The Complainant is SAP AG of Walldorf, Baden-Württemberg, Germany, represented by Kenyon & Kenyon LLP, United States of America.
The Respondent is PrivacyP / John Harvard, John Havard of Nobby Beach, Queensland, Australia and New York, New York, United States of America respectively. 2. The Domain Names and Registrars
The disputed domain names and are registered with NetEarth One Inc. d/b/a NetEarth and PDR Ltd. d/b/a PublicDomainR respectively (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 19, 2013 and June 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 24, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 26, 2013. In response to a notification by the Center that the amended Complaint was administratively deficient, the Complainant filed an amended Complaint on June 27, 2013.
The Center verified that the Complaint together with the amended 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 July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2013.
The Center appointed Luca Barbero as the sole panelist in this matter on July 29, 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 its business in 1972 and is a world leading company specializing in enterprise software applications and related services. The Complainant is headquartered in Germany and serves customers in more than 130 countries.
The Complainant is the owner of trademark registrations for SAP alone or in combination with other words or device elements in several countries of the world, including the International trademark No. 726890 for SAP (word mark), registered on November 15, 1999, in classes 9, 16, 35, 41 and 42; the Community trademark No. 001270693 for SAP (word mark), filed on August 9, 1999, in classes 9, 16, 18, 25, 28, 41 and 42, the United States trademark No. 2905468 for SAP (word and design), filed on August 1, 2001, in International class 9.
The Complainant also owns numerous copyrights in its various software product and in the related education and certification materials.
The disputed domain names and were registered on March 12, 2009 and May 2, 2009, respectively, and, according to the screenshots submitted by the Complainant, were redirected in the past to web sites featuring SAP software product names and purporting to sell SAP products and SAP education and certification courses. Cease and desist letters were addressed by the Complainant to the hosting providers of the web sites published at the disputed domain names. At the time of the drafting of this Decision, the disputed domain names are redirected to web pages displaying only the indication “This Account Has Been Suspended”. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain names are virtually identical and confusingly similar to its trademark SAP and highlights that, since its trademark SAP is used for certification products and courses, the addition of the term “certified” is an even stronger argument to support the finding that the disputed domain names are confusingly similar with the Complainant’s trademark.
With reference to rights or legitimate interests in the disputed domain names, the Complainant states that it has not authorized the Respondent to use its trademark SAP in the disputed domain names or on the correspondent web sites.
The Complainant also asserts that the Respondent’s use of the disputed domain names to promote the sale of unauthorized and infringing SAP branded products does not constitute a bona fide offering of goods and services. The Complainant highlights that, on the web sites published at the disputed domain names, the Respondent is inviting visitors to “[g]et SAP Certification Courses For Any Below SAP Module” and is offering a SAP help line that would respond to any questions within 60-180 minutes. The Complainant therefore argues that such representations suggest that the Respondent is the actual intellectual property rights holder when, in fact, the Respondent has no relationship with the Complainant whatsoever. In addition, the Complainant underlines that the Respondent is selling on its web sites also products of the Complainant’s competitors, such as Oracle, VMWare, HP, and Citrix training materials. The Complainant further states that the Respondent’s publication of a disclaimer is not sufficient to avoid confusion and to support any claim that the Respondent has a legitimate interest in the disputed domain name.
The Complainant claims that the Respondent has never been commonly known by the disputed domain names and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names since it is using them to intentionally mislead consumers into believing that the Respondent is an authorized distributor of authentic SAP training materials, when it is not, in order to generate sales, including sales of non-SAP products.
The Complainant contends that the disputed domain names were registered and are being used by the Respondent in bad faith.
In particular, the Complainant states that, in light of the worldwide fame of the SAP marks, the Respondent knew or should have known the Complainant’s trademark at the time of the registration of the disputed domain names.
The Complainant highlights that the Respondent’s use of the SAP trademark in the disputed domain names and on the correspondent web sites creates false association between the Complainant and the Respondent or the products promoted thereon. The Complainant therefore concludes that the Respondent’s conduct amounts to “opportunistic bad faith”.
As additional evidence of the Respondent’s bad faith, the Complainant highlights that the Respondent:
- is selling also products of the Complainant’s competitors;
- continued its infringing use of the disputed domain names even after the Complainant’s attempts to stop the violation of its intellectual property rights;
- published a disclaimer only after a cease and desist letter;
- attempted to conceal its identity by using a privacy service and false contact information, since the Respondent’s address disclosed after the filing of the Complaint, “WallStreet Dr.” in New York, does not exist, nor is there any record that either John LLC and Teaching Solutions & Access LLC exists at said address. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue
According to paragraph 3(c) of the Rules, “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Rules provides that “a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” It is established that the consolidation of multiple disputed domain names under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named disputed domain name registrants are involved, where the particular circumstances of the case indicate a common control over the disputed domain names or the web sites to which the disputed domain names are redirected. Common control have been found by UDRP panels based on commonalities, such as shared administrative or technical contacts and shared postal or email addresses in registrant information, or other circumstances indicating that the respondents are related, and also, substantially identical content of the web sites to which multiple disputed domain names resolve (see paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281; Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659).
In the case at hand, the Panel finds that the Complainant has proven that the disputed domain names are subject to the ownership or control of the same person or entity, based on the following circumstances:
(i) the name of the underlying registrants of the disputed domain names is substantially the same, since is registered in the name of John Havard, while in the name of John Harvard;
(ii) the disputed domain names share the identical email address […]@;
(iii) according to the registrar-disclosed WhoIs records, both registrants are based in a prima facie not existent address in New York and indicated in the field “organization” companies (“John LLC” and “Teaching Solutions & Access LLC”) which appear not to exist at the mentioned address;
(iv) both of the disputed domain names incorporate the Complainant’s well-known trademark SAP in its entirety with the addition of the descriptive term “certified”;
(v) the disputed domain names have been redirected to identical web sites advertising and offering for sale the same products and promotions and inviting users to contact the same email address […]@.
In view of the above, the Panel concludes that, based on the evidence on records, common control is being exercised over the disputed domain names by the same person or entity.
In view of the above circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the disputed domain names is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and in line with prior relevant UDRP decisions in respect of this issue. 7. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights on the trademark SAP, based on trademark registrations constituted of, or including, SAP, in several countries of the world, including in the United States, where the Respondent is based according to the registrar-disclosed WhoIs records.
The Panel therefore finds that the disputed domain names are confusingly similar to the trademark owned by the Complainant since, pursuant to a number of prior decisions rendered under the Policy, the addition of a descriptive term to a trademark is not a distinguishing feature.
See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCA INTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
More in particular, in the present case, the addition of the word “certified” is likely to increase the likelihood of confusion, since the trademark SAP is used also in connection with certification products and services.
See, along these lines, The American Automobile Association, Inc. v. New Cars Lowest Prices, WIPO Case No. D2011-0337 (, , , and ): “Because the Complainant uses its AAA trademark in connection with a wide variety of services related to cars, the addition of the descriptive wording in this case is likely to exacerbate the potential confusion with the Complainant’s mark. Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s AAA trademark”. See also SAP AG v. Pipeline Software, Inc. / Raju Patel,WIPO Case No. D2013-0502 (): “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”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, the Panel finds that the Respondent, whose true identity was obscured by the privacy shield, has not shown that it is commonly known by the disputed domain names, as stated, amongst others, in Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743 (“Here, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”).
Furthermore, the Panel finds that the use of the disputed domain names made by the Respondent to promote purported SAP products and services together with the ones of the Complainant’s competitors does not constitute either a bona fide offering of goods or services, or a legitimate, non-commercial or fair use of the disputed domain names.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, 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 the holder of the domain name has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the well-known character of the Complainant’s trademark and the amount of sales of the Complainant’s products and services worldwide, the Respondent was or ought to have been aware of the Complainant’s trademark when it registered the disputed domain names.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
Furthermore, the Panel notes that the disputed domain names were pointed to web sites where the Complainant’s trademark was referenced and purported SAP products and services were promoted, additional element indicating that the Respondent was well-aware of the Complainant’s trademark.
In light of the evidence submitted by the Complainant as to the Respondent’s use of the disputed domain names to advertise and offer for sale not authorized SAP products, along with products of the Complainant’s competitors, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the its web sites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the its web sites or of the products and services promoted thereon.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial web site. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Furthermore, the Panel finds that, under the circumstances of the case, the use of a privacy service and the provision of inaccurate contact details are further elements evidencing the Respondent’s bad faith. See, inter alia, Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352 stating that the use of false contact information by the Respondent is a further indication of bad faith.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith. 8. 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 names and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: August 9, 2013
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