The Complainant is SAP SE, Germany, represented by RNA Technology and IP Attorneys, India.
The Respondent is Vemula Venu, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2021, 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 the Complainant on April 29, 2021 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 May 3, 2021. 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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2021. The Center appointed Mihaela Maravela as the sole panelist in this matter on June 10, 2021. 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 a company founded in 1972 in Germany that has become a market leader in enterprise application software, business analytics and mobile solutions. The Complainant employs 102,400 people and serves more than 400,000 customers in more than 180 countries worldwide. The Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange. The Complainant provides various end-to-end software application solutions to its customers. One such application solution is SAP Business Suite. Many of the software titles of the Complainant require trained software professionals to load, execute, access, employ, utilize, store and display integrated end-to-end solutions derived from such software products. The Complainant has created education and training programs to provide education and training for provision and execution of its products. Training services may be provided only by entities that had signed a license agreement with the Complainant. The Complainant’s trademark SAP was listed as one of the top 50 most valued brands since 2001 by Interbrand. The Complainant is the exclusive owner of a number of registered trademarks consisting of or including SAP, including the International trademark registration No. 638470 for SAP registered on June 2, 1995, the European Union Trademark Registration No. 001270693, registered on July 9, 2002, the Indian trademark registration No. 576754, registered on July 9, 1992. The Complainant owns since January 18, 1995 the domain name The disputed domain name was created on March 31, 2011 and, at the date of the Complaint, it resolved to a website purporting to offer education and training programs for SAP related products and services. At the date of the Decision the website was inactive. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name incorporates the Complainant’s famous trademark SAP in its entirety. The addition of the descriptive terms such as “online” and “trainings” does not lend any distinctiveness to the disputed domain name. The Complainant argues that it has not licensed or otherwise permitted the Respondent to use its SAP trademarks, or any other trademark incorporating the SAP trademark. The Respondent is not and has never been known by the SAP trademark/name or by any similar name. The disputed domain name is being used by the Respondent to illegally provide SAP online training, thereby creating a likelihood of confusion with the Complainant’s trademark SAP as to the sponsorship, affiliation, or endorsement of the website. Such use by the Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges that the Respondent registered the disputed domain name several decades after the Complainant invested millions of dollars in popularizing and seeking registration of its SAP trademarks, and after such trademark has become well-known. Therefore, as per the Complainant, it is evident that the Respondent was aware of the Complainant’s prior rights in the SAP trademark at the registration of the disputed domain name in 2011. The Respondent is offering unauthorized SAP online trainings to interested students/customers, but the Respondent is not an education partner of the Complainant and has not signed any license agreement with the Complainant for providing SAP courses, therefore the use by the Respondent of the registered SAP trademark and logo on the website at the disputed domain name is done in bad faith. The Respondent has acquired the disputed domain name to attract Internet traffic by falsely claiming an association/connection with the Complainant and make illicit gains. The Respondent is also using the Complainant’s registered SAP logo without permission which amounts to infringement of the Complainant’s SAP trademark and logo. Moreover, the Respondent has failed to respond to cease and desist letters of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “A Panel shall 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”, paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has proved its rights over the SAP trademark. The trademark is reproduced in its entirety in the disputed domain name. The addition of the words “online” and “training” does not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0. This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore 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, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.” The Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “sap”. The disputed domain name was used to resolve to a website that purports to offer training services affiliated with the Complainant’s SAP products and services. The website displays the SAP trademark and provides no disclaimer as to any lack of authorization from or affiliation with the Complainant. This cannot amount in the Panel’s view to a bona fide offering of goods or services within the meaning of paragraphs 4(c)(i) of the Policy or to a legitimate noncommercial or fair use of the disputed domain name as provided by paragraph 4(c)(iii) of the Policy. In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain name and has not refuted the prima facie case made by the Complainant. Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered many years after the Complainant has obtained registration of its SAP trademarks, including in India where the Respondent is located. The disputed domain name is confusingly similar with the Complainant’s trademark. Moreover, the SAP trademark of the Complainant is displayed on the website at the disputed domain name and the Respondent started providing SAP online training services at the website after the registration of the disputed domain name. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why it registered the disputed domain name. As regards the use of the disputed domain name, the Panel finds that, according to the unrebutted evidence submitted by the Complainant, the domain name resolves to a website displaying “SAP” with the Complainant’s trademark and logo, offering competing services with those of the Complainant. The Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain. Given the confusing similarity between the SAP trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolved. Presumably, the Respondent intended to benefit from the confusion created. This amounts to use in bad faith under the terms of paragraph 4(b)(iv) of the Policy. Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and 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 Mihaela Maravela
Sole Panelist
Date: June 24, 2021
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