The Complainant is SAP SE, Germany, represented by BPM Legal, Germany.
The Respondent is Wanyong, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 2019 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 October 7, 2019. On October 3, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 4, 2019. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on October 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019. The Center appointed Rachel Tan as the sole panelist in this matter on November 15, 2019. 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. On November 20, 2019, the Center received an email from the Respondent, indicating its willingness to settle the dispute. On November 21, 2019, the Center received an online submission of a late Response from the Respondent, which has been brought to the Panel’s attention. The Panel has decided to accept this filing, and pursuant to paragraph 10 and 12 of the Rules, the Panel issued the Administrative Panel Procedural Order No.1 allowing the Complainant to submit comments on the Respondent’s filing. On November 29, 2019, the Center received the Complainant’s reply to the Administrative Panel Procedural Order No.1, which has been brought to the Panel’s attention. 4. Factual Background The Complainant is a German multinational software corporation that produces enterprise software to manage business operation and customer relations. The Complainant claims that it originally coined, adopted and commenced use of the brand SAP in 1972, and since then SAP has become the Complainant’s core identifier and forms an integral part of its trade and business. The Complainant further claims that it spends significant sums on advertising and promoting its business worldwide. As of 2016, the Complainant is the world’s third largest software and programming company with operations in Europe, Asia, Africa, the Middle East, North America and South America. In China, where the Respondent is located, the Complainant has offices in six locations and is trading under the name “SAP China”. The Complainant owns numerous registrations for the SAP trade mark, including European Union Trade Mark Registration No. 001270693, registered on July 9, 2002. The Respondent is Wanyong, an individual who appears to be located in China. The email address of the Respondent ends with “@kingsoft.com”. The Response was filed by the IP Counsel of Kingsoft Corporation Limited, a Chinese software company founded in 1988 and based in Beijing, China. It would appear that the Respondent is associated with or works for Kingsoft Corporation Limited. The disputed domain names The Complainant contends that the disputed domain names The Complainant further contends that it has not licensed or otherwise permitted the Respondent to use its SAP trade mark and to register any domain name incorporating its SAP trade mark. Furthermore, there is no evidence proving that the Respondent has used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Finally, there is no evidence proving that the Respondent is making legitimate noncommercial or fair use of the disputed domain names or is commonly known by the disputed domain names. The Complainant finally contends that the disputed domain names were registered and are being used in bad faith. The Complainant’s SAP trade mark has acquired a high reputation throughout the world. It is inconceivable that the Respondent registered the disputed domain names without awareness of the Complainant and its SAP trade mark. The disputed domain names are not actively used but merely passively held by the Respondent. The Respondent’s registration of the disputed domain names prevents the Complainant from reflecting its trade mark in a corresponding domain name. Moreover, the Respondent’s registration of the disputed domain names disrupts the Complainant’s business and constitutes an abusive threat hanging over the head of the Complainant. B. Respondent The Respondent contends that the Complainant is not the only rights holder who owns the SAP trade mark. Examples of United States of America registrations for the SAP trade mark in the names of other rights holders were submitted. Moreover, the Complainant’s Chinese registrations for the SAP trade mark have expired and the Complainant’s mark is not well known in China. The Respondent further contends that the disputed domain names are not confusingly similar to the Complainant’s SAP trade mark. The Respondent lists the dictionary meanings of the word “sap” and contends that it is also of weak distinctiveness being composed of three letters. Furthermore, the words “garden”, “joy”, “hand”, “door” and “cool” may be frequently used words but they are not necessarily generic, particularly when seen in the context of the Complainant and its software. The Respondent finally contends that the disputed domain names are not being used in bad faith. The Respondent is not directing the disputed domain names to websites that confuse itself with the Complainant nor is it offering the disputed domain names for sale. The Respondent does not have a history of domain name squatting and is not making commercial use of the disputed domain names in a way which disrupts the Complainant’s business. 6. Discussion and Findings 6.1 Procedural Issues A. Language of the Proceeding Firstly, the Panel must first address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regarded to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement for each disputed domain name is Chinese. The Complainant requests the administrative proceeding to be commenced in English due to following reasons: (i) the disputed domain names were registered in ASCII characters; (ii) the Respondent uses generic English words in the disputed domain names; (iii) the Respondent’s domain name The Respondent did not comment on the language of the proceeding in due time. Nevertheless, the Center proceeded to issue its case-related communication to the Parties in both English and Chinese. The Center decided to accept the Complainant as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages. A subsequent late request was made by the Respondent for Chinese to be the language of the administrative proceeding because the Registration Agreement of the disputed domain names is in Chinese. Furthermore, the Respondent claims that the Complainant operates Chinese websites which indicates the Complainant’s ability to understand Chinese. Finally, the Respondent argues having to submit English response in a short time causes great difficulty. The Panel having considered the circumstances decides that English shall be the language of this proceeding. The reasons are set out below: (a) the Complainant is a company incorporated in Germany. Requiring the Complainant to submit the Complaint in Chinese would lead to delay and place unreasonable burden of the Complainant; (b) English is not the native language of either Party; (c) the Respondent’s choice of a combination of English words to form the disputed domain names indicates some knowledge of the English language. Furthermore, the Respondent submitted the Response based on the Complainant’s English files and stated its capability of submitting Response in English if it is needed, which also indicates that the Respondent is able to communicate in English; and (d) no foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. B. Supplemental Filings After receipt of the Response, the Complainant made a supplemental filing on November 29, 2019, upon the request in the Administrative Panel Procedural Order No.1. The Panel observes that the Complainant’s further supplemental filing: (i) contends that even if the Complainant’s trade mark rights in China have expired, it is well established that under the UDRP only existence of trade mark rights in general anywhere in the world is relevant for the first element. The crucial fact is the existence of these rights prior to the registration of the disputed domain names; (ii) contends that the Respondent should have awareness of the Complainant when the Respondent is doing business in a related sector and even has positive knowledge about the Complainant’s competitors in China; (iii) contends that the Complainant’s only way to understand the Respondent’s correspondence was to translate it via Google translation, which does not prove that the Complainant understand Chinese; (iv) contends that the Respondent has not rebutted the Complainant’s statements since its reply to the Complaint is limited to an unsubstantiated denial of the Complainant’s submission and of generally known facts concerning the Complainant. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 Based on the evidence submitted, the Panel finds that the Complainant owns European Union Trade Mark Registration No. 001270693 for SAP, registered on July 9, 2002, which predates by some time, the registration date of the disputed domain names, and is in force. The Respondent argues that the Complainant is not the only right holder who owns the SAP trade mark. However, the Panel considers that other right holders’ registrations of the SAP trade mark do not affect the Complainant’s rights over its own SAP trade mark. The disputed domain names incorporate the Complainant’s SAP trade mark in its entirety either as a prefix or suffix. Although the disputed domain names include the English words “garden”, “cool”, “joy”, “door” and “hand”, the SAP trade mark is recognizable within the disputed domain names. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The disputed domain names also contain the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is disregarded in differentiating a domain name from a trade mark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Therefore, the Panel finds that the disputed domain names are confusingly similar to the SAP trade mark, in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Complainant contends that it has not licensed or otherwise permitted the Respondent to use its SAP trade mark and to register any domain name incorporating its SAP trade mark. Furthermore, there is no evidence proving that the Respondent’s use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Finally, there is no evidence proving that the Respondent is making legitimate noncommercial or fair use of the disputed domain names or is commonly known by the disputed domain names. Pursuant to the Policy, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Thus, the burden shifts to the Respondent to prove its rights or legitimate interests in respect of the disputed domain names. To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent 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 trade mark or service mark at issue. The Respondent did not provide any evidence that it owns trade mark or service mark registrations corresponding to the disputed domain names. The Respondent admits that the disputed domain names are being passively held. This does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy. In addition, the Respondent did not provide any evidence that the Respondent has been commonly known by the disputed domain names, either as an individual or trading name, within the terms of paragraph 4(c)(ii) of the Policy. The Respondent has however vigorously asserted that the disputed domain names comprise of a combination of dictionary terms not intended to trade off the Complainant’s SAP trade mark. In this regard, the Panel notes that, generally speaking, past UDRP panels have accepted that the aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and not per se illegitimate. See WIPO Overview 3.0, section 2.1. Given the contentions of the Parties, the Panel finds that the facts and circumstances would benefit from a joint discussion of the second and third Policy elements. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant bears the burden of proving that the Respondent registered and used the disputed domain names in bad faith. The Complainant should demonstrate to the Panel’s satisfaction that on a balance of probabilities it is more likely than not that a claimed fact is true. The Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“Telstra decision”) in support of the allegation that passive holding of the disputed domain names constitutes bad faith. The Panel notes that the invoked Telstra decision is not authority for the proposition that passive holding of a domain name will always be proof that the third element of the Policy is satisfied. The panelist in that case emphasized that the question of bad faith “can only be answered in respect of the particular facts of a specific case” and “the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour”. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put. See WIPO Overview 3.0, section 3.3. In the present case, the Panel issued a Procedural Order allowing the Respondent’s late Response as fairness called for an opportunity for the Respondent to address the allegations of the Complainant. Likewise, the Complainant was granted the chance to reply. The Panel now has to decide the case based on the written submissions of each Party. On the balance of probabilities, the Panel finds that the Complainant has satisfied the second and third elements of the Policy, for the following reasons: (a) the Complainant owns European Union Trade Mark Registration No. 001270693 for SAP, registered on July 9, 2002, which predates the registration date of the disputed domain names by a decade, and is still effective; (b) the evidence submitted by the Complainant demonstrates that its SAP trade mark has acquired considerable reputation over the world, including in China where the Respondent resides, where the Complainant has substantial operations; (c) the Respondent appears to be (or work for) a software company just like the Complainant, and knew or should have known of the Complainant and its SAP trade mark when registering the disputed domain names; and (d) While the Panel paid considerable attention to the Respondent’s contentions that the disputed domain names were registered and are being held in good faith, the Panel would have benefited from understanding the history of registering the disputed domain names. In particular, the Respondent could have explained the derivation of “sapgarden”, “coolsap”, “joysap”, “sapdoor” and “saphand” which are unusual juxtapositions of English words rather than wholly descriptive combinations, as well as the reason for registering the five disputed domain names variations with the shared “sap” element. Furthermore, the Respondent could have explained its connection with Kingsoft Corporation Limited which would have provided context to the registering and holding of the disputed domain names. In addition, no reasons were given for holding the disputed domain names for such a long period. Rather, the Panel notes that Respondent’s email of November 20, 2019 indicated its willingness to settle the dispute, and referred to the possible refund of USD 1,000 to the Complainant. In any case, if the abovementioned questions were fully answered or situations fully explained by the Respondent, the result might have been different. In view of the above, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case. Therefore, the Panel finds that the Respondent has no rights of legitimate interests in the disputed domain names and that they were registered and are being used in bad faith. The Complainant has satisfied the second and third elements in paragraph 4(a) of the Policy. 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 Rachel Tan
Sole Panelist
Date: December 11, 2019
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