The Complainant is SAP SE of Walldorf, Germany, represented by RNA IP Attorneys, India.
The Respondent is Sagar M., SAPtechE, of Karnataka, India. 2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2015. On November 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 30, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2015.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 7, 2016. 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 following facts are undisputed.
The Complainant was founded in 1972 and is a company organized and existing under the laws of Germany, with its Corporate Headquarters located in Germany.
The Complainant is recognized as a global market leader in providing collaborative, inter-enterprise business solutions for all types of industries and for every major market. The Complainant employs 75,643 people of more than 120 nationalities as on October 31, 2015. It serves more than 296,000 customers in 190 countries worldwide.
The Complainant is the owner of a large portfolio of various trademark registrations worldwide comprising the element "SAP", including figurative marks, with validity in several countries and territories worldwide, registered for various goods and services ("Trademark").
The Domain Name was registered on October 10, 2013. 5. Parties' Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
As the Domain Name incorporates the Complainant's SAP mark in its entirety and is nearly identical or at least confusingly similar to it, the use will cause confusion. The mere addition of the term "teche", which is an indicator of a technology driven company, does not alter the fact that the Complainant's Trademark is the dominant portion of the Domain Name. It does not change the overall impression of the Domain Name as one being connected with the Complainant, especially in light of the manner in which the mark is used.
The Complainant further submits that it has not licensed or otherwise permitted the Respondent to use the Trademark. The Complainant has also not licensed or otherwise permitted the Respondent to apply for or use any domain name consisting of or incorporating the Trademark.
The Respondent registered the Domain Name several decades after the Complainant invested millions of dollars in popularizing and seeking registration of the Trademark and domain name . Moreover, by the time the Respondent registered the Domain Name, the Complainant had generated hundreds of millions of dollars in revenue under the Trademark, and the Trademark had already attained the status of well-known mark. Accordingly, it is evident that the Respondent was well aware of the Complainant's prior rights in the Trademark at the time it registered the Domain Name.
The Respondent's purpose in selecting the Domain Name was plainly to use the fame of the Complainant's Trademark to generate web traffic and to confuse Internet users visiting the Respondent's website under the Domain Name when looking for the Complainant and their famous suite of products/services. The Respondent is not and has never been known by the Trademark or by any similar name.
On the home page of the website behind the Domain Name, the Respondent claims to be the provider of online and classroom trainings for all SAP modules. The Respondent has adopted the nearly identical or deceptively similar Domain Name comprising the SAP word for offering similar nature of services in order to attract Internet users to their website. Also, creating a likelihood of confusion with the Complainant's Trademark as to the sponsorship, affiliation, or endorsement of the website. Such use by the Respondent is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Name.
The Respondent has no right to use the Complainant's well known Trademark as a domain name as the Complainant has not authorized any such use. The Respondent has not been authorized by the Complainant to register or use the Domain Name. Unlicensed, unauthorized use of the Domain Name incorporating the Complainant's Trademark is strong evidence that the Respondent has no rights or legitimate interests.
The Respondent's choice of the Domain Name is allegedly based on their business of offering trainings for use of SAP proprietary software without the Complainant's authorisation. The Respondent could have adopted any other domain name instead of adopting the Domain Name containing the Complainant's famous and registered Trademark in its entirety. Thus, given the prominence and well known stature of the Complainant's SAP products/ services and also prior domain name and trademark registrations, it is incomprehensible that the Respondent would have been unaware of the Complainant's Trademark at the time the Domain Name was registered in 2013.
The Respondent's choice of the Domain Name is not accidental and has clearly been made to derive unfair monetary advantage. In support of this submission, the Complainant contends that:
- At the time of registration of the Domain Name the Trademark was well-known and registered in numerous jurisdictions across the world including India.
- The Respondent's choice of Domain Name is clearly to create deception and with complete knowledge that such adoption is unauthorized considering the nature of business and use of Trademark.
- The Trademark and tradename exclusively refers to the Complainant and the suite of products/services provided by the Complainant. Thus, adoption of the Trademark as part of the Domain Name by the Respondent cannot be a coincidence and is clearly to align its business/services with the Complainant which reflects bad faith.
- The business activities carried out by the Respondent through the Domain Name are illegitimate and only to divert Internet traffic by using the Complainant's well known/ famous Trademark. Thus, it is obvious that the registration of the Domain Name by the Respondent is in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name 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 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 Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.
The Domain name incorporates the Trademark in its entirely, and adds the descriptive word "teche". The Panel finds that the addition of the suffix "teche" does not suffice to distinguish the Domain Name from the Complainant's Trademark since "SAP" is the dominant part of the Domain Name and since "teche" associates to technology and software which is the Complainant's field of business and the goods and services included under the Complainant's Trademark are software and technology related.
See Oki Data Ams., Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.").
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial 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.
Whether the Respondent is using the Domain Name in connection with a bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., supra.
To be bona fide, the offering must meet several requirements, which have been referred to in the aforementioned decisions, notably in the Oki Data case. Those include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774;
- the site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products.,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products);
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark").
The Panel notes that the website connected to the Domain Name prima facie does not meet all three of the above requirements, specifically it does not meet the jurisprudential requirement that the website has to accurately and prominently disclose the Respondent's relationship with the Complainant.
Therefore the Respondent, for purposes of the Policy, has not been using the Domain Name for a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent cannot be said to have rights or legitimate interests in the Domain Name.
Finally, given the circumstances of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant's Trademark and activities are well-known throughout the world. In addition the website connected to the Domain Name refers to Complainants' services. Accordingly, in the Panel's view, the Respondent must have been aware of the Complainant's existence and rights when it registered the Domain Name and must have been aware when using the Domain Name.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e. that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 Respondent's website or location or of a product or service on the Respondent's website or location.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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.
Willem J. H. Leppink
Sole Panelist
Date: January 18, 2016
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