Complainant is SAP SE of Walldorf, Germany, represented by RNA IP Attorneys, India.
Respondent is Registration Private, Domains By Proxy, LLC. of Scottsdale, Arizona, United States of America / Deep Kumar of Bangalore, India. 2. The Domain Name and Registrar
The disputed 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 July 21, 2017. On July 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on July 25, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 27, 2017.
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 Respondent of the Complaint, and the proceedings commenced on August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2017.
The Center appointed Gary J. Nelson as the sole panelist in this matter on August 29, 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
Complainant is a company headquartered in Germany, operating in the field of applied software and analytics. Complainant is the registered owner of many trademarks for or incorporating SAP. Complainant is the owner of at least two trademark registrations in the United Kingdom of Great Britain and Northern Ireland dating from as early as 1987. Complainant also owns the following trademark registrations:
Country
Reg. no.
Mark
International Classes
India
989935
SAP
009
India
576754
SAP
009
India
576755
SAP
009
India
890059
SAP
016
India
578462
SAP
016
India
1238968
SAP
041 and 042
India
1238969
SAP
041 and 042
The disputed domain name was registered on December 31, 2015. The disputed domain name has been used in connection with a website displaying Complainant’s SAP trademark and offering services in connection with those of Complainant. 5. Parties’ Contentions A. Complainant
Complainant was founded in 1972 and over the subsequent four decades has evolved from a small regional enterprise into the market leader for enterprise application software, business analytics and mobile solutions.
Complainant is recognized as the global market leader in providing collaborative, inter-enterprise business solutions for all types of industries and for every major market. Complainant employs 85,751 people of more than 150 different nationalities. Complainant serves more than 350,000 customers in 180 countries.
Complainant provides various end-to-end software application solutions to its customers. One such application solution is SAP Business Suite, which optimizes all business-critical processes.
With more than 44 years of experience, Complainant’s market-leading SAP software is a proven, trusted foundation, which serves large as well as small and midsize enterprises in more than 25 industrial sectors.
Complainant is the owner of SAP based registered trademarks in over 75 countries. Complainant’s earliest SAP based trademark registration dates back to the year 1987 in the United Kingdom.
Complainant spends enormously on advertising and promoting its popular SAP trademark.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and has subsequently used and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a 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.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns rights in the SAP trademark and that the disputed domain name is confusingly similar to Complainant’s SAP trademark.
Complainant owns at least seven registrations in India for the SAP based trademarks. Specifically, Complainant owns at least the following India Trademark registrations for SAP: 989935 and 576754 and 576755 for goods in International Class 009; and 890059 and 578462 for goods in International Class 016; and 1238969 and 1238969 for services in International Classes 041 and 042.
Accordingly, Complainant has established rights in its SAP trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity).
The disputed domain name is confusingly similar to Complainant’s SAP trademark because the disputed domain name incorporates the entirety of Complainant’s SAP trademark and merely adds two descriptive terms (i.e., “quick” and “access”) along with the generic Top-Level Domain (“gTLD”) suffix “.com”. Neither the addition of purely descriptive terms to a mark nor the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a descriptive word or dictionary term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). In this case, adding the descriptive words “quick” and “access” to Complainant’s SAP trademark is insufficient to establish a domain name that is distinct from Complainant’s trademark and is insufficient to avoid a finding of confusing similarity.
Complainant has proven the requirements of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “sap,” or “quick” or “access” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its SAP trademark.
Complainant has provided unrebutted evidence showing that Respondent was operating a website at “www.” that featured Complainant’s SAP trademark and which allegedly offered directly competitive services to those offered by Complainant. Such use of the disputed domain name to resolve to a website that misleadingly gives the overall impression of some sort of connection with Complainant cannot be considered by the Panel as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.
Furthermore, using another’s trademark in a domain name for the purpose of attracting Internet users to a website where that trademark owner’s trademark is being intentionally and illegitimately used to appear as if it were a website maintained by that same trademark owner cannot establish a legitimate noncommercial or fair use, and cannot establish rights or a legitimate interest in the disputed domain name.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the SAP trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was most likely aware of the rights owned by Complainant in SAP when Respondent registered the disputed domain name. Supporting this conclusion is the fact Respondent was directly targeting Complainant on its website as part of the unauthorised services it offered, as evidenced by the excessive use of Complainant’s SAP trademark on each webpage associated with the disputed domain name. The Panel finds this unrebutted allegation to be convincing evidence of bad faith, and is sufficient to establish the bad faith registration and use of the disputed domain name.
Furthermore, the Panel finds that the use of the disputed domain name falls within one of the express examples of bad faith identified in paragraph 4(b)(iv) of the Policy. By using the disputed domain name to offer services identical to the services offered by Complainant and to misleadingly hold itself out as Complainant, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 Complainant.
Gary J. Nelson
Sole Panelist
Date: September 11, 2017
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