The Complainant is SAP AG of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, of the United States of America.
The Respondent is Subba Rao Parvathaneni of Lisle, Illinois, the United States of America.
The disputed domain name <sappoint.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2010. On October 28, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On November 2, 2010, Register.com 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on November 29, 2010. 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.
The Complainant, based in Germany, started its business of software operations in 1972 and is operating under several SAP trademark registrations. The first one applied for in the United States in 1989 was in association with products in class 9 and services in classes 41 and 42, and three others for SAP and design in the United States on August 1, 2001, in association with products and services in the same classes, and two others SAP NETWEAVER filed in the United States on February 6, 2003, in association with classes 9, 16, 35, 41 and 42. (Herein the “Trademark SAP” or “SAP Trademark” or “Trademark” wherein only SAP is present or “Trademarks SAP” or “Trademarks” for those of the family). The said Trademarks are also registered in Canada, the European Union and Germany.
The business activities of the Complainant, since early 1995, are carried through its websites “www.sap.de” and “www.sap.com” along with 600 other domain names incorporating the Trademark SAP (Annex D).
The Company currently employs over 51,000 persons in more than 50 countries and serves more than 82,000 customers in more than 120 countries. The Complainant is listed on several Stock Exchanges including Frankfurt and New York where it is also identified by a symbol comprising the Trademark SAP.
The disputed domain name was registered by the Respondent on December 12, 2000.
On July 13, 2009, the Complainant wrote to the Respondent to complain about the unauthorized presence of its copyrighted material on the Respondent’s website, to ask that it be removed from the Respondent’s website, and to also notify the Respondent that it was not authorized to use the Trademark. The Respondent replied on July 27, 2009, through its attorneys in which letter it was stated that the Respondent was aware of the Trademark SAP and its tremendous reputation in the software industry but denied any wrongdoing. On December 17, 2009, the Respondent was agreeable to disable the website and to transfer the ownership of the disputed domain name to the Complainant if the later reimbursed its costs. While the Complainant was willing to resolve the matter on this basis, no agreement was concluded due to an absence of response or further communication from the Respondent. The offending materials were subsequently removed from the disputed domain name website which is now a parking page under the same disputed domain name.
The Complainant contends that since its operations commenced in 1972, it has grown to be now the world largest business software company with employees in more than 50 countries and customers in more than 120 countries and continues to be an industry-leader in providing business with software solutions and support services to help its customers model and manage their supply chains.
The Complainant contends that as a consequence of its long and continuous Trademark use and the success of its products and services provided in association therewith, that its Trademark has come to be recognized as the exclusive source of its supply chains and software and business solutions services in the United States and around the world, while its Trademark became well known and famous around the world, ranking 26th in a list of the world’s top brands.
The Complainant further contends that it was not aware of the fact and did not authorize the Respondent to register the disputed domain name many years after the Complainant started its first use and registration of its SAP Trademark.
The Complainant submits that the disputed domain name incorporates the SAP Trademark along with the term “point” which, according to the Complainant, does not assist in being substantially different from the SAP Trademark. See Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273, and Deutsche Lufthansa AG v. George Aby, WIPO Case No. D2009-0071.
The Complainant therefore concludes that the disputed domain name is confusingly similar with its SAP Trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name in that the Respondent has no trademark rights nor any other legitimate rights in the Trademark SAP, and that the Complainant has not authorized nor licensed the Respondent to use the Trademark SAP in the disputed domain name, and further adds that the Respondent is not a reseller of the Complainant’s products and services.
According to the Complainant, although the Respondent, in its letters to the Complainant, explained its activities in relation to the products and services of the Complainant and his need to identify the type of system and the collateral Trademark use, this activity does not confer upon the Respondent the right to use the Trademark SAP in the disputed domain name, since the Trademark SAP has a particular meaning as a specific indication of product or service origin, not as a descriptive term capable of describing computer consulting or technical services. See SAP AG v. Harrison Barnes, WIPO Case No. D2009-1298 and National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700.
The Complainant contends that the disputed domain name was registered and is being used in bad faith in that the Respondent had no rights in the SAP Trademark when he registered the disputed domain name which fully incorporates the said Trademark, and that same was registered without any authority or permission from the Complainant, and that this is sufficient to establish the registration of the disputed domain name in bad faith, particularly when the Respondent was aware of the Complainant’s rights in the Trademark. See British Airways PLC v. Wayne Nicholas / Beroca Holdings B.V.I. Limited, WIPO Case No. D2009-0110.
In respect of using the disputed domain name in bad faith, the Complainant also submits that the Respondent, in diverting web traffic through the infringing disputed domain name to linked websites on its parking page, is thereby deriving financial benefits. According to the Complainant, the Respondent benefits furthermore from the confusion of the disputed domain name with the famous Trademark SAP. See Compart AG v. Compart. Com / Vertical Axis, Inc., WIPO Case No. D2009-0462.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Complainant has provided ample and conclusive evidence that it has used, developed, exploited and promoted the SAP Trademark as well as developed, as shown by the various registrations, a family of Trademarks incorporating the distinctive term SAP, and furthermore provided evidence that it has created, developed and used a most impressive group of domain names incorporating the SAP Trademark. As acknowledged herein, the Complainant’s company employs a considerable number of persons in dozen of countries, serves in excess of 80,000 customers in more than 120 countries.
The Panel finds that the Complainant has rights in the Trademark SAP as well as in the family of Trademarks SAP and the domain names incorporating said Trademark SAP.
The disputed domain name incorporates the Trademark SAP to which the Respondent has added the term “point” and the gTLD suffix “.com”. It is well known and established in numerous UDRP decisions including the two cited by the Complainant that such addition is not distinguishing and does not detract from confusing similarity with the Trademark SAP. To the contrary, when one considers the family of Trademarks SAP and the hundred of domain names incorporating the Trademark SAP, one would readily believe that the disputed domain name is simply an extension of the group of trademarks and domain names of the Complainant.
The Panel finds that the disputed domain name is confusingly similar to the Trademark SAP.
The first criterion of the Policy has been met.
The Respondent has not filed any response in this proceeding, not even reiterated the explanation he had provided through his counsel’s letter which reiteration one would have expected if the explanation of his activities was meaningful and convincing. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark SAP.
The term SAP in the Trademark is a distinctive coined word and the Respondent in his correspondence with the Complainant has acknowledged being aware of it. The Complainant has clearly established that the Complainant did not authorize nor license the Respondent to use its Trademark SAP in any way, and further stated that the Respondent is not a reseller of SAP products and services.
The Panel did consider the points raised by the earlier panels in the decisions cited by the Complainant and adopts the same and concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion of the Policy has been met.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(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 the 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 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.”
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the disputed domain name was registered and used in bad faith.
The Complainant has established that it has used the Trademark SAP for many years and even registered and used it in the United States more than a decade before the Respondent registered the disputed domain name. The evidence herein establishes that there is considerable goodwill, if not fame, associated with the Trademark SAP. In the absence of any authorization by the Complainant, of activities as an acknowledged or authorized distributor or reseller of SAP products and the evidence of the Respondent’s awareness of the Complainant’s rights in the SAP Trademark, the Panel finds that the disputed domain name was registered in bad faith.
Considering the fame and goodwill associated with the Trademark SAP, the number of domain names incorporating the said Trademark owned and used by the Complainant and the confusion between the disputed domain name and the Trademark SAP, it is clear to this Panel that the Respondent is capitalizing on the goodwill and fame associated with the Trademark SAP and has deliberately chosen a domain name similar to those of the Complainant as well as incorporating this well known Trademark SAP to create confusion and attract deliberately to its website Internet users searching for legitimate and authorized products and services of the Complainant. The Respondent is thereby benefitting from the confusion created with the Trademark without any possible justification.
In an earlier decision involving the same Complainant, SAP AG v. Harrison Barn, supra, the panel also considered an explanation put forward by the respondent to use the SAP Trademark and contented “that Internet users interested in the company SAP would search for domain names with SAP in them. However, this is because SAP has a particular meaning as a specific indication of product or service origin, not as a descriptive term capable of describing IT services generally”. The Panel finds that this statement applies equally in the present situation and adopts it.
On the basis of the evidence and the support of the said earlier UDRP decision which the Panel finds appropriate and helpful, the Panel finds that the Respondent has been using the disputed domain name in bad faith.
The third criterion of the Policy has been met.
The Panel concludes that:
(a) the domain name <sappoint.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sappoint.com> be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Date: December 10, 2010