The Complainant is SAP SE, Germany, represented by K&G Law LLC, United States of America (“United States” or “US”).
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 29, 2019, 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 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 of the Complaint, and the proceedings commenced on December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2019. The Center appointed Zoltán Takács as the sole panelist in this matter on January 9, 2020. 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 active in enterprise software applications, analytics, mobile solutions and related services. It employs over 99,000 people worldwide and serves over 437,000 customers in over 180 countries. The Complainant has a global portfolio of trademarks consisting of or comprising the SAP trademark, including: - United States Trademark Registration No. 2538716 for the word mark SAP, registered on February 19, 2002, for goods and services of classes 9, 41, and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“The Nice Classification”), and - European Union Trade Mark Registration (“EUTM”) No. 013107818 for the word mark SAP, registered on December 16, 2014, for goods and services of classes 9, 16, 35, 38, 41, and 42 of the Nice Classification. According to Interbrand’s Best Global Brands 2018 Rankings the Complainant’s SAP brand is rated 21st in the world (Annex G to the Complaint). The disputed domain name The disputed domain name The first procedural issue is whether the Complainant is entitled to file a complaint relating to two domain names against the Respondent. Paragraph 3(c) of the Rules provides that a complainant may relate to more than one domain name provided that the domain names are registered by the same domain name holder. Since the disputed domain names have been registered by the Respondent, the Panel finds that this criteria is fulfilled. Paragraph 11 of the Rules directs that in absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. The language of the Registration Agreements for the disputed domain names is English which the Panel establishes as the language of this administrative proceeding. 6. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are confusingly similar to its SAP trademark since they fully incorporate its well-known SAP trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant claims that the Respondent has registered and is using the disputed domain names incorporating its well-known SAP trademark to attract Internet users to its websites, which is indication of the Respondent’s bad faith. The Complainant requests that the disputed domain names be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”. It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark. It has been a consensus view among previous UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced evidence of having registered rights in the SAP trademark. For the purpose of this administrative proceeding the Panel finds that the US Trade Mark Registration No. 2538716 and the EUTM No. 013107818 satisfy the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights in the SAP trademark, the Panel next assesses whether the disputed domain names are identical or confusingly similar to the Complainant’s SAP trademark. According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. The Complainant’s well-known SAP trademark is clearly recognizable within the disputed domain names and in view of the Panel the other descriptive elements in the disputed domain names (“guru”, “pro”, and “portal”) do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s SAP trademark. The fact of confusing similarity between the Complainant’s SAP trademark and the disputed domain names stems from the evident use of the Complainant’s SAP trademark in the disputed domain names and the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the SAP trademark. The Complainant has never authorized the Respondent to use its SAP trademark in any way, and its prior rights in the SAP trademark long precede the date of registration of the disputed domain names. According to section 2.1 of the WIPO Overview 3.0, 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 the 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. The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: “(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 website or other online 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 SAP trademark of the Complainant has a strong reputation and due to its substantial and continued global use has become one the most recognized global brands. According to section 3.1.4 of the WIPO Overview 3.0, previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith. The disputed domain names as well as the Respondent’s websites to which the disputed domain names point prominently feature the Complainant’s SAP trademark. This demonstrates that the Respondent not only knew of the Complainant’s SAP trademark at the time of registrations but clearly has registered and is using the disputed domain names with evident intent to deceive Internet users into believing that the websites at issue are in some way associated with the Complainant. Further to the Respondent’s lack of any rights to or legitimate interest in the disputed domain names, the above discussed facts and circumstances convince the Panel that the Respondent has intentionally attempted to attract, for commercial gain Internet users to its websites (or websites under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 8. 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 names Zoltán Takács
Sole Panelist
Date: January 20, 2020
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