The Complainant is SAP AG of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is Saioa Echebarria of Chicago, Illinois, United States of America.
The disputed domain name <graphicsap.com> (“the Domain Name”) is registered with Network Solutions, LLC (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2011. On March 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2011, 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 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 March 10, 2011. The Center’s Written Notice of the Complaint was further delivered by courier to the Respondent and its stated address for service on March 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.
The Center further sent the Notification of Complaint accompanied by the Complaint to the Respondent at the email addresses given on the website operating under the Domain Name (“the Website”) on April 4, 2011 and permitted the Respondent a further period of five days, until April 9, 2011, to indicate its intentions with respect to any reply to the Response. No reply was received to this further email.
The Center appointed William P. Knight as the sole panelist in this matter on April 15, 2011. 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 is the head of a multinational group of companies whose headquarters are in Germany. It is a well-known manufacturer and supplier of business software supplying products under trademarks incorporating the word “SAP” since 1972. It owns a number of trademarks incorporating the word “SAP” registered in respect of software and related goods and services in the United States and in many other countries around the world and has many domain names incorporating these letters.
The Respondent, according to the Website, is a supplier of a “SaaS SAP-Based Solution for Graphic Arts” (“SaaS” is a well-known acronym for “Software as a Service”), that is a subscription service for those in the “graphic arts sector” who use the Complainant’s SAP Business One software, enterprise resource planning software for small to medium size business. The Respondent is the applicant for registration of the trademark GRAPHICSAP in the United States and in the European Community, to the former of which, amongst other matters, the Complainant’s attorney has objected in a letter to the Respondent’s attorney dated December 21, 2010, to which the Complainant states that it has received no “substantive” response.
In addition to its numerous registrations of the SAP trademark, and marks incorporating “SAP”, the Complainant asserts that it has a worldwide reputation and goodwill in its name and trademark SAP, and other trademarks incorporating this word.
The Complainant submits that the Domain Name must be confusingly similar to its SAP trademark because it “fully incorporates” the SAP trademark, with the additional word “graphic” not providing any sufficient differentiation. The Complainant further notes in this regard “Respondent has even copied the layout and colors of the “www.sap.com” website … the landing page uses the typical SAP blue and gold color combination, and uses the same “SAP-blue” for the “SAP” portion of “graphicSAP.”
It is evident that the Respondent was aware of the Complainant’s trademarks at the time it registered and began using the Domain Name, and the Complainant notes that the Respondent is not a reseller of the Complainant’s products or services nor has it been authorized to use of the Domain Name by the Complainant. As a consequence, the Complainant argues, the Respondent could have “no legitimate interest in or legitimate, bona fide business purpose for using” the Domain Name. The Complainant argues that “[e]ven if Respondent needs to refer to the company SAP to identify the type of system, the collateral trademark use necessary in order to do so does not confer the right to use SAP’s trademark as a domain name (or, for that matter, as a company name). SAP has a particular meaning as a specific indication of product or service origin, not as a descriptive or generic term capable of describing computer consulting or technical services generally.”
For substantially the same reasons, the Complainant argues that the Respondent has registered and is using the Domain Name in bad faith.
The Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP.
The mere fact that the Respondent fails to respond to the Complaint does not lead, however, to an automatic entitlement on the part of the Complainant to a decision in its favour. Paragraph 14 of the Rules provides in the event of default that the Panel “may draw such inferences therefrom as it considers appropriate.” Paragraph 15(a) of the Rules instructs the Panel that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.” In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see, for example, M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941, among numerous other decisions.
In addition to being under no obligation to accept the Complainant’s uncontradicted assertions and arguments, in order to a correct decision, the Panel may have regard to public repositories of data, such as online government trademark registers; see, for example, Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, WIPO Case No. D2008-1768.
The Complainant’s trademark rights are beyond question. It is also indisputable that the Respondent was aware of those trademark rights at the time the Domain Name was registered – the Website refers to them.
It does not follow from this, or from the fact that the Domain Name incorporates the word SAP, or both of these things together, as the Complainant argues, that the Domain Name must be confusingly similar to the Complainant’s trademark SAP. The Complainant argues this proposition referring to Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273; Deutsche Lufthansa AG v. George Aby, WIPO Case No. D2009-0071.
Whilst each of these decisions states that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark and that the addition of descriptive words does not provide sufficient differentiation for a disputed domain name to be considered distinctive from the dominant element of a complainant's trademark, such statements are a compendious summary of the correct principle, more fully stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.2 as requiring:
1. a straightforward visual or aural comparison of the Complainant’s trademark with the alphanumeric string in the domain name to determine likelihood of Internet user confusion;
2. the Complainant’s trademark generally needs to be recognizable as such within the domain name; and
3. the addition of common, dictionary, descriptive, or negative terms may be disregarded.
The WIPO Overview 2.0 notes that each case must be judged on its own merits, but circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name <theatre.com>).
The Panel adds its view that it is not the addition of any other word that may be disregarded, but any word that has no weight or distinguishing value. However, it may well be appropriate to have regard to such words where they aggravate the confusion, as in the cited decisions supra. In the former of these concerning the domain name <pentiumgroup.net>, it was clear that the domain name could be read as “Pentium Group”, the word “group” in no way masking the trademark relied upon in that case and indeed exacerbating the deception, and in the latter <lufthansaagent.com> and <lufthansaticket.com> the added words had a comparable effect.
In addition, a significant factor in each of those cases was that the trademark relied upon was a coined word.
This is a very different case. It is not just that the word “sap” is a dictionary word; it is also that it is a component of many words in various languages using the Latin alphabet. In addition, a cursory examination of the trademark registers of the world shows many registered trademarks incorporating the word “sap”, in both dictionary and coined words, in class 9 and related classes. The first impression given by Domain Name could well be “Graphics Ap” (referring to the popular abbreviation of “application” as “ap”), a quite apt description of the Respondent’s offering. Having said this, it is abundantly clear from the Website that the Respondent is, in fact, making reference to the Complainant’s trademark. However, as the WIPO Overview 2.0 notes in this regard, the content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).
In this case, in light of the Panel’s finding below, it is in any event unnecessary to record a definitive finding as to whether the Complainant has or has not satisfied the burden upon it of establishing that the Domain Name is confusingly similar to the Complainant’s trademarks or any of them.
The Panel now turns to the question of whether the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
In this respect, it is appropriate to have regard to the content of the Website. The Panel notes that it does not find convincing the assertion of the Complainant that the Website adopts the coloring or presentation style of the Complainant’s website. That may be possible, and it may have been the intention of the Respondent, but it is by no means self-evident from a consideration of the evidence, and the Panel is not afforded with any other evidence that would be required to establish the significance of the design elements of the Complainant’s website to which the Complaint refers. In these circumstances, it is impossible to form a view based upon the appearance of the Website. Be that as it may, it is not the function of this Panel to make a finding in this regard.
In any event, as mentioned, it is apparent that the Respondent is making a reference to the Complainant’s trademark in the Domain Name and on the Website. There is not the least subterfuge evidenced by the Website in this regard; the Respondent is not making any effort to conceal or deceive anyone with its reference to the Complainant and its software.
The Complainant asserts that the Respondent could not have any legitimate interest in registering and using the Domain Name as it does. The Complainant relies upon the decisions in SAP AG v. Harrison Barnes, WIPO Case No. D2009-1298; 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 former related to the domain name <sapcrossing.com> and does support the Complainant’s contention, although the word “sap” was much more obvious in the disputed domain name in that case, and smacked of the “compendious use” of a trademark.1 The latter decision is of a different kind altogether, in the Panel’s opinion, in that there was a clearly a deceptive intention shown in that case to use multiple domain names to divert the customers of the complainant.
It is well established by decisions under the Policy that it may be legitimate to include a complainant’s trademark in a domain name for various purposes, such as a fan site, a criticism site or a site of a reseller or distributor, provided certain conditions are met; see WIPO Overview 2.0 paragraphs 2.3, 2.4 and 2.5. Equally, the Panel takes the view that it may be legitimate to include a trademark in a domain name where the domain name is a good faith indication of some other reference or connection to the complainant or its products, such as an indication of the kind, quality, intended purpose, or some other characteristic, of goods or services offered on the website under the disputed domain name – presumably, this is what the Complainant is referring to when it refers to “collateral trademark use”.
Equally, if a respondent were in good faith exercising a right to use a trademark granted by a government, then that would demonstrate a legitimate interest, even if another trademark owner claimed adverse rights; see Sensis Pty Ltd and Telstra Corporation Ltd v Yellow Page, Page Marketing BV, WIPO Case No. D2010-0817.
In the present case, there is no indication that the Respondent possesses such government issued trademark rights, and regard must also be had to the fact the Respondent itself has not submitted a Response or explanation for its use of the Domain Name in this particular case. At the same time, there are cases in which the apparent use being made of a domain name may speak for itself, and the Panel, having carefully examined the Respondent’s Website, finds few (if any) indicia of a typical case of cybersquatting, such as monetized pay-per-click advertisements based on trademark value, or links to competitors websites. Rather, the Panel finds what appears to be a bona fide offering of subscription services, via the Domain Name <graphicsap.com>, for those in the graphic arts sector who use the Complainant’s SAP products. It must also be taken into account that the Respondent’s Website does not, for example, appear to include an express disclaimer of non-association with the Complainant, but at the same time, as the Panel has noted, the Website does not evince any attempt at deception, and the Disputed Domain name can be read (not implausibly) as descriptive of the Respondent’s apparently offered services. In such circumstances, there is a corresponding onus on a complainant to establish a clear prima facie case that a respondent’s apparent usage of its domain name is something other than bona fide, and is rather motivated by a bad faith intend to target and illegitimately trade off the complaining party’s trademark. On balance, the Panel does not find that the Complainant has succeeded in meeting this burden on the present record.
In any event, the Policy is intended as a mechanism for resolving clear cases of cybersquatting, and the present dispute appears to this Panel to be one that may be better suited to judicial resolution in respect of the potentially competing claims. Naturally, the Panel’s present finding that the Complainant has not succeeded in these Policy proceedings in showing that the Respondent lacks rights or legitimate interests in the Domain Name would in no way prevent either party from pursuing the matter before an appropriate court of competent jurisdiction, should either wish to do so.
Whilst there is no requirement to make a decision under this heading, for the same reasons, the Panel is unable to come to a conclusion that there is bad faith evidenced on the part of the Respondent in its registration or use of the Domain Name. The Complainant cites British Airways PLC v. Wayne Nicholas/Beroca Holdings B.V.I. Ltd., WIPO Case No. D2009-0110, a decision concerning the domain name <britishairways.mobi>. Clearly, this was a very different case, where the disputed domain contained the complainant’s trademark only, and hence is of little relevance to this matter.
For the foregoing reasons, the Complaint is denied.
William P. Knight
Sole Panelist
Dated: April 27, 2011
1 This refers to the use of a trademark such as “Parker” in the description “Parker Pen Refills”, rather than “Refills for Parker Pens”, the former being an infringement, since it is designed to mislead potential customers as to the origin of goods, the latter being a legitimate reference to the characteristics or purpose of the products being offered; see Kodak Ltd v London Stereoscopic & Photographic Company Ltd(1903) 20 RPC 337; Minimax Ltd v Moffatt (1935) RPC 340.