The Complainant is SAP AG of Walldorf, Germany, represented by Hogan Lovells International LLP, Germany.
The Respondent is Prof. Dr. Mehmet Erdas of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. - Denmark. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2010. On September 10, 2010, the Center transmitted by email to Ascio Technologies Inc. - Denmark a request for registrar verification in connection with the disputed domain name. On September 13, 2010, Ascio Technologies Inc. - Denmark transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 13, 2010. On October 4, 2010, the Center received an email communication from the Respondent. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 15, 2010. Upon receipt of the Notification of the Respondent’s default, the Respondent filed additional communications with the Center on October 18, 2010 and October 26, 2010, asking the Center to contact his lawyer “for any correspondence as to the on going process by Mannheim Court”.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 29, 2010. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant was founded in 1972 and is one of the largest software companies worldwide. The Complainant is internationally acknowledged as a market leader for inter-enterprise software solutions. The Complainant’s software is today deployed at more than 47,800 business installations in more than 120 countries. The Complainant has been a public company since 1988 and is listed on several stock exchanges, including the Frankfurt Stock Exchange and the New York Stock Exchange.
The Complainant is the registered owner of numerous trademarks for marks SAP and SAP SOLUTIONS, including German registration No. 39946355 SAP, registered on November 15, 1999, International registration no. 726890 SAP, registered on November 15, 1999, and German registration no. 39645978 SAP SOLUTIONS and design, registered on December 20, 1996 (hereinafter referred to as the “SAP Marks”).
Furthermore, the Complainant has registered numerous domain names, including and .
The Respondent has been providing consultancy services for the Complainant’s products for 9 years and wrote the first pioneer book in the Turkish language on SAP.
The disputed domain name was registered on April 13, 2009. The Respondent did not use the disputed domain name in connection with an active website but merely in connection with a placeholder website. However, he has used the domain names and in connection with websites offering “intelligent business solutions”, including consultancy services for the Complainant’s products, under the name “SAPsolutions”.
The Complainant sent cease and desist letters to the Respondent on October 1, 2009 and October 28, 2009. In reply to the first letter, the Respondent informed the Complainant that he would stop the use of the disputed domain name but kept on using it identically afterwards.
The Complainant already obtained a judgment from the Regional Court of Mannheim on May 21, 2010, ordering the Respondent to stop using the disputed domain name . This judgment became legally binding on June 17, 2010. On June 25, 2010, the Respondent filed an objection against the judgment of May 21, 2010, and on July 8, 2010 alternatively filed for restitutio in integrum. In its judgment of August 13, 2010, the Regional Court of Mannheim dismissed both the objection and the request for restitutio in integrum as inadmissible. On September 9, 2010, the Respondent filed an appeal against the judgment of the Regional Court of Mannheim of August 13, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s trademark SAP SOLUTIONS, as it contains such trademark almost identically. Furthermore, the Complainant states that the disputed domain name is also confusingly similar to the Complainant’s trademark SAP, as it fully incorporates such trademark and as the addition of the generic term “solutions” does not prevent a finding of confusing similarity.
(2) The Respondent has no rights or legitimate interests in the disputed domain name, as he has never used the disputed domain name for a bona fide offering of goods or services. Although the disputed domain name has not been used in connection with an active website, the Complainant states that the Respondent used the domain names and in connection with an infringing website, which indicates that the Respondent did not intend to use the disputed domain name for a bona fide offering of goods and services either. The Complainant further states that there is no indication that the Respondent was commonly known by the disputed domain name or a name corresponding to the disputed domain name, that the Respondent is not and has never been, a representative or licensee of the Complainant, and that the Respondent is not authorized to use the SAP Marks. The Complainant finally states that the fact that the Respondent has no rights or legitimate interests in the disputed domain name has been confirmed by the judgment of the Regional Court of Mannheim, which enjoined the Respondent from using the disputed domain name.
(3) The disputed domain name has been registered and is being used in bad faith. With regard to bad faith registration, the Complainant states that the SAP Marks were famous worldwide at the time of the registration of the disputed domain name. The Complainant further states that the Respondent was offering software products and consultancy services related to the Complainant’s products and therefore registered the disputed domain name with knowledge of the SAP Marks in order to benefit from the reputation of the Complainant’s famous marks. With regard to bad faith use, the Complainant contends that the passive holding of the disputed domain name equals bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions but requested to “revert back this dispute to the German Court for a proper trial and final decision”. 6. Discussion and Findings
The first issue to be dealt with is the question whether the legal proceedings before the German courts related to the disputed domain name prevent a decision under the UDRP. However, as such proceedings only pertain to the use and not to the cancellation or transfer of the disputed domain name, the Panel finds that the matter in dispute in Mannheim is different from the present claim under the UDRP. As a result, the Panel is not prevented from casting a decision and elects to exercise its discretion pursuant to paragraph 18(a) of the Rules.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s SAP Marks in which the Complainant has exclusive rights.
The additional word “solutions” following the Complainant’s word mark SAP in the disputed domain name is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “solutions” (cf. Novell, Inc. v. Taeho Kim, NAF Claim No. 167964 (); Verizon Trademark Services LLC v. Darlington Edu d/b/a Barmax Distribution, NAF Claim No. 830994 ( et al.); Diebold, Incorporated v. Diebold, Incorporated,WIPO Case No. D2007-0657 (); Dell Inc. v. DI_4747995,WIPO Case No. D2007-0803 ( et al.).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence to demonstrate that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The Respondent is not a representative or licensee of the Complainant and not authorized to use the SAP Marks. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the SAP Marks, which have been found to be amongst the world's top brands (cf., SAP AG v. Micah Quarles/Domains by Proxy Inc.,WIPO Case No. D2009-1297), as the Respondent was offering software products and consultancy services related to the Complainant’s products at the time of the registration of the disputed domain name.
As the disputed domain name is not actively used by the Respondent the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is the consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (cf. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
The Complainant provided evidence that the SAP Marks are well established and well-known. On the other hand, the Respondent failed to provide evidence of any actual or contemplated good faith use although he was contacted by the Complainant several times. Furthermore, the Respondent has registered not only the disputed domain name but also the domain names , and and has apparently infringed the Complainant’s rights in its SAP Marks by the use of the domain names and . Finally, the fact that the disputed domain name fully incorporates the Complainant’s highly distinctive SAP word mark by merely adding the generic word “solutions” is giving the false impression that the Complainant, who offers software solutions, owns the disputed domain name. As a result, such name is a name Internet users might mistakenly enter when searching for the Complainant’s services or website.
In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the domain name equals use in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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.
Brigitte Joppich
Sole Panelist
Dated: November 8, 2010
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