WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP Systeme/ SAP India Systems v. Davinder Pal Singh Bhatia
Case No. D2001-0504
1. The Parties
The Complainants are SAP Systeme, Anwendungen, Produkte in der Datenverarbeitung Aktiengesellschaft, a Stock Corporation as defined by the German Stock Corporation Act, Neurottstrasse 16, D-69190 Walldorf, Germany and SAP India Systems, Application and Products in Data Processing Pvt. Ltd., a Company incorporated under the Indian Companies Act, 1956, Registered office at "Thapar Niketan", 7/4, Brunton Road, Bangalore - 560 025, India.
The Respondent is Mr. Davinder Pal Singh Bhatia, E-233, Bhai Randhir Singh Nagar, Ludhiana 141 008, Punjab, India.
2. The Domain Name and Registrar
The Respondent is the registrant of the following domain names: <sapmaster.com> and <sapwizard.com>. The registrar is Network Solutions, Inc., P.O. Box 505, Herndon, Virginia 20170, USA.
3. Procedural History
The Complaint in this case was filed by e-mail on April 5, 2001 and in hardcopy on April 6, 2001, with the WIPO Arbitration and Mediation Center.
The Center has found that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
On April 11, 2001, the Center transmitted a request to Network Solutions, Inc., to verify the following facts:
- To confirm that a copy of the Complaint was sent to Network Solutions, Inc., as required by the WIPO Supplemental rules, by the Complainant,
- To confirm that <sapmaster.com> and <sapwizard.com> is registered with Network Solutions, Inc.,
- To confirm that the entity identified in the present case as the Respondent is the current registrant of the domain names,
- To provide full contact details that are available in Network Solutions, Inc., WHOIS database for the registrant, technical contact, administrative contact and billing contact, for the said domain names,
- To confirm that the Uniform Domain Name Dispute Resolution Policy applies to the registered domain names,
- To indicate the current status of the domain names.
Via e-mail communication dated April 12, 2001 Network Solutions, Inc., informed the Center as under:
- That NSI is in receipt of the Complaint sent by the Complainant;
- Network Solutions, Inc., is the Registrar of the domain names,
- That Mr. Davinder Pal Singh Bhatia is the current registrant of the domain names <sapmaster.com> and <sapwizard.com>,
- That the Registrant is:
Mr. Davinder Pal Singh Bhatia (Contact details omitted)
E-233, Bhai Randhir Singh Nagar,
- That the UDRP applies to the domain names
- The domain names registrations are on "HOLD" status.
On April 18, 2001, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. This was done by Post, Facsimile and e-mail. The Administrative Panel finds that the WIPO Center has satisfied its notification obligations under Rule 2(b).
The Center did not receive any response from the Respondent.
On May 8, 2001, the Center notified the Respondent of its default in complying with the deadline indicated in the notification of complaint and for the commencement of the administrative proceedings.
On May 21, 2001, the Center appointed an Administrative Panel consisting of a single member viz., Maninder Singh and this was notified to the Complainant and the Respondent.
The language of the administrative proceedings is English.
4. Factual Background
The Complainants in this administrative proceeding are SAP Systeme, Anwendungen, Produkte in der Datenverarbeitung Aktiengesellschaft, a Stock Corporation as defined by the German Stock Corporation Act, Neurottstrasse 16, D-69190 Walldorf, Germany and SAP India Systems, Application and Products in Data Processing Pvt. Ltd., a Company incorporated under the Indian Companies Act, 1956, Registered office at "Thapar Niketan", 7/4, Brunton Road, Bangalore - 560 025. The dispute in the present complaint relates to registration of two domain names viz. <sapmaster.com> and <sapwizard.com>. The Complainant has claimed right to these domain names and has prayed for transfer thereof from the Respondent.
5. Parties Contentions
The Complainant's contentions in brief are as under:
- SAP is the leading global provider of specialized computer software commonly referred to as "Enterprise Resource Planning" (ERP) software. ERP Software is computer software that manages and controls all the resources of an organization, including material, finance, sales, etc. SAP was founded in 1972 by five former IBM engineers. In 1988 it became a publicly held corporation and has since been carrying on business in the field of development, publication and distribution of software, which have acquired great fame and renown throughout the world.
- SAP is the third largest Software Company in the world and employs more than 24,100 people in over 50 countries. SAP software is deployed in more than 36, 000 business installations in over 120 countries and is currently used by companies of all sizes, including more than half of the world’s top 500 companies. Customers using SAP software to increase their competitiveness and efficiency include Air France, Audi, Bayer, BMW, Bosch, Burger King, Deutsche bank, Heineken, Honda, KPMG, Lufthansa, MLP, Nestle and Nokia. In addition, SAP customers include dotcom companies around the globe such as barnesandnoble.com, Westell Technology and Streamline.com.
- SAP has been a public company since 1988 and is listed on several stock exchanges including:
(i) the Frankfurt stock exchange, where it is listed on the DAX, the German index of blue chip companies;
(ii) the New York Stock Exchange, under the symbol "SAP".
- SAP commenced development of the SAP software in 1971 and same was first published in version SAP R/1 in 1972. Since then SAP has been continuously enhancing the integrity, reliability and stability of its software.
- Since the introduction of web interfaces and a scalable Internet ready architecture in 1996, SAP began making the transition to the Internet business model. This transition was heralded by the introduction of <mysap.com> -perhaps SAP’s most popular product offering till date. This product enables companies of all sizes to fully engage their employees, customers and partners to capitalize on the new Internet economy. The ability of SAP to deliver customer-centric, open, personalized and collaborative inter-enterprise solutions is the foundation for <mysap.com>.
- The name SAP was coined and adopted by the Complainant in 1972 and forms part of its corporate name. The founders of the Complainant had teamed up with the objective of developing software that addressed the needs of processing data. The German words "Systeme" (meaning System), "Anwendungen" (meaning Application), "Produkte" (meaning Products) were strung together to form the Complainant’s name abbreviated as SAP. The Complainant has used the name SAP as a trademark since its inception in 1972. It may therefore be seen that the trademark SAP is an arbitrary, fanciful and inherently distinctive mark that had been coined by the Complainant and is therefore entitled to the highest degree of protection.
- Complainant No.1 has registrations for the trademark SAP (Word and Logo) as well as several other marks containing the word SAP as their dominant feature such as SAPTRONIC, SAP SOLUTIONS (Logo), SAPOFFICE, SAPSCRIPT, SAPFIND, SAPTIME, SAPMAIL, SAPACCESS, SAP-EDI, SAP etc., in various countries. The aforesaid trademark registrations are valid, subsisting and have full legal force, having been renewed from time to time.
- Apart from its statutory rights, the Complainant has by virtue of extensive user gained common law rights in the trademark SAP. The Complainant is the proprietor of the trademark SAP by virtue of priority in adoption, continuous and extensive use and advertising, and the reputation consequently accruing thereto in the course of trade. The Complainant and its group companies have exclusively used SAP as a trademark so that the trademark SAP is always perceived as indicative of the source of the Complainant and its Group Companies. The SAP Group consists of over 50 companies/branches in over 40 countries, most of which use the name SAP not only as a trademark but also as a part of their corporate name.
- For claiming the worldwide reputation, the Complainant has stated that the Complainant commenced business in 1972 and is today reckoned as the world leader in the development of ERP software. It has operations in over 50 countries. The Complainant’s software is used in companies of all sizes operating in a variety of industries, and is even translated into languages spoken in various countries. According to the Complainant a recent study by the International Data Corporation, a respected US market research firm, states that :
"SAP has established a commanding lead in the client/server industry holding a market share of 28%, a figure greater than the combined shares of its next five competitors".
- In the European Market the Complainant’s position is even stronger, with a market share of 41%. The Complainant through its subsidiaries, branches or representative offices, operates business in virtually all of the world's industrialized markets. The study concluded that its products are used in more than 90 countries, representing around 98% of the worlds' economic capacity - a conclusive proof of SAP's global reach and reputation;
- On account of its highly distinctive nature and the pioneering activities of the Complainant in the field of computer software and information technology, the name SAP has acquired an excellent reputation from the very beginning and down the decades, the said name has consistently been associated with, and has denoted the software and business of the Complainant, as also the high quality of the software and services rendered under the mark SAP or associated with the SAP Group of Companies. Thus the mark/name is entirely distinctive of software and services rendered by SAP Companies and the members of the SAP Group are acknowledged to be the standard bearers of excellence in quality of software and business ethics in the whole world. The trademark SAP, which was adopted, in 1972 in relation to computer software and later in relation to information technology and e-commerce by the Complainant, has been used continuously and extensively ever since. With the accumulated goodwill and reputation arising from usage of the said trademark and its extensive advertisement and write-ups on it by magazines and newspapers, the complainant has customers identifying, recognizing and associating the trademark SAP exclusively with it or with the SAP Group. Moreover, as mentioned above the SAP software is being used in large, medium and small companies in India and abroad. So inherently distinctive is the trademark SAP that the mere reference to it signifies to the trade and to the relevant class of the consuming public the Complainant’s goods and business as distinguished from all other traders irrespective of the class of goods or business being conducted by them;
- The worldwide reputation associated with the Complainant’s trademark SAP and other trademarks is exhibited from the fact that the Business Week Magazine, (Asian Edition), in November 1998, ranked the Complainant very high in the listing titled "The Information Technology 100", and stated as follows about the Complainant:
"Its big ticket software programs run everything from manufacturing to accounting – making it more strategic to customers than even Microsoft".
- The Complainant received the following awards and rankings, further exhibiting their worldwide reputation:
(i) In a study of German Companies listed on the DAX (the German Stock Exchange) the Complainant received an AA rating from the German monthly "Manager Magazine", putting them in the first place for the fifth consecutive year.
(ii) "Manager Magazine" votes the Complainant Company as the "Company of the Year" for the fourth time, with top marks in "Balance Sheet Analysis" and "Stock Development".
(iii) The Complainant was awarded the first German "Investment in Jobs" prize.
(iv) In an analysis of the 500 largest quoted securities in Europe, the Complainant takes first position by a wide margin.
- A key factor in the Complainant’s global success is its capacity to develop innovative solutions and publicize and market the same. The Complainant is an industry leader in terms of research and development (R&D). In 1999 alone, SAP had invested DM 1452 Million in its R& D activities- about 15% of its sales revenue.
- The Complainant is the largest ERP Software Company in the world with rapidly growing sales, with the figures touching DM 12216 Million in the year 2000.
- The Complainant has a considerable presence even on the Internet as evidenced by its popular website, <www.sap.com>. The Complainant’s web site contains a home page, site map, search engine, worldwide network, shop, etc., pages. In particular, the web-site contains information about the company, its products, industry solutions, technology, services, investor relations, press room, events, etc. The web site also has an electronic commerce (e-commerce) page / Information Center which contains SAP Business-to-Business Procurement, SAP Online Store, SAP Employee self-service, Internet Application Component, Architecture, Web-enabled SAP Business Workflow, etc. Visitors to this home page can purchase the SAP Products and services online.
- Thus, the mark SAP having been extensively used in relation to the business of the Complainant and its group companies, has acquired distinctiveness and is understood and associated by consumers in India as well as abroad as the mark of the Complainant, denoting its goods and business. The mark can be said to have acquired the status of a "well known mark", as understood under Article 6 bis of the Paris Convention.
- On account of the high degree of inherent and acquired distinctiveness which the mark SAP is possessed of, the use of this mark, or any other phonetically, visually or deceptively similar mark, by any other person would result in immense confusion and deception in the trade, leading to passing off.
- Complainant No.2 SAP India is a wholly owned subsidiary of SAP and is responsible for the sales of SAP solutions, implementation, post-implementation support, training and certification of its customers and partners in India. SAP India’s mission is to enable Indian organisations to access the global market by offering them a wide range of web-enabled solutions. SAP India has emerged as one of the fastest growing subsidiaries with more than 220 Indian corporates already using SAP solutions in their business operations. Headquartered in Bangalore, SAP India has offices at Mumbai, Delhi, Calcutta and Pune.
- The Complainant has in the past obtained restraining orders from Indian courts against parties who had unauthorisedly used their trademark SAP, whether by way of registering the same as a domain name or otherwise. In fact, these restraining orders include an order against the respondent in the present proceedings. The details of the suits are tabularised below:
Title of the Suit
SAP Systeme, Anwendungen Produkte in der Datenverarbeitung Aktiengesellschaft & Anr. Vs. T.A.M.N. Chowdhary & Others
Ex-parte ad interim injunction
SAP Systeme, Anwendungen Produkte in der Datenverarbeitung Aktiengesellschaft & Anr. Vs. Manu Kosuri & Anr.
SAP Systeme, Anwendungen Produkte in der Datenverarbeitung Aktiengesellschaft & Anr. Vs. Devinder Pal Singh Bhatia
Ex-parte ad interim injunction
- The Respondent in the present dispute has registered the domain names <sapmaster.com> and <sapwizard.com>, thereby misappropriating illegally and without authority the trademark SAP which is the exclusive property of the Complainant.
- In March 1999 the respondent contacted Mr. Anthony DiBartolomeo, of SAP America, the Complainant’s US Company, and offered the said domain names for sale. Thereafter the respondent continued to communicate through e-mail on many occasions and each time, the urgency to sell the domain names got more and more intense. The respondent quoted the prices of certain offers that he had received from third parties and asked Mr. Anthony DiBartolomeo to make him an offer at the earliest, keeping in mind the offers that he already had. He stated:
"I expect $ 15,000/-., or more for any of the two names. You can contact me………….."
- In another e-mail correspondence the respondent had given the Complainants’ representative an ultimatum stating:
"This refers to your e-mail showing interest in buying domain names sapmaster.com and/or sapwizard.com from me……On an urgent business trip I am going out for two days. Instead of phone call please send me your response by e-mail. If you want to contact me on phone I will be back on night of 24th March and you can contact me on the morning of 25th March……I have got offers for sapmaster.com for$20,000 and sapwizard.com for $16,000. I had asked for $15,000 or more. Your response at the earliest will be appreciated, as I want to finalise the deal soon."
- In order to ensure that the respondent did not transfer the domain names to a third party and keep the channel of communication alive, the Complainant discussed the purchase of the domain names <sapmaster.com> and <sapwizard.com> for US$21,000 and US$17,000, respectively. The respondent responded by e-mail, and offered to transfer the domain names <sapmaster.com> and <sapwizard.com> for amounts of US$21,000 and US$17,000, respectively. The Complainant then proceeded to institute legal proceedings against the Respondent before the Delhi High Court. The Hon’ble High Court was pleased to grant an interim injunction against the respondents restraining them from dealing with the impugned domain names in any way. Details of the suit have been tabularised in paragraph (o) above.
There was no response or any other communication from the Respondent which was received by the Center before the default notice. It appears that after the stipulated period was over and the default notice was issued the Respondent sent a response to the Center through e-mail dated May 9,2001 and another e-mail dated May 22, 2001 to the panelist. However, these responses are after the default notice having been issued by the Center and for which no leave has been sought by the Respondent. Further the panel is of the view that direct communications, to panelist(s) appointed by the Center as per the policy, by any of the parties and when the default notice has already been issued by the Center, should not be entertained. Therefore, the above-mentioned two e-mails on behalf of the Respondent are disregarded.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and
(2) That the Respondent has no legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.
Identical or confusing similarity
It is the case of the Complainant that the disputed domain names <sapmaster.com> and <sapwizard.com> were virtually and confusingly similar to the Complainant’s trade mark SAP. The addition of the words "MASTER" and "WIZARD" in the domain names are mere generic terms and cannot help distinguish the domain names from the trademark/ service mark "SAP". The Complainant places reliance on a decision of the Center in the case of Nokia Corporation vs. IBCC a.k.a. Nokiagirls.com (Case No. D2000-0102), where although the Respondent had registered a domain name identical to the trademark of the Complainant along with a generic term such as "girls", the panel had concluded that the ability of such generic terms to distinguish the domain name from the trademark of the Complainant is limited. It was thus held that despite the addition of a generic word, the domain name was confusingly similar to the trademark of the Complainant. The Complainant has claimed exclusive rights in trademark/ service mark SAP.
It would also be useful to refer to certain other decisions of the Center in the following cases wherein despite certain prefixes and suffixes, the disputed domain names were held to be confusingly similar.
(a) Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409: In this case the Center has held that user of various other prefixes and suffixes with the mark SONY such as sonyacademy.com, sonycampus.com, sonycollege.com, worldsony.com, sunsony.com, dreamsony.com etc. would not entitle the respondent in that case to continue with the disputed domain names registrations and the order for their transfer in favour of the complainant was passed.
(b) Dell Computer Corporation v. Alex and Birgitta Ewaldsson Case No. D2000-1087 : In this case, the complainant known for its computers challenged various domain name registrations of the respondent containing the word Dell, such as, deldrivers.com, dellit.com etc. The Center, after consideration of the facts directed the transfer of the 122 domain names in favour of the complainant.
(c) Carrefour S.A. v. Multigestiones Puertonorte S.L., Case No. D2000-0837 : In this case, the complainant was carrying on the business of retail sales through its super market outlets in more than 30 countries with the trade mark CARREFOUR and was having trade mark registrations in numerous jurisdictions. The respondent had the following domain name registrations : carrefour-group.com, carrefourgroup.com and newcarrefourgroup.com. The Center directed the transfer of these three domain name registrations of the respondent in favour of the complainant.
(d) Indya.com Portal Pvt.Ltd. v. Akram Ali, V.M. Hardware, Case No. D2000-1489 : The Center in this case held that there is no doubt that the name "indya.com" of the complainant and the impugned domain name i.e., "indyanews.com", "indyanews.net" and indyanews.org" by the respondent are identical and confusingly similar.
(e) Sony Corporation v. Setec, Case No. D2001-0167 : In this case, the Center has held that the domain name registered by the respondent, namely, "newsony.com" is virtually identical and confusingly similar to the domain name of the complainant "SONY.COM".
The panel therefore holds that the disputed domain names are confusingly similar to the trademark of the Complainant, namely, SAP.
Rights/ Legitimate Interests
The panel finds force in contentions of the Complainant that the Respondent is not, either as an individual, businesses or other organization, commonly known by the name SAP. Secondly, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark SAP or to apply for any domain name incorporating this mark.
Bad Faith Registration
There is also merit in the contention of the Complainant that the Respondent had registered the domain names <sapmaster.com> and <sapwizard.com> being fully aware of the Complainant’s considerable reputation and the fact that they are the proprietors of the famous mark "SAP". The record also reveals that the Respondent approached the Complainant for selling the impugned domain names, as set out hereinabove. The panel is, therefore, of the opinion that the registration of the disputed domain names by the Respondent is in bad faith.
The Panel decides that the Respondent's domain names <sapmaster.com> and <sapwizard.com> should be transferred to the Complainant.
Dated: June 8, 2001