WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Andrew Sparrow
Case No. D2001-0733
1. The Parties
The Complainant in this administrative proceeding is SAP AG, ("Complainant"), a private company limited by shares, incorporated under the laws of Germany, with its main business address at Neurottstrasse 16, 69190 Walldorf, Germany. Complainant's authorized representative is Dr. Matthias Koch, Attorney at law, Lovells Boesebeck Droste, Marstallstrasse 8, 80539 Munich, Germany.
According to the concerned registrar's WHOIS database, the Easyspace Hostmaster database at www.easyspace.com, the Respondent in this administrative proceeding is Andrew Sparrow ("Respondent"), Heatherslade, The Avenue, Dallington Northants NN5 7AJ, United Kingdom.
2. The Domain Names and Registrar
The domain names at issue are <sap-ag.com>, <sap-partner.com> and <sap-world.com> ("domain names"), registered with Easyspace Ltd ("Registrar") of 2 Park Court, Pyrford Road, West Byfleet, Surrey KT14 6SD, United Kingdom.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on June 1, 2001, by e-mail and was received on June 6, 2001, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on June 6, 2001.
On June 7, 2001, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on the same day with its Verification Response that the disputed domain names were registered with Easyspace Ltd. and that Respondent, Andrew Sparrow was the current registrant of the disputed domain names. The reply also contained and confirmed the contact information for the Respondent mentioned in the Complaint.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on June 11, 2001, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted by e-mail to the Respondent on June 11, 2001, setting a deadline of June 30, 2001, by which the Respondent could file a response to the Complaint. The Commencement Notification and Complaint was also transmitted to firstname.lastname@example.org, email@example.com and firstname.lastname@example.org. In addition, the aforementioned documents were sent by DHL courier service to the available postal address of Respondent.
In an e-mail, dated June 12, 2001, Adam Lindley, IT Manager of SCI International Group Ltd. responded to the Commencement Notification. Even though not specifically stressed in the aforementioned e-mail, the Panelist concludes from its content that this communication was made in representation and name of Respondent. In this e-mail, the WIPO Center was informed that transfer of the domain names shall be achieved by the end of the week. However, the Panelist wishes to emphasize that the formal date of commencement of administrative proceeding was June 11, 2001. Hence, the Registrar was at this stage no more able to comply with any wishes from the Respondent's side for changes to the registration details of the domain names at issue, c.f. Paragraph 8(a) Policy.
With reference to the abovementioned e-mail sent by Respondent on June 12, 2001, the assigned Case Manager informed the Complainant on July 2, 2001, of the possibility to suspend and / or terminate the Proceedings in case that an agreement has been reached between the Parties. Having reviewed the communications' records in the case file, the Panelist finds that no communication was made in response to this e-mail and thus the Proceeding continued.
On July 2, 2001, the assigned Case Manager informed Respondent of his default to comply with the deadline for the submission of a Response and that it would be the Panelist's sole discretion whether to consider a response submitted after the set deadline. The Panelist would like to note that Respondent until today has failed to submit any response to the Complaint.
Complainant requested a single-member panel. Since Respondent failed to submit a response, the WIPO Center invited the undersigned to serve as sole Panelist in Case No. D2001-0733 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence on July 6, 2001, which was duly signed and returned to the WIPO Center on July 10, 2001.
The WIPO Center transmitted to the parties on July 11, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of July 24, 2001.
The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
Complainant, one of the largest software companies world wide, is the registered owner of a large number of national and international trademarks reflecting the term "SAP".
The Complaint is specifically based upon the internationally registered trademark "SAP" (Registration no. 542 684 ) which is protected in Great Britain since June 5, 1998. Being the holder, Complainant filed this trademark on August 19, 1988, and registered it with the WIPO Center on July 5, 1989.
This international word and device mark is registered for the following goods and services:
- Class 09: Information carriers of all types provided with machine-readable programs; data processing programs;
- Class 16: Written material accessory to data processing programs;
- Class 42: Advice in connection with the use and application of data processing programs.
A computer printout of the respective entry from the Romarin trademark database was attached to the Complaint [Annex C].
Furthermore, the Complainant has registered the national service mark "SAP" in the United Kingdom for the following services:
- Service mark with registration no. 1326037 for class 09: Audio and video, telecommunications, photographic, cinematographic and optical apparatus and instruments; cinematographic films prepared for exhibitions; parts and fittings for all the aforesaid goods; all included in class 09; but not including amusement apparatus adapted for use with televisions, coin-freed apparatus or pre-recorded audio/video tapes or discs;
- Service mark with registration no. 1326038 for class 42: Computer programming; rental and design of computer hardware and software; advisory and consultancy services relating to computers, computer software computer systems, computer applications, computer instruments and apparatus, all included in class 42;
- Service mark with registration no. 1371432 for class 09: Computers; data processing apparatus; computer programs; memories for computers; parts and fittings therefor: all included in class 09;
- Service mark with registration no. 1371433 for class 42: Computer programming; advisory services relating to computer hardware and to computer software; all included in class 42;
- Service mark with registration no. 1371434 for class 09: Computers; computer programs; data processing apparatus; memories for computers; parts and fittings for all the aforesaid goods; all included in class 09; but not including computer games;
- Service mark with the registration no. 1371435 for class 42: Computer programming; advisory services relating to computers, to computer software and to data processing apparatus; all included in class 42.
The service marks with registration nos. 1326037 and 1326038 have been filed on November 5, 1987, and published in the United Kingdom on July 8, 1992, and March 1, 1995, respectively. The service marks with registration nos. 1371432, 1371433, 1371434 and 1371435 have been filed on January 27, 1989, and published in the United Kingdom between July 7, 1993, and August 9, 1995.
The Complainant has registered – among others – the following Internet domain names: <sap.de>, <sap-ag.de>, <mysap.com> and <sap.com>.
The disputed domain name <sap-ag.com> was registered by Respondent on July 14, 1998. The other two domain names in question, <sap-partner.com> and <sap-world.com>, were both registered by Respondent on July 20, 1998 [Annex A].
5. Parties’ Contentions
Complainant contends that:
- the domain names in question are confusingly similar to the Complainant's trademark "SAP"; and
- the Respondent has no rights or legitimate interests in the use of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith; and
- the contested domain names should be transferred to the Complainant.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a response in accordance with the requirements under the Policy. Thus, Complainant's allegations are deemed to be non contested.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith."
Identical or Confusingly Similar Domain Name: Policy Paragraph 4(a)(i)
The Domain Names at issue are <sap-ag.com>, <sap-partner.com> and <sap-world.com>. Complainant is the holder of the registered trademark "SAP". The combination of a famous and distinctive trademark and a descriptive word - as in this case "ag", "partner" or "world" - is sufficient to establish a confusing similarity to the trademark for the purpose of the Policy [e.g. Case No. D2000-1774 ("nikoncamera", "nikondealer(s)", and others)]. The domain names wholly incorporate the Complainant's registered mark and differentiate from it only by connecting another word to it with a hyphen. The added formatives "ag" and "world" are not sufficiently distinctive as to clearly rule out any possible confusion. In contrary, "ag" is the German short form for the legal entity of Complainant ("Aktiengesellschaft" = Corporation), and "world" may most probably be understood as that the company connected to the trademark is doing business worldwide. By adding the noun "partner" to Complainant’s mark, Respondent does not create a new or different mark in which he has rights but implies the impression that there is some sort of business relation between Complainant and Respondent. However, according to Complainant, Respondent is not, and never has been, representative or licensee of Complainant and hence such implication is in no way accepted or agreed by Complainant.
In any event, Respondent does not contest this point.
The Panelist therefore determines that all disputed domain names are confusingly similar to Complainant’s "SAP" mark within the meaning of paragraph 4(a)(i) of the Policy.
Respondent's Rights or Legitimate Interests in the Domain Name: Policy Paragraph 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent does not use any of the disputed domain names for a bona fide offering of goods or services although he is the registered owner since July 1998. The display of Registrar's standard web-site under the contested domain names is a clear sign that Respondent has not started any demonstrable preparations for a future use and that he has not spent any effort to make a legitimate noncommercial or fair use. The same must be concluded from the fact that Respondent in his e-mail from January 9, 2001, agreed to transfer the domain name <sap-ag.com> to Complainant (Annex F). Only in a later communication of February 15, 2001, Respondent accidentally revealed his ownership of the domain names <sap-partner.com> and <sap-world.com> (Annex I). It is clear from the lecture of this e-mail that - accordingly - no legitimate noncommercial or fair use was intended for the two additional domain names as Respondent undertook the same (insufficient) changes to all three contested domain names.
In the absence of any trademark or service mark rights, Respondent has failed to provide any evidence that he has been commonly known by the domain names.
There are no indications whatsoever to a legitimate interest of Respondent to use the domain names. Therefore, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy Paragraph 4(a)(iii)
The third element to be established by Complainant is that the domain name has been registered and used in bad faith.
Paragraph 4(b)(ii) of the Policy provides as an evidence of registration and use in bad faith registration of a domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding Domain Name. As seen above, no use of the domain names has been shown. Hence, by registering the disputed domain names containing the mark "SAP", the only effect and possible use is the prevention of a reflection of Complainant's mark by the Complainant on the domain names at issue.
In WIPO Case No. D2001-0102 (Nike, Inc. v. Crystal International) (cited in Complaint) it is maintained that bad faith is indicated by the registration of a series of domain names that are confusingly similar to a famous brand name followed by the absence of any legitimate use of them for a time period of over two years since the first domain name was registered. The Panelist agrees with this finding and holds that Complainant's mark "SAP" meets with the requirement of a "famous brand name" considering its worldwide reputation. The domain name <sap-ag.com> was the first domain name to be registered by Respondent on July 14, 1998. So far, none of the disputed domain names have served for a legitimate use but only display the standard web-site of the Registrar.
According to Policy Paragraph 4 (b)(iv), bad faith is shown by using the domain names in order to intentionally attract, for commercial gain, Internet users to the web sites or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location. Complainant claims this to be the case. While the Panelist agrees that Respondent may intend to create a likelihood of confusion, there are up to date no signs of any exploitation of Complainant's trademark for commercial gain as the domain names do not refer to any content originating from Respondent.
Despite, in an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the domain names have been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed domain names are confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names, and that the Respondent's domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panelist requires that the disputed domain names <sap-ag.com>, <sap-partner.com> and <sap-world.com> shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: July 24, 2001