The Complainant is SAP SE of Walldorf, Germany, represented by K&G Law LLC, United States of America (“United States” or “U.S.”).
The Respondent is Whois Privacy Protection Service Inc. of Kirkland, Washington, United States / Chiragkumar Patoliya of Bangalore, India. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2016. On December 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 16, 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on January 23, 2017. 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 began operations in 1972 and is a market leader in enterprise software applications, analytics, mobile solutions and related services. It employs over 76,000 people worldwide and serves roughly 335,000 customers in 190 countries. SAP America, Inc is the U.S. subsidiary of SAP SE and reference hereafter to the Complainant shall include SAP America, Inc.
The Complainant owns several trademarks, including U.S. trademark registration for SAP (RN:2538716/SN:73779534) filed on February 6, 1989 and registered on February 19, 2002.
The SAP brand has been ranked 26th by Interbrand in a list of top brands (Best Global Brands 2016).
The Respondent registered the Domain Name on March 8, 2013. The Domain Name resolves to a website on which (it is asserted) unlicensed SAP certification exam materials are offered. 5. Parties’ Contentions A. Complainant
The Respondent registered the Domain Name without any authority to do so and long after the Complainant’s first use of the SAP mark. Such registration conflicts with representations made by the Respondent, in particular by paragraph 2 of the Policy whereby a registrant warrants and represents that “…registration of the domain name will not infringe upon or otherwise violate the rights of a third party”.
The Domain Name incorporates the SAP mark and is confusingly similar to it. The addition of the term “sd‑certification” does not provide a point of differentiation. On the contrary, it gives the impression that the Respondent is offering SAP SD (Sales and Distribution) certification exams, which it is not authorised to do. Moreover, the Respondent purports to offer SAP certification exam questions, again which it is not authorised to do. The Respondent prominently displays SAP’s registered logo on its website reinforcing the impression that it offers SAP certification.
The Respondent has no legitimate interest in or legitimate bona fide business purpose for using the Domain Name. It has no trademark rights or other legitimate rights in the SAP mark and it has not been authorised or licensed to use the same. Given the reputation of the Complainant, it is reasonable to conclude that the Respondent is seeking to capitalise on the Complainant’s brand and to attract customers seeking genuine SAP certification materials.
The Respondent is using the Domain Name to direct Internet users looking for SAP exam materials (which it is not authorised to provide) to its website. Registration of a domain name that is confusingly similar to a famous trademark by an entity with no relationship to that mark is evidence of bad faith registration and use. Moreover, incorporation of a well-known mark into a domain name by a registrant with no plausible explanation is also an indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the SAP trademark for the purposes of the Policy.
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s SAP trademark, followed by the term “-sd-certification”. As the SAP trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The SAP trademark is clearly recognizable within the Domain Name. It is the first element of the Domain Name. The only real issue therefore is whether the addition of “-sd-certification” renders the Domain Name something other than confusingly similar to the Complainant’s SAP trademark. In the Panel’s view, it does not. The SAP trademark is the first and dominant element of the Domain Name.
The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainant’s SAP trademark to which it is similar, or that there is some form of association between the Respondent and the Complainant. The Panel thus finds that the Domain Name is confusingly similar to the SAP mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint, however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
As a preliminary observation, the Panel notes that it is of the utmost importance that Internet users hoping to achieve SAP certification or who are simply interested in finding more out about it, acquire information and assistance (or certification itself) from a body whose relationship with SAP is properly understood. This is unlikely to be the case for Internet users visiting the website to which the Domain Name resolves.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name and given the nature of the website to which the Domain Name resolves, the Panel would not accept that there is legitimate noncommercial or fair use. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a (non-authorized) website to which a domain name resolves, which so obviously takes advantage of the renown of the trademark to which it is confusingly similar (such that Internet users may well actually be misled), could amount to a bona fide offering.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy and is satisfied that there is nothing inappropriate in such a finding. C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The Respondent was clearly aware of the Complainant’s SAP trademark given the (unauthorized) use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent’s website for commercial gain using a domain name confusingly similar to the Complainant’s SAP trademark. In other words, precisely the circumstances envisaged above. Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: January 31, 2017
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