The Complainant is The Sage Group plc of Newcastle upon Tyne, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America (“United States”) / Neil Britto, E-Tech of Scottsdale, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 13, 2016 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 13, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. On June 19, 2016, the Respondent requested an extension of the Response due date, which was hence extended until July 8, 2016 in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on July 4, 2016. The Complainant submitted a Supplemental Filing on July 5, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 18, 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.
After the appointment of the Panel, on July 26, 2016 the Respondent submitted a Supplemental Filing in response to the Complainant’s Supplemental Filing. 4. Factual Background
The Complainant is a publicly listed company in the United Kingdom. It provides integrated accounting, EPR, HR, payroll, payment and asset management solutions for businesses around the world. It and its subsidiaries have been using the trademark SAGE as the house mark for the business since 1981.
Amongst other things, the Complainant is the owner of the following registered trademarks:
- United States Patent and Trademark Office (“USPTO”) trademark registration No. 3,238,564 for SAGE in respect of a wide range of software and services related to business management, payment and computer consulting services in International Classes 9, 35, 36, 38 and 42. This trademark was registered on May 8, 2007, claiming a first use in commerce in respect of the class 9, 35 and 42 services from 1992;
- European Trade Mark (“EUTM”) No. 001958073 for SAGE in respect of a wide range of goods and services in International Classes 9, 16, 35, 36, 37, 38, 41 and 42. The application for this trademark was filed on November 16, 2000 and registered on May 12, 2004.
The Respondent registered the disputed domain name on January 24, 2015. Since about that date, the disputed domain name has resolved to a website from which the Respondent offers data repair and migration services for people with or using the Complainant’s software. The nature of the website and the services requires some further elaboration below. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant’s Supplemental Filing and the Respondent’s answering Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
The Panel notes that the precise identity of the Respondent, Neil Britto, E-Tech, was not known to the Complainant until after it filed the Complaint. However, the Panel is concerned that the nature of the website to which the disputed domain name resolves was known before the Complaint was filed. It is also unclear when the changes to the website which are discussed below took place. Although this case is very finely balanced, the Panel notes that the Complainant’s Supplemental Filing was filed promptly following receipt of the Response and the Respondent has been able to provide its Supplemental Filing without disrupting the timetable for decision required under the Rules. In these circumstances, the Panel will allow the Complainant’s Supplemental Filing to be admitted in the interests of ensuring the real issues between the parties are addressed. Correspondingly, the Respondent’s Supplemental Filing dealing with the Complainant’s supplemental arguments is also admitted. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks for SAGE identified in section 4 above.
The disputed domain name differs from the Complainant’s trademark by the addition of the word “repair” to the Complainant’s trademark and the generic Top-Level Domain (“gTLD”), “.com”.
Disregarding the “.com” gTLD, the disputed domain name is plainly confusingly similar to the Complainant’s trademark. The word “repair” is an ordinary English word which, given the nature of the goods and services which the Complainant provides by reference to its trademark, reinforces the association with the trademark.
The Respondent has advanced a number of arguments to rebut this conclusion. However, the first element simply requires a visual and aural comparison of the disputed domain name to the proven trademarks: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Questions such as the scope of the trademark rights, nominative fair use and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. Therefore, the Panel will address the Respondent’s arguments in those contexts.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Registered and Used in Bad Faith
In the circumstances of this administrative proceeding, the Panel next considers the third requirement under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As the Complainant contends, it is clear that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name. The very purpose of the registration was to attract customers for the repair and migration services offered by the Respondent to people who use the Complainant’s software.
With that knowledge, the Complainant contends that the Respondent sought to attract customers to its services by using a domain name confusingly similar to the Complainant’s trademark to cause confusion and is in fact causing confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or services.
Having regard to the nature of those services, however, the Panel is unable to conclude that the disputed domain name was registered in bad faith.
It appears from the Complainant’s Supplemental Filing that the Respondent’s website has taken two forms. One form up until around March 16, 2016, when the Complainant lodged an objection about the Respondent’s conduct with the Registrar, and a second form which has been adopted sometime after that complaint was made.
In the first form, the Respondent refers to itself as “Sage Repair” and does not refer to itself as E-Tech. There are also numerous references throughout the website to “Sage” and “Sage Repair”. In its second (present) form, however, the references to the entity providing the service have been changed from “Sage Repair” to “E-Tech”, i.e., the Respondent’s name and “Sage” is more clearly used to refer to the Complainant’s software and databases created using that software. For example, on the current form of the website, the Respondent has largely replaced the references to the trading name “Sage Repair” with either its own name, E-Tech, or with references with less potential to confuse. Thus, the banner heading “SAGE REPAIR” in the first form of website has become “REPAIR FOR SAGE by E-Tech”. As the Complainant notes in its Supplemental Filing, this process is not complete.
The Complainant contends that the failure to refer at all to E-Tech by name coupled with the absence of any disclaimer on the first form of website shows the Respondent’s bad faith.
However, each page of the website in its first form included at the foot of the page a disclaimer in the following form:
“Sage Repair
Sage Repair provides support for Sage Database Error Codes and Sage Accounting Conversions. All Content Copyright and other rights reserved by its Respective Owners. Sage Repair Support is an independant [sic] provider of database-related services and is not affiliated with Sage.” (Italic emphasis supplied)
This form of disclaimer still appears on the “Contact Us” page of the current form of the website. The current form of the website also includes on the other pages a disclaimer in the following terms:
“Disclaimer: SageR is owned and operated by E-Tech LLC and is not affiliated with Sage PLC. All Content Copyright and other rights reserved by its Respective Owners.”
This disclaimer appears “above the fold” on the home page and at the foot of the other pages (apart from the “Contact Us” page).
It is plain from both forms of the Respondent’s website that the Respondent’s business is to provide repair and migration/conversion services to people who have databases built and maintained using the Complainant’s software. This is a very different situation to that addressed in Daimler AG v William Wood,WIPO Case No. D2008-1712. In that case, the respondent did offer cars and other products in competition with Mercedes Benz vehicles and parts. Also, there was a clear pattern that the nature and extent of the competing products promoted through the site was increasing.
In the present case, the Respondent’s services may be characterized into three categories. First, the Respondent provides database repair services for people using the Complainant’s “Sage” branded software. Secondly, the Respondent also provides services which enable users to convert from one “Sage” product to another; e.g., to downgrade from “Sage 50 Quantum” to “Sage 50 Pro or Premium”. The Respondent also appears to offer similar services in relation to products which appear to be the Complainant’s products such as its “Peachtree” product. This product is apparently now known as “Sage 50c”. Thirdly, the Respondent offers a service helping people to migrate their “Sage” databases to what (the Panel assumes) is a competing product such as “Quickbooks”. While it may be difficult to characterize this service as a “repair” service, the Respondent’s services nonetheless have a direct relationship with the “Sage” products, or rather the databases created using the Sage products, that are being repaired or migrated or converted.
The over extensive use of “Sage” and “Sage Repair” in the first form of the website might suggest an inference that the Respondent was trying to mislead potential customers into believing it was associated in some way with the Complainant. It is difficult to draw that inference confidently bearing in mind the disclaimer which the Respondent included at the foot of each page of its website which explicitly disclosed the nature of its relationship with the Complainant.
While the Complainant says that confusion is in fact occurring, it has not provided any evidence in support of that claim. On the other hand, the Respondent emphasizes that the people looking for its services are likely to be senior accounting personnel or “C-level executives”. The point being that, having regard to the nature and costs of the Complainant’s products, those using them and seeking services such as those provided by the Respondent are likely to exercise a considerable degree of care. In these circumstances, the Panel considers that the Respondent’s website does sufficiently identify the nature of the relationship with the Complainant. Even its first form, therefore, the nature of the relationship with the Complainant was made clear.
It also appears that the Respondent has acted reasonably promptly to make the relationship even more explicit in the second form of the website following the Complainant’s objection to the Registrar on March 16, 2016.
In these circumstances, the Panel is not prepared to find that the Respondent registered the disputed domain name in bad faith. Accordingly, the Complaint must fail. C. Rights or Legitimate Interests
As the Complaint must fail, there would be no good purpose in addressing the parties’ contentions on rights or legitimate interests. D. Reverse Domain Name Hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking. The circumstances of this case, however, are not sufficiently egregious to warrant such a finding. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: July 29, 2016
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