The Complainant is SAP SE, Germany, represented by RNA, Technology and IP Attorneys, India.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Sweta Singh, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2021. On December 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 January 4, 2022, 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 January 5, 2022.
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 January 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2022. The Respondent sent an informal email on January 28, 2022. The Center sent a possible settlement email to the Parties on January 28, 2022. The Complainant did not request a suspension of the proceeding for settlement discussions. The Center therefore informed the Parties of its commencement of Panel appointment process on February 17, 2022.
The Center appointed Gareth Dickson as the sole panelist in this matter on February 22, 2022. 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 BackgroundThe Complainant is a software company based in Germany, developing and offering enterprise application software to a wide range of customers across the globe.
The Complainant is the owner of a number of trade mark registrations for “SAP” (the “Mark”) around the world, including Indian trade mark registration number 578462 for “SAP” (device), registered on August 4, 1992.
The disputed domain name was registered on January 28, 2021. The disputed domain name is currently inactive and does not point to any active website. In response to the Complaint, the Respondent agreed to stop using the website and the disputed domain name and appears to have done so. However, the Respondent has not indicated any agreement to the transfer of the disputed domain name, and therefore the Panel has proceeded to address the merits of the Complaint below.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of “allcourses”, which it says is intended to be the phrase “all courses”, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant further contends that the use of the phrase “all courses” within the disputed domain name could in itself cause confusion as it refers to the Complainant’s business activities of offering a range of training courses for the use of its software.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name with the intention to divert Internet users from the Complainant’s business to the website for its own commercial gain and/or to suggest that the Respondent has an association/connection with the Complainant, with the intention to benefit from the Complainant’s goodwill and reputation for its own commercial gain.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Mark, according to the Complainant, is “highly distinctive” and is well-known in many countries. Further, the addition of the phrase “all courses” in the disputed domain name also suggests that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name.
The Respondent’s own use of the disputed domain name (and of the Complainant’s logo on the website to which the disputed domain name resolved when it was active) to offer training courses for software developed and offered by the Complainant further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.
Finally, the Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy. It contends that the (current) passive holding of a domain name remains a use in bad faith under the Policy. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith.
Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply substantively to the Complainant’s contentions. It did, however, send an email to the Center on January 28, 2022.
In this email, the Respondent stated that the Center’s messages had not “entered” its inbox and confirmed “I will stop this website and I will stop this domain”. Beyond that, the Respondent offered no submissions or evidence in response to the Complaint.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, 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”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “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”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of the phrase “all courses” in the disputed domain name is a minor difference to the Mark and does not alter the phonetic or conceptual similarity between the disputed domain name and the Mark, and therefore does not prevent a finding of confusing similarity, nor does the use of the gTLD “.com”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsAlthough a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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 use of a third party’s trade mark to offer genuine goods or services can in some circumstances be evidence of a bona fide offering of goods and services and thus constitute a legitimate interest in a domain name (also see Section 2.8.1 of the WIPO Overview 3.0). For the purposes of the Policy, those circumstances have been set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), which sets out four requirements which must all be met for the use to be considered legitimate.
These requirements may be stated briefly as follows:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site to sell only the trade marked goods (or services);
- The site must accurately disclose the registrant’s relationship with the trade mark owner; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
Even assuming that the services offered by the Respondent via the disputed domain name had been authorised courses approved by the Complainant, the Respondent cannot benefit from Oki Data since the Respondent does not appear to have accurately disclosed the lack of any relationship between it and the Complainant, notwithstanding that a commercial relationship will be inferred by the Respondent’s use of the Complainant’s trade marks in the disputed domain name.
In the current proceeding, therefore, the Complainant has established its prima facie case. The Respondent is not protected by Oki Data; the Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise; and there is no evidence that the Respondent has been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
By not participating substantively in these proceedings or addressing the merits of the Complaint in its brief response to the Center, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel notes that the disputed domain name was registered on January 28, 2021, many years after the Mark was registered and the Complainant had begun using those Marks. The Panel therefore accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, some form of rights in the Complainant’s Mark.
The disputed domain name has also been used in bad faith, being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to services offered in competition to the Complainant.
Although that particular bad faith use of the disputed domain name by the Respondent appears to have ceased, at least temporarily, it does not alter the Panel’s findings above and the Panel finds that the disputed domain name is being used in bad faith under the doctrine of passive holding.
Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding 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 […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is highly distinctive of the Complainant and is well-known around the world. The Panel further notes that the Respondent has not participated in these proceedings or sought to explain its registration and use of the disputed domain name, and has sought to conceal its identity through a privacy service.
The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no basis on the available record for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
7. DecisionFor 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
Gareth Dickson
Sole Panelist
Date: March 8, 2022