the Complainant and its services to believe that the Respondent is in some manner affiliated with Complainant.
Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph�4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient 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 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 name 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 has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.1 Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel has examined the record for circumstances that might support a claim by the Respondent of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel has found none. While the record arguably reflects the Respondent’s use of the disputed domain name, prior to receiving any notice of this dispute, to direct Internet users to its commercial website, such use without more does not bring the Respondent within the safe harbor provision of paragraph 4(c)(i). It is well settled under the Policy that for an offering under paragraph 4(c)(i) to be considered bona fide, the domain name use must be in good faith under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No.�D2000-1840.
The circumstances of this case, including the Respondent’s lack of response, support the inference that the Respondent registered a domain name intentionally incorporating the Complainant’s well known SAP mark, in order to use the domain name in an attempt to exploit and profit from the good will established in the Complainant’s mark. This is not a good faith use of the domain name under the Policy. To the contrary, as noted in Research In Motion Limited v. Dustin Picov, WIPO Case No.�D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a respondent shown to be aware of this connection suggests “opportunistic bad faith”.
Accordingly, the Complainant has satisfied its burden under 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. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No.�D2004-0230.
As discussed above, the Panel concludes that the Respondent deliberately appropriated the Complainant’s SAP mark for its own use. The evidence is uncontroverted that the Respondent has used and is continuing to use the disputed domain name – which is confusingly similar to the Complainant’s mark – to divert Internet users to the Respondent’s commercial website. The record supports the conclusion that the Respondent is intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered at its website.
The Panel considers from the circumstances as discussed herein that the Respondent’s primary motive in registering the disputed domain name was to profit from and exploit the Complainant’s trademark rights, which constitutes bad faith registration. The Panel further finds that the Respondent is making a bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Complainant has met his burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: February 1, 2007
1 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No.�D2000-0403.
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