The Complainant is SAP SE of Walldorf, Germany, represented by RNA Technology and IP Attorneys, India.
The Respondent is Swarup Choudhuri 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 August 10, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2018, 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 August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. On September 3, 2018, the Respondent requested an automatic four-day extension to file its Response. The Center granted the requested extension and confirmed that the due date for Response was September 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties that would proceed to panel appointment on September 10, 2018.
The Center appointed Assen Alexiev as the sole panelist in this matter on September 20, 2018. 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
Founded in 1972, the Complainant is the global market leader in enterprise application software, business analytics and mobile solutions. It employs 93,846 people and serves more than 404,000 customers in more than 180 countries worldwide, including 92% of the Forbes Global 2,000 companies. In India, the Complainant has over 3,000 customers. The Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange under the ticker symbol "SAP".
The Complainant is the registered owner of the following trademark registrations in India:
- the trademark SAP HANA Reg. No. 2128825, registered on April 12, 2011, for goods and services in International Classes 9, 16, 35, 38, 41 and 42; and
- the trademark SAP Reg. No. 576754, registered on July 9, 1992, for goods in International Class 9.
The Complainant is also the registrant of the domain names , registered on January 18, 1995, and , registered on February 16, 2005.
The disputed domain name was registered on July 5, 2013, and resolves to a website that offers SAP HANA tutorials, certification and trainings. 5. Parties' Contentions A. Complainant
The Complainant states that its software products are not available off-the-shelf or through other general commercial retail channels, and that many of these products require trained software professionals to use. For this reason, the Complainant has created education and training programs and enters into contractual arrangements with third party software specialists (known as "Education Partners") to provide training for the use of its software products. All companies that provide training and education courses for SAP software are required to enter into an Education Partner agreement with the Complainant, and no entity can provide access to the Complainant's software for training purposes to third parties if it does not have a valid "License Agreement" or "Education Partner" agreement with the Complainant that expressly authorizes the use of SAP software and documentation for education and training purposes. Any user of SAP software has to accept the "End User License Agreement" ("EULA") or similar agreement authorized by the Complainant. The Complainant's software products are licensed for a particular purpose and cannot be used for any other purpose. As part of the "Education Partner" agreement, guidelines issued by the Complainant expressly prohibit training packages from being implemented as commercial industry solutions and vice-versa.
The Complainant submits that it coined the trademark SAP and commenced its use in 1972. Since then, the trademark SAP is an integral part of the Complainant's trade and business. Due to the widespread use of the Complainant's software, applications, solutions and platforms globally, the SAP and SAP HANA trademarks have become highly distinctive of the Complainant's goods and services and are exclusively associated with the products and services of the Complainant. In 2017, the Complainant spent EUR 6,924 million for advertising and promoting its brand SAP worldwide. Interbrand has continuously ranked SAP as one of the top 50 most valued brands since 2001. In 2017, Interbrand Best Global Brands ranked the brand SAP at twenty-first position with a value of USD 22 billion.
The Complainant states that the disputed domain name is confusingly similar to the Complainant's SAP and SAP HANA trademarks, as it incorporates them entirely. The addition of the descriptive term "tutorial" does not distinguish the disputed domain name as the elements "sap" and "hana" remain its predominant feature. The term "tutorial" is commonly used for training and educational services and its use in conjunction with the Complainant's SAP and SAP HANA trademarks suggests that the Respondent provides online training for SAP or SAP HANA products, and this causes confusion.
The Complainant maintains that the Respondent has no rights and legitimate interests in the disputed domain name. The Complainant has rights in the SAP and SAP HANA trademarks that predate the registration date of the Respondent's disputed domain name. The Respondent is not known by the name SAP or by any similar name. The Complainant further submits that it has not licensed or otherwise permitted the Respondent to use the SAP trademark or the SAP HANA trademark. On its website, the Respondent claims to be the provider of SAP HANA tutorials, certification and trainings. This unauthorized offering by the Respondent of SAP products trainings in an illegal manner may eventually lead to a false impression that the Respondent enjoys affiliation or other legal relationship with the Complainant and jeopardize the Complainant's reputation and goodwill.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent was well aware of the Complainant's prior rights in the SAP and SAP HANA trademarks at the time of registration of the disputed domain name, and its purpose in choosing the disputed domain name was to use the goodwill of the Complainant's SAP and SAP HANA trademarks to confuse Internet users who might be looking for the Complainant and its products and services in order to generate web traffic to the Respondent's website and lend legitimacy to its business operations for commercial gain. The Respondent was also put on notice of the Complainant's prior and exclusive rights in the SAP and SAP HANA trademarks in April 2018. However, the Respondent continued to use the disputed domain name to offer unauthorized SAP trainings. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the SAP and SAP HANA trademarks.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the gTLD ".com" section of the disputed domain name.
The relevant part of the disputed domain name is therefore the section "saphanatutorial", which contains the elements "sap", "hana" and "tutorial". The "sap" element is identical to the SAP trademark, and the combination of "sap" and "hana" is identical to the SAP HANA trademark. The element "tutorial" is descriptive and not distinctive. In the Panel's view, this combination of elements in the disputed domain name may lead Internet users to believe that the disputed domain name represents an authorized online location offering training for the Complainant's SAP HANA products.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the SAP and SAP HANA trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant has rights in the SAP and SAP HANA trademarks that predate the registration date of the disputed domain name, that the Respondent is not known by the name SAP or by any similar name, that the Complainant has not licensed the Respondent to use the SAP or the SAP HANA trademark or to offer SAP HANA tutorials, certification and trainings. The unauthorized offering by the Respondent of SAP products trainings may mislead Internet users and jeopardize the Complainant's reputation and goodwill. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant's allegations in this proceeding. It has not responded to the Complainant's cease and desist letter either.
The disputed domain name incorporates the SAP and SAP HANA trademarks entirely with the addition of the descriptive element "tutorial". This makes it likely that Internet users may regard the disputed domain name as being an authorized online location offering training for the Complainant's SAP HANA products. This likelihood of confusion is further increased by the Respondent's use of the disputed domain name for a website that offers SAP HANA tutorials, certification and trainings.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the SAP and SAP HANA trademarks to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an authorized online location offering training for the products of the Complainant, without disclosing the lack of any relationship with or authorization by the Complainant. In the Panel's view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the SAP and SAP HANA trademarks and is confusingly similar to them. The Respondent does not deny that the disputed domain name is linked to a website falsely claiming to be an authorized online location offering SAP HANA tutorials, certification and trainings.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the SAP and SAP HANA trademarks in an attempt to attract traffic to the disputed domain name and to the associated website by confusing Internet users that they are reaching an authorized online location legitimately offering training for the Complainant's SAP HANA products. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration of the disputed domain name.
The Respondent has not denied that the disputed domain name is being used in connection to a website that offers SAP HANA tutorials, certification and trainings without disclosing the lack of authorization from the Complainant. Such use may confuse Internet users that they are offered authorized training services with a quality that is controlled by the Complainant. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant's SAP and SAP HANA trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent's website and of the services offered at the Respondent's website. Therefore, the Panel finds that the disputed domain name has been 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.
Assen Alexiev
Sole Panelist
Date: October 4, 2018
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