WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Domain Admin
Case No.�D2006-1526
1. The Parties
The Complainant is SAP AG, of Waldorf, Germany, represented by Akin, Gump, Strauss, Hauer & Feld LLP, of Washington DC, United�States�of�America.
The Respondent is Domain Admin, of Fort Wayne, Indiana, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on November�30,�2006. On December 1,�2006 and December�18,�2006, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name at issue. On December�18,�2006, BulkR 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 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�19,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was January�8,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January�9,�2007.
The Center appointed Clive N.A. Trotman as the sole panelist in this matter on January�19,�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, SAP AG (“SAP”), is the world’s largest business software company and third-largest independent software provider, having begun operations in 1972. The Complainant currently serves over 36,000 customers worldwide. SAP is headquartered in Germany and employs over 38,000 people in about 50 countries. In the United States of America, SAP employs approximately 6,000 employees and provides its services across the United States of America, including the state of Indiana, where the Respondent is located.
Approximately 12 million users work daily with SAP solutions worldwide. The industries served include aerospace and defence, automotive, banking, chemicals, consumer products, security, engineering, construction and operations, healthcare, high technology, higher education and research, industrial machinery and components, insurance, life sciences, logistics service providers, media, mill products, mining, oil and gas, postal services, professional services, public sector, railways, retail, telecommunications, utilities, and wholesale distribution.
The Complainant owns, inter alia, trademarks SAP and Design, Registration No.�2,905,468; MYSAP.COM, Registration No.�2,849,999; and SAP NETWEAVER Registration No.�3,022,393 which are registered with the United States Patent and Trademark Office.
The Complainant’s trademarks are recognized in the fields of information technology, software, education and training, and business solutions services. SAP is well known and the company sponsors high-profile sporting events including professional tennis, Formula One racing, athletics and golf.
The Complainant’s SAP EDUCATION services include on-site training programs, workshops, the “SAP Solutions Academy”, and various other educational and training programs, seminars and workshops for customers, partners, and independent consultants. The State of Indiana is among places where these are offered.
SAP operates websites having the domain names (Germany) and (United States of America), among numerous others. The domain name was registered on January�18,�1995.
The disputed domain name evidently was registered by the Respondent on April�21,�2006.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar and materially identical to the Complainant’s trademarks SAP and SAP EDUCATION.
The Complainant further contends that the Respondent has no legitimate interests or business purpose in the disputed domain name. The Respondent has no trademark rights or any other legitimate rights in SAP, SAP EDUCATION, or any SAP marks and has no relationship with the Complainant. The domain name was registered without any authority or permission from the Complainant.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith on a number of grounds. The Complainant is prevented from itself registering , which is appropriate for the marketing of its educational business. Given SAP’s extensive use of its SAP and SAP EDUCATION marks in the United States of America and elsewhere, the Respondent must have known of the Complainant’s trademark when registering the disputed domain name. The Respondent had constructive notice of the registration and ownership of the trademarks under 15 U.S.C. � 1072.
The Complainant further contends that the disputed domain name has never been used as, or been linked to, an active bona fide commercial website but resolves to an advertising portal linked to sites not related to, sponsored by, or affiliated with SAP. The website of the domain name is essentially a domain name holding site containing links to third party sites.
The Complainant cites as supporting a finding of bad faith: Rhino Entertainment Company v. DomainS, Inc., WIPO Case No.�D2006-0968 (registration of domain name incorporating a complainant’s mark despite having no connection to the complainant, or having merely superficial links to third parties’ sites to generate traffic); and J. Crew International, Inc. v. , WIPO Case No.�D2000-0054 (speculative registration of a domain name that is the trademark of another without a demonstrable plan for bona fide use of the domain name).
Email and overnight courier letters to the Respondent, attempting to resolve the dispute, were not responded to.
The Complainant requests the transfer of the disputed domain name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph�4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a�‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The disputed domain name is . The Complainant has submitted documentary evidence of its ownership of a number of trademarks or service marks containing the entity SAP. There is no evidence of the name “sap education”, as such, having been registered as a trademark. There is, however, a body of evidence in the form of screen prints of the Complainant’s website showing extensive educational activities under the prominent heading “SAP Education”.
In assessing the degree of similarity between a domain name and a trademark the directory qualifier, in this case “.com”, being an inevitable part of the domain name, is disregarded. The presence or absence of spaces is similarly of no consequence, since there is no technical provision for spaces in a domain name. Thus, the question is whether the “sapeducation” component of the domain name is confusingly similar to the trademark SAP.
It is well established in domain name dispute decisions that the incorporation of a trademark creates confusing similarity that is not diminished by the addition of other letters or words (Sanofi-Aventis v. C, WIPO Case No.�D2005-0660; Telia AB v. Alex Ewaldsson and Birgitta Ewaldsson, WIPO Case No.�D2000-0599; InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, WIPO Case No.�D2000-0068; Infos Inc. v. Infospace Technology Co. Ltd., Case No.�D2000-0074). The trademark SAP is unusual and in the context of its use does not evoke any general or alternative connotations; it belongs to the Complainant. To that extent the incorporation of the trademark SAP into the disputed domain name results in confusing similarity, which given the Complainant’s attention to education, is only aggravated by the extension “education”. The domain name is found to be confusingly similar to a trademark in which the Complainant has rights.
The Panel finds for the Complainant in the terms of paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Conventionally the Complainant may make out a prima facie case by showing that it has not granted the Respondent any use of its trademark and is not aware of any way in which the Respondent could have any right to use the trademark in a domain name. It is for the Respondent to refute the prima facie case.
The Complainant asserts that the Respondent has no rights or legitimate interests whatsoever in the disputed domain name and has no relationship with the Complainant. The Complainant did not grant the Respondent any authority or permission to register the domain name. The assertions of the Complainant constitute a prima�facie case to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Respondent has offered no reply and has not refuted the Complainant’s assertions. In the terms of the indicative defences provided for, without limitation, in paragraph�4(c) of the Policy, there is no evidence that the Respondent may have used the domain name or a name corresponding to the domain name in connection with a bona�fide offering of goods or services; or been commonly known by the domain name; or made a legitimate noncommercial or fair use of the domain name; or has any alternative defence.
The Panel finds that the Respondent does not have any right or legitimate interest in the domain name in the terms of paragraph�4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph�4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph�4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Sub-paragraph�(iv) is especially relevant. The domain name is in use, in so far as it resolves to a website offering links to other commercial websites. This is not in itself a legitimate use (Alex Springer AG v. AUTOBILD.COM, WIPO Case No.�D2005-0554). The Complainant has adduced evidence of having its own extensive and impressive website, derived from the address “www.”, many pages of which are devoted to a comprehensive program of educational services related to its business. The disputed domain name has been found to be confusingly similar to the Complainant’s trademark. It may reasonably be concluded that many of those Internet users who find their way to have attempted to make contact with the business of the Complainant, or have searched for specific descriptors in the nature of the Complainant’s business, particularly “sap” and “education”, and believe they have reached an authentic website of the Complainant. Those users have been misled to the Respondent’s website, a screen print of which was provided in evidence. The site makes liberal use of the Complainant’s trademark SAP in a purportedly educational context, and in the Panel’s assessment, could confuse users into believing they are dealing with the Complainant. From this spurious website the user, by selecting from a variety of so-called “related searches”, is further diverted to external commercial sites.
The Respondent has offered no explanation as to why it should have set up a website and referral system that exploits the Complainant’s trademark. It is implausible that this was done without some intended commercial benefit, presumably the collection of fees from other website owners in return for the diversion of traffic to them. This is a revenue-generating device well known as “click-through”. The Panel finds registration and use in bad faith in the terms of paragraph�4(b)(iv) of the Policy.
The circumstances indicative of bad faith listed in paragraph�4(b) of the Policy are not exclusive and bad faith may be found alternatively. The Panel notes with approval and as being applicable to the present case the precedent cases submitted by the Complainant: Rhino Entertainment Company v. DomainS, Inc., WIPO Case No.�D2006-0968 (registration of a domain name incorporating a complainant’s mark despite having no connection to the complainant, or having merely superficial links to third parties’ sites to generate traffic, as evidence of bad faith); and J. Crew International, Inc. v. , WIPO Case No.�D2000-0054 (speculative registration of a domain name that is the trademark of another without a demonstrable plan for bona fide use, as evidence of bad faith). The Respondent’s failure to reply to conciliatory communications from the Complainant is a further aggravating factor (Ebay Inc. v. E and Tony Caranci, WIPO Case No.�D2000-1632).
The Panel finds bad faith proven in the general terms of paragraph�4(b) of the Policy, and specifically in accordance with the criteria of paragraph�4(b)(iv) 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.
Dr Clive N.A. Trotman
Sole Panelist
Dated: February�2,�2007
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