The Complainant is SAP SE of Walldorf, Germany, represented by RNA IP Attorneys, India.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2017. On March 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2017, 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. On March 24, 2017, the Complainant submitted an amendment to the Complaint.
The Center verified that the Complaint with the amendment to 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 March 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2017.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on April 27, 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 is the owner of several trademark registrations for SAP in several jurisdictions (Annexes 8 and 10 to the Complaint), amongst which the International trademark registration No. 557756 in classes 9, 16, 42 registered on February 13, 1990, the United States trademark registration No. 73779534 in classes 9, 41 and 42, registered on February 19, 2002, renewed with the No. 2538716, the India trademark registration No. 576755 in class 9 registered on July 9, 1992, and the India trademark registration No. 1238969 in classes 41 and 42 registered on September 22, 2003.
The Complainant also owns the domain name registered on January 18, 1995 (Annex 11 to the Complaint) through which the Complainant's business activities information are provided all over the word (Annex 12 to the Complaint).
The disputed domain name was registered on September 12, 2013 and currently resolves to an active webpage in which various SAP e-books and training materials on SAP modules are offered. 5. Parties' Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is SAP SE, a company founded in 1972; the Complainant employs 84,183 people and has more than 345,000 customers in over 190 countries worldwide. The Complainant is a leading company in enterprise application software, business analytics, mobile solutions and related services.
The Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange. The trademark SAP was ranked 22nd in the 2016 Interbrand list of Best Global Brands.
Many of the Complainant's software, such as Business Suite, are not available off-the-shelf, or through
e-stores of through other general, commercial retail channels.
Many of the Complainant's software titles require trained software professionals to load, execute, access, employ, utilize, store and display integrated end-to-end solutions derived from such software products. In short, at each stage of utilization of many of the Complainant's software titles by its clients, professionals are required. For this purpose, the Complainant has created educational and training programs, seminars and workshops for customers, partners, and independent consultants.
As a result of the Complainant's widespread and prolonged use, widespread advertisement, promotional activities and global presence of the company through its subsidiaries, the Complainant contends that the trademark SAP has the status of well-known mark across the word and that the Complainant has developed a great amount of goodwill and worldwide reputation for its products and services under the trademark SAP.
The Complainant argues that the disputed domain name is confusingly similar to the famous mark because it contains the Complainant's trademark SAP, as the distinctive and dominant element.
As to the addition of the terms "training 4(for) all", the Complainant contends that these descriptive terms, which relate to training on the Complainant's software, increases the likelihood of confusion with the Complainant and its business because it gives the impression that the Respondent's website provides training on SAP software.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, for the following reasons:
(i) the Respondent is not and has never been known by the SAP mark/name or by any similar name;
(ii) the Respondent is not, nor has ever been licensed or authorized by the Complainant to use the mark SAP in any manner;
(iii) the disputed domain name is being used as a trading portal for potential consumers to make payment amounting to USD 75 to access SAP training materials in form of e-books and such use by the Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name;
(iv) the Respondent's use of the SAP mark, a famous and well-known mark, is clearly for the purpose to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking for the Complainant and their famous suite of products/services, by intentionally creating a likelihood of confusion with the Complainant's trademark, in order to gain illegitimate gains.
The Complainant contends that the disputed domain name was registered and is 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 name.
Moreover, the printout from the Respondent's website (Annex 3 to the Complaint) clearly reveals that the disputed domain name was registered and acquired primarily for the purpose of sale of unauthorized infringing SAP training materials to interested consumers. In doing so the Respondent has intentionally attempted to attract for commercial gain the Internet users to the website, by misleading them and creating a likelihood of confusion with the Complainant's trademark, its products as to the source, sponsorship, affiliation, or endorsement of the website. Such conduct amounts to clear evidence of bad faith registration and use. 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 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. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's SAP trademark, a distinctive and well-known mark in which the Complainant has established rights through registration and extensive use all over the world.
The disputed domain name incorporates the Complainant's SAP trademark in its entirety; the only difference is the mere adjunction of the dictionary terms "training", "4" (that also in the Panel's view stands for "for") and "all".
The addition of the above terms is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant's trademark (besides the decisions cited by the Complainant see also America Online, Inc. v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987). Indeed, the Panel finds that the addition of the terms "training4all" that clearly relate to the training on the Complianant's software, is likely to enhance confusion and to lead Internet users to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.
The Panel believes that people considering the disputed domain name without awareness of its content may think that the disputed domain name is in some way connected and associated with the Complainant and that the related web site provides SAP training to everyone on the Complainant's proprietary software.
Finally, with regards to the generic Top-Level Domain ("gTLD") ".com", as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A. v. Name Privacy,WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy; indeed the suffix is a necessary component of the disputed domain name and does not provide any distinctiveness.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, therefore, the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. Therefore, 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 disputed domain name, such as:
(i) use or preparation to use the disputed domain name or a name corresponding to the disputed 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 disputed 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 noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name or to use the trademark SAP in any other manner. Moreover, the Respondent is not an authorized dealer of the Complainant's products or materials and has never had a business relationship with the Complainant.
Furthermore, the Panel is of the opinion that the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name, the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant's trademark, diverting Internet users to its website in which access to SAP books and training materials are advertised and offered for payment of USD 75. Such use cannot be considered by any means as a "bona fide use", as stated in various previous UDRP decisions in similar cases, and in particular in the following decision, where the panel stated:
"Here, Respondent contends that it has a legitimate interest because it offers goods for sale at its site and did so before it received an objection from Complainant. Respondent also contends that it has a legitimate interest in using the AMPHENOL mark because it purchases products from Complainant… It appears that Respondent used the Domain Name as a means of attracting Internet Users to its site where it sells cable assemblies comprised of parts from Complainant and from other companies… the mark is used as 'bait' to lead consumers to its own hybrid cable assemblies. Other cases have found that the use of a trademark as part of a domain name leading to a site selling other products was not bona fide. Similarly I believe that Respondent does not have a legitimate interest in using Complainant's mark to lead customers to a site that sells its own hybrid cable assemblies."
(Amphenol Corporation v. Applied Interconnect, Inc,WIPO Case No. D2001-0296, internal citations omitted).
Since the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant's marks and name for its own profit, misleading Internet users to a commercial website by seeking to create an impression of association with the Complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067), it can be stated that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Finally, given the circumstances of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previous 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, based on the evidence, 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 disputed domain name was registered and is being used in bad faith.
In light of the evidence submitted by the Complainant, the Complainant's registered SAP trademark predates the registration of the disputed domain name.
Moreover, the Complainant's name, trademark and activities are well-known throughout the world, and considering the widespread use and reputation of the Complainant's trademark, in this Panel's view the Respondent must have been aware of the Complainant's existence when it registered the disputed domain name.
And indeed, the Respondent's awareness of the Complainant's activities and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the SAP trademark in its entirety, with the mere addition of the terms "training4all", that clearly refers to the Complainant's business activity.
Furthermore, the website to which the disputed domain name resolves offers, for payment of USD 75, access to SAP books and other training material. In this Panel's view, this clearly demonstrates the Respondent's knowledge of the Complainant's SAP trademark.
As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; and Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395), the Panel believes that, given the circumstances of this case, the evidence of the Respondent's registration of a domain name confusingly similar to the Complainant's worldwide well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No.D2007-1412; and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411).
Moreover, as referred to by the Complainant, the Respondent did not reply to the Complainant's cease-and-desist letter sent on June 20, 2016 or to the subsequent reminder sent on February 23, 2017. In line with previous UDRP decisions, the Panel also finds that "the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith" (see also Bayerische Motoren Werke AG v. This Domain is For Sale / Joshuathan Investments Inc,WIPO Case No. D2002-0787; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242).
Indeed, the Respondent has maintained the website at the disputed domain name despite the Complainant's objections. Such silence, ongoing cybersquatting and dilution are further evidence of the Respondent's bad faith (see Compiere Inc. v. James Zhong,WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen,WIPO Case No. D2001-1242).
Concerning the use of the disputed domain name, as already indicated above, the Complainant has submitted evidence that it resolves to a website, which displays and offers for money the access to SAP books and other Complainant's SAP training material.
The Panel is persuaded by the evidence on record, that the Respondent is using the disputed domain name to attract Internet users for commercial gain by using the Complainant's SAP trademark. Indeed, in the Panel's opinion, the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant's products and to obtain information about the Complainant's activities, to its own website, by creating a likelihood of confusion with the Complainant's trademark and business, as to, inter alia, the source of its website and obtaining revenues from the diverted traffic (see Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,WIPO Case No. D2008-0325; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194; and Giorgio Armani S.p.A. v. Daulet Tussunbayev,WIPO Case No. D2011-2082).
Finally, the Panel finds that the use of a proxy registration service to avoid disclosing the name and contact details of the underlying owner of the disputed domain name, is also consistent with an inference of bad faith in registering and using the disputed domain name (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696; and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,WIPO Case No. D2004-0311).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed 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.
Alessandra Ferreri
Sole Panelist
Date: May 11, 2017
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