The Complainant is SAP AG of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America (“USA”).
The Respondent is Pipeline Software, Inc. / Raju Patel of Santa Ana, California, USA, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2013. On March 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2013, the Registrar 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2013. The Response was filed with the Center on April 4, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 15, 2013. 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 commenced operations in 1972 and is a world leading company specializing in enterprise software applications and related services. The Complainant is headquartered in Germany and employs over 55,000 people, serving 197,000 customers in nearly 130 countries. The Complainant is listed on both the Frankfurt and New York stock exchanges and has a subsidiary company based in the USA named SAP America, Inc.
The Complainant is the owner of multiple registered trademarks for the word mark SAP, for example USA Federal Registered Trademark No. 2538716 registered on February 19, 2002 in international classes 9, 41 and 42. The Complainant’s SAP trademark and brand has come to be recognized as the exclusive source of SAP software and has been ranked 25th in the Interbrand “Best Global Brands 2012” survey. In the said survey, the Complainant is described as “the market and technology leader in business management software, solutions and services.”
According to the history report of the disputed domain name annexed to the Complaint, the disputed domain name was created on November 17, 2001 and was acquired by the Respondent at some point between December 20, 2007 and January 14, 2008. Screenshots available on the “Internet Archive Wayback Machine” indicate that between April, 2008 and November, 2010 the website associated with the disputed domain name displayed the message “Coming soon”. On November 27, 2012 the said website displayed a parking page provided by the Registrar displaying sponsored listings including hyperlinks which appear to refer to enterprise resource planning software competitive to that of the Complainant. The said website also stated at the top of the page “This domain is for sale! Contact [the Respondent's administrative contact email address].”
On November 27, 2012 the Complainant’s representative wrote to the Respondent by email providing details of the Complainant’s trademarks and requesting transfer of the disputed domain name. On November 29, 2012, the Respondent replied in two emails, the first stating “The site is for Sundling and Patel Solutions, we have just not put up site [sic] yet.” and the second stating “The domain is not for sale. I will check with the registrar why it is showing up that way.” By March 12, 2013, the website associated with the disputed domain name had ceased to display the “for sale” message, which had been replaced with the statement “This domain is under construction”. The said website continued to feature sponsored listings, some of which appear to refer to the Complainant’s software or the products and services of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that its use of the SAP trademark occurred long prior to the acquisition of the disputed domain name by the Respondent in early 2008. The Complainant contends that the disputed domain name fully incorporates the Complainant’s well-known registered trademark and that the addition of the word “solutions” does not provide sufficient differentiation from such trademark. The Complainant contends that the use of the word “solutions” increases the confusing similarity, as the Complainant offers software solutions, and “SAP Solutions” can reasonably be read to be a website that will assist the user in finding the appropriate SAP solution for a particular business need.
The Complainant states that the Respondent has no legitimate interest in or bona fide business purpose for using the disputed domain name. The Complainant contends that the Respondent has no trademark rights or any other legitimate rights in the mark SAP nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark. The Complainant asserts that the Respondent is not a reseller of SAP products and is not an authorized SAP partner or consultant.
The Complainant states that the Respondent does not offer a bona fide product or service on the website associated with the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainant states that given the Complainant’s extraordinary renown, it is reasonable to conclude that the Respondent is seeking to capitalize on the Complainant’s brand. The Complainant asserts that the Respondent’s allegation that the disputed domain name was acquired for a business called “Sundling and Patel Solutions” is not credible, noting that Pipeline Software has owned the disputed domain name for five years, yet there has never been content on the associated website. The Complainant notes that the Respondent’s choice of the disputed domain name for a software business is apt to cause confusion with the Complainant.
The Complainant submits that registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark is sufficient evidence of bad faith registration and use. The Complainant states that the Respondent registered the disputed domain name despite having no rights in the mark SAP in which the Complainant has prior valid and subsisting rights, asserting that these factors are sufficient to establish bad faith especially where the Respondent was aware of the Complainant's prior rights. The Complainant asserts that the Respondent is deriving financial benefit from the web traffic diverted through the disputed domain name and that by doing so, the Respondent has intentionally attracted Internet users searching for legitimate and authorized products and services of the Complainant, and has benefited as a result of the confusion with the Complainant. The Complainant contends that this amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent submits that the disputed domain name has been registered since 2008 with the intent of using the website for “Sundling and Patel (SaP) Solutions”. The Respondent states that Mr. Sundling and Raju Patel have been involved in business together since 1997. The Respondent admits that the disputed domain name was listed for sale for a period of time but states that this was done by mistake. The Respondent asserts that the disputed domain name is not for sale and is not used to generate business based on the Complainant’s SAP trademark. The Respondent states that there is no confusion caused by the disputed domain name because its main purpose is to establish an identity for the business that is being launched.
The Respondent contends that it has a bona fide business purpose for the disputed domain name and that the Complainant’s claim that the Respondent has no rights is unwarranted. The Respondent states that the Complainant conducts its business on the website at “” and that this is the Complainant's trademark. The Respondent argues that the Complainant cannot have a right to the disputed domain name simply because it contains the same three letters as the Complainant’s trademark. The Respondent adds that the Complainant’s claim that the Respondent seeks to capitalize on the SAP mark simply by having a parking page is completely inaccurate. The Respondent states that, to date, there has been no financial benefit to the Respondent in respect of the disputed domain name. The Respondent notes that there are thousands of websites on the Internet that are still being launched and the Respondent’s is no exception.
The Respondent contends that the Complainant’s claim that the choice of the disputed domain name for a software business is apt to cause confusion with the Complainant is unfounded. The Respondent submits that there has been no mention on the associated website or elsewhere that the disputed domain name will be used for a software business and explains that the Respondent’s business relates to process consulting.
The Respondent concludes that the disputed domain name is being used fairly and not to mislead consumers or to tarnish the trademarks of the Complainant. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has demonstrated that it is the owner of the trademark SAP, in respect of which it has procured registered rights in numerous jurisdictions. The disputed domain name reproduces the Complainant’s well-known SAP trademark in its entirety together with the generic or descriptive word “solutions”. It is well recognized in cases under the Policy that where such a mark is incorporated into a domain name in its entirety, the addition of a generic or descriptive word will not distinguish that domain name from the mark (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). The Panel finds in the present matter that the dominant part of the disputed domain name is the Complainant’s SAP trademark and furthermore that the generic word “solutions” in the disputed domain name is likely to enhance the prospect of confusion, given that it is a word frequently used to describe the Complainant’s products and services, including, for example, in the Interbrand survey noted in the Factual Background section above.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent has no trademark or other legitimate rights and has not been authorized or licensed by the Complainant to use its trademark, nor is the Respondent offering a bona fide product or service on the associated website. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of such rights or legitimate interests.
The Respondent’s submissions are broadly directed to paragraphs 4(c)(i) and (ii) of the Policy, in that it is the Respondent’s case that the disputed domain name was registered for the Respondent’s process consulting business named “Sundling and Patel Solutions”. The Respondent notes that Messrs Sundling and Patel have been in business since 1997. In effect, the Panel considers that the Respondent is saying that it has always intended to use the disputed domain name in connection with a bona fide offering of goods and services, namely process consulting, in accordance with paragraph 4(c)(i) of the Policy, and/or that it has been commonly known by the disputed domain name which is an acronym of “Sundling and Patel Solutions” in accordance with paragraph 4(c)(ii) of the Policy. The problem with either of these main contentions is that they are entirely unaccompanied by any evidence whatsoever and are merely unsupported assertions.
Taking the issue of paragraph 4(c)(i) first, the Panel notes that the Policy requires the Respondent to show use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. In the Panel’s opinion, stating an intent to use a domain name for an offering of goods and services is not enough. The Respondent must at least provide evidence of “demonstrable preparations” and has failed to do so. The Panel notes in passing that even if the Respondent had produced evidence of demonstrable preparations to use the disputed domain name in connection with “process consulting” (which is not described further in the Response) the Panel may not have considered this to constitute a bona fide offering of goods and services if it appeared to the Panel to be calculated to ride on the coat tails of the extensive goodwill which the Complainant has generated in its SAP trademark.
Turning to the question of paragraph 4(c)(ii) of the Policy, the Panel notes that the Policy requires that the Respondent show it has been commonly known by the disputed domain name. No evidence has been placed before the Panel to this effect. The Panel notes that in any event had the Respondent produced evidence to show that Messrs Sundling and Patel had been in business since 1997 this would not necessarily demonstrate that their business has been commonly known as the acronym variant “SAP Solutions” as the Policy requires. The question of whether a respondent can establish rights or legitimate interests in an acronym of an alleged business name has been considered by this Panel before in the case of Prada S.A. v. Minidisco,WIPO Case No. D2002-0923, and by a different panel in the case of The NASDAQ Stock Market, Inc. v. Steve Grewal,WIPO Case No. DTV2001-0001. In both of these cases, the panels found that even if rights or legitimate interests may be established in the name of an organization this does not mean that such rights or interests can necessarily be established in any relative acronym, especially if the acronym concerned corresponds directly to that of a complainant’s famous mark. The Panel so finds in the present case.
In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element of the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, 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 web site 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 web site or location or of a product or service on your web site or location.”
In the present case the Complainant focuses on the fact that its SAP trademark is famous and further states that the registration of a domain name that is confusingly similar thereto is sufficient evidence of bad faith registration and use. The Panel considers that the Complainant’s SAP trademark is so well-known that the reproduction of this mark in the disputed domain name alongside the word “solutions” which is widely used as a descriptor for the Complainant’s services (see, for example, the reference to the Interbrand survey in the Factual Background section above) is a prima facie indication that the Respondent intended to target the Complainant’s rights via the disputed domain name and thus that the disputed domain name was registered and is being used in bad faith. The Respondent’s answer is that it was not targeting the Complainant or its rights as the disputed domain name was acquired for the Respondent’s “Sundling and Patel Solutions” business. The Panel considers that had the Respondent produced supporting evidence to back up this claim its credibility would in any event have been in doubt in the face of the Complainant’s well-known trademark. In the absence of any such evidence, however, the Panel considers that the Respondent’s case is wholly unconvincing.
The Complainant also focuses on the fact that the Respondent offered the disputed domain name for sale on the associated website. In the Panel’s opinion, this action of the Respondent could only be described as entirely inconsistent with the Respondent’s own case that it registered the disputed domain name to represent its trading name. The Respondent answers that the existence of the sale notice was a mistake. No additional details or explanation are given regarding the alleged mistake and in the absence of such the Panel considers that it cannot place any weight upon this aspect of the Respondent’s case, consisting as it does of an unsupported assertion. On the contrary, the Panel is of the opinion that it must view the presence of the “for sale” notice with considerable suspicion and indeed as a potential indicium of cybersquatting. It is also worth adding that although the Respondent took down the notice after receipt of the Complainant’s correspondence this does not have any bearing upon whether the disputed domain name was registered and used in bad faith and does not in the Panel’s view preclude such a finding.
The Respondent notably did not take down the advertising hyperlinks from the website associated with the disputed domain name following receipt of the Complainant’s correspondence. These links were directly targeting the Complainant’s brand and trademark. The Respondent states that it has not received any financial benefit from the links; however plainly either the Respondent or the Registrar has sought to obtain such benefit and the Respondent alone, as the registrant of the disputed domain name, is responsible for the content on its website. This particular topic is addressed in paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which notes that some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where (1) the links are shown to be genuinely automated; (2) there is no evidence that the respondent influenced the advertising content; (3) the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark; and (4) other indicia of cybersquatting are not present.
In the present case, however, the Respondent does not deny knowledge of the Complainant’s trademark, credibly or otherwise. The Panel considers that it would have been very difficult for the Respondent to have done so convincingly given the global fame of the Complainant’s mark and the fact that the Respondent chose to place this mark alongside the descriptor “solutions” which is frequently used to describe the Complainant’s products and services. In addition, as noted above, there is a potential indicium of cybersquatting present in the fact that the disputed domain name was offered for sale on its associated website and, in the Panel’s view, the Respondent has failed to provide an adequate explanation for this.
Taking all of the above into consideration, the Panel finds on the balance of probabilities that the disputed domain name was registered and has been used in bad faith and accordingly that the Complainant has established the third element under the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: April 29, 2013
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