Complainant is SAP SE, Germany, represented by RNA IP Attorneys, India.
Respondents are Registration Private, Domains By Proxy, LLC, United States of America / PH Info Solutions, Iraq, and Prabhu Rao, India. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2020. On June 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 2020, 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 Complainant on June 29, 2020, 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 6, 2020. 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 July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on July 28, 2020. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on August 4, 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. Preliminary Issue Regarding the Consolidation of Respondents Although Complainant has not expressly requested that Respondents PH Info Solutions and Prabhu Rao should be consolidated in this proceeding, Complainant argues that the disputed domain names are owned and controlled by the same underlying party. The Panel thus construes Complainant’s arguments as requesting a consolidation of the two identified Respondents in this proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, UDRP panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Based on the evidence submitted, none of which is contested by Respondents, the Panel accepts Complainant’s contention that the disputed domain names are subject to common control. Apart from the fact that the disputed domain names have used the same Registrar, name servers and privacy service, Complainant has provided evidence showing that the disputed domain names share many commonalities in their use and in the websites posted at the disputed domain names. Complainant has also provided evidence that a common social media profile has been used to promote the websites at the disputed domain names and that common telephone numbers likewise have been used to promote the offerings on the websites at the disputed domain names. Under the circumstances, the Panel is satisfied that consolidation would be fair and equitable to all Parties. (Respondents in this proceeding will hereinafter be referred to collectively as “Respondent” in the singular form.) 5. Factual Background Complainant, SAP SE, is a German company specializing in enterprise application software, business analytics, and mobile solutions. In particular, Complainant provides various end-to-end software application solutions to its customers under the name and mark SAP. Complainant owns a number of trademark registrations for the SAP mark around the world in connection with Complainant’s services and software products. Of particular relevance to this proceeding, Complainant owns several trademark registrations for the SAP mark in India in several trademark classes, including (i) Registration Nos. 989935, 576754 and 576755 in Class 9, (ii) Registration Nos. 890059 and 578462 in Class 16, and (iii) Registration Nos. 1238968 and 1238969 in Classes 41 and 42. The earliest of these registrations dates back to 2003. Complainant also owns and uses the domain names Respondent registered the On November 18, 2019, Complainant sent Respondent a demand letter regarding Respondent’s activities and use of the SAP mark and logo. The websites at the disputed domain names apparently came down temporarily and Complainant sent Respondent a further letter on December 10, 2019 advising that Complainant would be monitoring the activities of Respondent and Respondent’s use of the disputed domain names. In May 2020, Respondent apparently reposted its websites at the disputed domain names and on May 29, 2020, Complainant sent a further demand letter. Respondent has apparently not responded to Complainant’s May 29, 2020 demand letter. The disputed domain names do not currently resolve to an active web page or website. 6. Parties’ Contentions A. Complainant Complainant contends that it has used the SAP mark since 1972 in connection with Complainant’s trade and business and that as a result of Complainant’s efforts the SAP mark is now a well-known mark. Complainant further contends that it has strong rights in the SAP mark in India on account of its use of the SAP mark in India since 1992. Complainant maintains that any company or entity intending to provide training and education courses regarding SAP software must have a license agreement with Complainant to be able to access and use the SAP software for training purposes. Complainant asserts that Respondent has never obtained a license from Complainant to provide SAP online training courses. Complainant argues that the disputed domain names are confusingly similar to Complainant’s SAP mark as they fully incorporate the SAP mark with the non-distinctive, descriptive terms “videos” and “exam dumps,” which essentially relate to the SAP training and educational services offered by Complainant and its licensees. Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) registered the disputed domain names that are based on the SAP mark well after the SAP mark became well known, (ii) has used the disputed domain names to misleadingly attract web users looking for Complainant, or its products and services, to Respondent’s websites in order to illegally provide SAP online training courses, and (iii) has not been authorized or licensed by Complainant to use the SAP mark and logos on its websites or in the disputed domain names. Lastly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith given that Respondent was likely aware of Complainant’s rights in the SAP mark when Respondent registered and started using the disputed domain names based on the SAP mark to provide SAP online training courses. Complainant also maintains that Respondent’s bad faith is established by the fact that Respondent has no authorization to provide SAP online training courses, is using unlicensed SAP software for doing so and using the disputed domain names that are based on the SAP mark to misleadingly redirect web users to Respondent’s website. B. Respondent Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, Section 1.2.1. Complainant has provided evidence that it owns and uses the SAP mark, which has been registered and used in numerous countries, including India, well before Respondent registered the disputed domain names. With Complainant’s rights in the SAP mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain “.com”) are identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s SAP mark as they incorporates the SAP mark in its entirety at the head of the disputed domain names. The addition of the words “videos” or “exam dumps” do not distinguish the disputed domain names from Complainant’s SAP mark. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. Given that the threshold for satisfying the first element is low, the fact that the disputed domain names fully include the SAP mark is sufficient to meet the threshold. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the SAP mark and in showing that the disputed domain names are identical or confusingly similar to that trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. The evidence submitted in this proceeding, none of which is contested by Respondent, shows that Respondent has used the disputed domain names for websites that offered online training courses and materials related to Complainant’s SAP software. Although offering online training courses related to the use of Complainant’s SAP software could be seen as being a legitimate interest or use, assuming there is no unlicensed use of Complainant’s proprietary SAP software, Respondent here has taken the extra step of registering the disputed domain names that suggest a connection to Complainant and then using such with websites that are full of uses of the SAP mark and logo and which offers what appears to be copies of Complainant’s SAP related training materials. Such actions, in their totality, likely have been designed to suggest that Respondent’s SAP online training courses are authorized or somehow linked to Complainant. While the websites at the disputed domain names are currently not available, such is not material here in determining whether or not Respondent has a legitimate interest in the disputed domain names. Based on the evidence submitted, it appears more likely than not that Respondent, who has no license or permission from Complainant to use the SAP mark, or to use the SAP software, sought to trade off of the disputed domain names for Respondent’s profit. The legitimacy of Respondent’s use of the disputed domain names is further undermined by Respondent’s actions following the receipt of demand letters from Complainant in November and December 2019 and in May 2020. Respondent never responded to any of Complainant’s demand letters and temporarily removed the websites at the disputed domain names after receipt of Complainant’s November 2019 demand letter. Months later, however, Respondent reposted the same websites (replete with references to the SAP mark) at the disputed domain names. Such actions, which are not contested or explained by Respondent, further underscore Respondent’s attempt to trade off of Complainant’s SAP mark and thus cannot be seen as supporting a legitimate interest in the disputed domain names. Given that Complainant has established with sufficient evidence that it owns rights in the SAP mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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.” In the present case, Respondent has registered the disputed domain names that fully incorporate Complainant’s SAP mark with words such as “videos” or “exam dump,” which in their totality are likely to be viewed by consumers as linked to Complainant and/or to websites authorized by Complainant that relate to training or information regarding Complainant’s SAP software. The evidence that is before the Panel, none of which is contested by Respondent, shows that Respondent used the disputed domain names to promote Respondent’s unauthorized SAP online training courses and for websites that included copies of the SAP logos, as well as numerous references to the SAP mark, that made it appear that the websites are legitimate websites of Complainant and/or a websites authorized, licensed by, or affiliated with Complainant. Such actions make it more likely than not that Respondent registered and used the disputed domain names, which are based on Complainant’s SAP mark, to intentionally and misleadingly attract Internet users to Respondent’s websites for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein). Respondent’s actions after receiving multiple demand letters from Complainant further highlight Respondent’s bad faith. After receiving Complainant’s initial demand letter in November 2019, Respondent took down the websites at the disputed domain names but never responded to that letter. Then, despite being warned in December 2019 that Complainant would monitor Respondent’s use of the disputed domain names, Respondent again started using the disputed domain names in 2020 with websites that extensively featured the SAP mark and logos and which provided unauthorized copies of Complainant’s training materials. Such actions, none of which are disputed by Respondent, further confirm that Respondent’s registration and use of the disputed domain names was not undertaken for a legitimate reason or purpose but were designed to create confusion in order to entice consumers looking for SAP software training to use Respondent’s services offered through its websites at the disputed domain names. Given Respondent’s actions, the Panel finds that Complainant has proven by a preponderance of the evidence that Respondent registered and used the disputed domain names in bad faith. 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 Georges Nahitchevansky
Sole Panelist
Date: August 18, 2020
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