WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Brent Angie
Case No. DBIZ2002-00054
1. The Parties
The Complainant is SAP AG, a corporation organized and existing under the laws of Germany, having its principal place of business at Neurottstrasse 16, 69190 Walldorf, Germany. The Complainantís authorized representative is Dr. Matthias Koch of Lovells Boesebeck Droste, Munich, Germany.
The Respondent is Brent Angie, whose address is given as 12212 Brigadoon Ln. #115, Austin TX 78727, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <sap.biz>, which is registered with 007Names, Inc, 672 Route 202-206N., Bridgewater, NJ 08807, United States of America.
3. Procedural History
On April 25, 2002, the Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center (the "Center") in electronic format. The hardcopy was received on April 29, 2002. The Complainant has standing to file such a Complaint, as Complainant filed the required Intellectual Property (IP) Claim Form with the registry operator. As an IP Claimant, the Complainant noted its intent to file a STOP Complaint against the Respondent. The Center transmitted an Acknowledgement of Receipt of Complaint on April 30, 2002.
The Center verified that the Complaint satisfied the formal Requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP Policy"), and the Start-up Trademark Opposition Rules for .BIZ STOP (the "STOP Rules"), and the WIPO Supplemental Start-up Trademark Opposition for .BIZ Rules. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint complies with the requirements of the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules.
On May 3, 2002, the Center transmitted a Request for Registrar Verification to the Registrar. Further email requests were sent on May 7, 2002, and on May 23, 2002. No response was received.
On May 23, 2002, a Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent advising that a Response was required within 20 calendar days, i.e. by June 12, 2002.
On June 6, 2002, the Center received a Response via email, and on June 12, 2002, the Center sent the parties an Acknowledgment of Receipt of STOP Response.
On June 18, 2002, the Center appointed a single Panelist and forwarded a Notification of Appointment of Panel to the parties.
4. Factual Background
The Complainant has been a public company since 1988 and is listed on several stock exchanges, including the Frankfurt Stock Exchange and the New York Stock Exchange under the symbol "SAP". The Complainant explained that "SAP AG" is the corporate name under which the Complainantís business is conducted. "SAP" is the company name and "AG" is the abbreviation for "Aktien-Gesellschaft" (the German term for a public limited company).
The Complainant claims that it is internationally acknowledged as one of the largest software companies worldwide and is the market leader for inter-enterprise software solutions. The Complainantís SAP software products were and are now deployed at more than 24,500 business installations in over 110 countries. The Complainantís SAP software products are used by more than half of the worldís top 500 companies.
The Complainant states that in its annual survey of the "Worldís Most Valuable Brands 1999 & 2000" the brand agency Inter-Brand estimated the global value of the Complainantís brand "SAP" in the year 2000 to be US$6.1 billion. This ranked "SAP" as the 39th most valuable brand in the world. A summary of this report was annexed to the Complaint.
The Complainant has registered a large number of trademarks comprising or consisting of the term "SAP". The Complaint is specifically based on, inter alia, the internationally registered trademark "SAP" (registration no. 557 756, priority date February 13, 1990), which is registered in Austria, The Benelux, Switzerland and "a significant number of other countries". This international word mark "SAP" is registered in international classes 9, 16, and 42.
The Complainant has also registered the international trademark "SAP" (registration no. 726 890, priority date November 15, 1999). This trademark is registered in Bulgaria, Belarus, China, and "a significant number of other countries". It is registered for a range of goods and services in classes 9, 16, 35, 41, and 42. The Complainant has also registered the trademark "SAP" in a number of classes in the United States of America.
The Complainant also states that it has registered the domain names <sap.com>, <sap.de> and <sap.info> and operates active websites at these addresses.
Disputed domain name
On March 27, 2002, the Respondent registered the disputed domain name.
On April 24, 2002, the Complainantís authorized representative sent an email to the Respondent, requesting the Respondent to "Ö inform us immediately about any legal position you believe to have in the name ĎSAPí Ö".
The Respondent replied on the same day asserting that "Ö we have not violated any Intellectual Property by your client as to the details outlined in their IP claim classes."
5. Partiesí Contentions
The Complainant alleges that, given the worldwide fame and reputation of the Complainantís "SAP" trademark the disputed domain name must have been registered with the Complainantís trademark in mind.
The Complainant confirms that the Respondent is not and has never been a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainantís trademarks.
The Complainant claims that the Respondent does not use the disputed domain name for a bona fide offering of goods or services. The website is currently inactive.
The Complainant asserts that the Respondent is not commonly known by the name "SAP". The Complainant has conducted Internet searches at <google.com>, <altavista.com> and <lycos.com> to identify any online reference to the combination of the words "Brent, Angie" and "SAP", but states that it did not find any relevant results.
The Complainant contends that the Respondentís email of April 24, 2002, in which the Respondent stated "Ö we have not violated any Intellectual Property by your client as to the details outlined in their IP Claim classes", demonstrated knowledge of the Complainant and the Complainantís trademark rights. It also contends that any commercial use of the disputed domain would illegally dilute the Complainantís well-known trademark "SAP". It notes that, according to the .biz Registration Restrictions, the Top Level Domain .biz is explicitly reserved for commercial and business purposes.
The Complainant also notes that the Respondent has registered the following Internet domain names:
The Complainant claims that it can be concluded from the registration of the above domain names that the Respondent is active in the field of computer technology, which is closely related to the Complainantís business activities. Therefore, the Complainant concludes that it is likely that the Respondent would have had knowledge of the Complainant and the Complainantís products and trademark "SAP".
The Complainant notes that the Respondent has also registered the domain name <pox.net>, which is offered for sale. The Complainant claims that this indicates that the Respondent is aware of the possibility of registering domain names in order to sell them to interested parties, and claims that the disputed domain name was registered for this purpose, also.
The Respondent claims that he intends to do business as "Smart Appliance Products". The Respondent states that "no products or services by Smart Appliance Products will be marketed or referenced by the SAP acronym in its entirety, thereby avoiding any confusion or similarities in business practices and product offerings".
The Respondent does not identify exactly what nature of goods or services he intends to provide under the mark "SMART APPLIANCE PRODUCTS", citing confidentiality reasons. The Respondent does claim, however, that the goods and services he intends to provide under the mark "SMART APPLIANCE PRODUCTS" do not fall within the goods and services for which the Complainantís trademarks are registered. The Respondent also claims that he intends to apply for patents and trademarks applicable to the products and services which form part of the Smart Appliance Products.
The Respondent states that current, non-conflicting registered trademarks containing the mark "SAP" can be found in various trademark offices worldwide. He annexes one such example (from the United States Patent and Trademark Office) to his Response.
In relation to the Complainantís claim that the disputed domain name has not been used, the Respondent states that he was never made aware of his successful registration of <sap.biz> by the Registrar. The Respondent states that he first became aware of the registration of the disputed domain name by the Complainant on April 24, 2002, and that the Registrar did not disclose his successful registration of <sap.biz> even after considerable inquiries by the Respondent.
The Respondent states that the Registrar has placed the registration of <sap.biz> on hold until after this proceeding has been resolved. Thus, the Respondent claims that he has been unable to build an online identity through <sap.biz> for Smart Appliance Products. The Respondent claims that "Smart Appliance Products" now deserves the right to exercise an opportunity to build a web-identity.
The Respondent denies that his original response to the Complainantís email on April 24, 2002, illustrated a prior knowledge of the Complainant. He claims that his statement that "we have not violated any Intellectual Property by your client as to the details outlined in their IP Claim Classes" was "merely an intelligent caution to be being interrogated by unknown businesses via the Internet".
The Respondent claims that he was not made aware of "any specific Complainant trademarks during the NeuLevel registration process. It was to the best of Respondentís knowledge, at the time of registration, that there were no conflicts with the indicated claims; hence, the decision to proceed forward with the registration during the initial .biz round-robin registration process".
The Respondent claims that the Complainantís assumption that the Complainantís business was in the mind of the Respondent at the time of registration of the disputed domain name is "invalid and baseless". He claims that he had no knowledge of the Complainant until after the Complainantís Complaint.
The Respondent states that he did not research the Complainantís trademarks until the Complainantís email of April 24, 2002. He alleges that it was as a result of coincidence, and not bad faith, that the disputed domain name incorporated the acronym "SAP".
The Respondent claims that all the domain names currently registered by the Respondent were registered for the purposes of the Respondentís "business plan". He states that the domains all relate to hardware-based technology Ė which the Respondent claims is at the opposite end of the spectrum from the software-based technology sold by the Complainant.
The Respondent states that he does not and has never profited from selling, renting or transferring domain names. The Respondent claims that he has not approached the Complainant or any other entity with regard to selling the disputed domain name, and has no intention of selling or transferring the disputed domain name to the Complainant or the Complainantís competitors. He states that he has a legitimate intent to use the disputed domain name and that he does not directly compete with the Complainant.
The Respondent claims that any customers of the Complainant who might mistakenly arrive at the Respondentís website would immediately recognize the difference between the two sites and that therefore, the Respondent would not derive any commercial gain from such customers. The Respondent emphasizes that Smart Appliance Products and SAP AG are not in competition and target different markets altogether.
The Respondent states that "Smart Appliance Products" is in "the final stages of conception and currently has several products in the initial development cycle. These stages have consisted of continuous conceptual planning supported by marketing research and development".
The Respondent states that because he has not announced or released any of his Smart Appliance Products or information, he considers all information relating to these products to be confidential. He claims that this information is critical to the "companyís success" and that this is the reason this information has not been disclosed to the Complainant or the WIPO Center.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Domain Name is identical to a trademark or service mark in which the Complainant has rights
Under the STOP proceedings, a STOP Complaint may only be filed when the disputed domain name is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding should involve a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. (The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.)
It is plain from its numerous trademarks registrations that the Complainant has rights in the trademark SAP. The Panel therefore finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
Rights or legitimate interests in respect of the disputed domain name
It is clear from the Response that the Respondentís "Smart Appliance Products" are not being sold currently. The Respondent claims that he intends to use the disputed domain name to grow the sales of his "Smart Appliance Products". However, he does not provide any evidence of what those "Smart Appliance Products" are, or any corroborative evidence that these are in fact being developed as claimed.
The Respondent further states that the "Smart Appliance Products" are in "the final stages of conception" and that he has "several products in the initial development cycle." He claims that the "Smart Appliance Products" are being developed by a company also known as "Smart Appliance Products", which has undertaken "continuous conceptual planning supported by marketing research and development".
No evidence was provided in support of these claims. The Respondent claimed that any such evidence would be confidential. The Panel has difficulty accepting this contention. Quite apart from the fact that the evidence could have been supplied under conditions of confidentiality, there must surely be some external evidence which could have been included in the Response without revealing the Respondentís secret plans. For example, if there was a company "Smart Appliance Products" as the Respondent claims, the Certificate of Incorporation could have been provided. Similarly, any correspondence with market research companies, design companies, financial institutions or any other third party with which the Respondent has been dealing in relation to his "Smart Appliance Products" would have lent some substance and credibility to his claims.
The Panel has also conducted its own Internet search of "Smart Appliance Products" in connection with the name of the Respondent, to no avail.
The Panel is also concerned by a number of internal inconsistencies within the Response, and by some of the more improbable allegations which are unsupported by any evidence. For example the Respondent claims that he intends to apply for patents and trademarks in relation to his "Smart Appliance Products". In the Panelís experience, the very nature of patentable invention is such that the inventor would usually patent the invention as quickly as possible. It would be rare for an inventor to "intend" to file a patent for any length of time without taking any steps.
The Panel is also concerned by the Respondentís assertion that "[t]he class usages of "SAP", as defined in the Complaint, are not applicable to the classes or intent of classes by Respondent". However, the Respondent never identifies the classes in which he intends to register his trademarks. The only clues as to the Respondentís likely fields of activity are the Respondentís statements that:
"Respondent owns domains more related to hardwareĖbased technology on the complete opposite spectrum from the software-based technology and of Complainant."
"Note that previous company domains registered are hardware focused in the areas of technologies based on storage appliances, or "pods" as created and defined by Respondent. Other areas of interest for these "pods" are geared towards various personal entertainment segments (i.e. Home Entertainment, Personal Computing, etc."
It appears from these statements that the Respondent has, at least to date, been involved in the field of hardware based technology. In the absence of any real evidence as to the Respondentís actual intended activities, the Panel considers it likely that the Respondent would continue to operate in this same broad field (if he is in fact developing a range of Smart Appliance Products as he claims).
The term "smart" is routinely used to denote some computerized functionality or some built-in microprocessor. The Panel considers that the Smart Appliance Products to which the Respondent refers are very likely to fall within the goods and services for which the Complainantís SAP trademarks are registered. These include:
h International class 9 Ė data media with machine-readable programs (included in this class); data processing programs.
h International class 16 - written material accessory to data processing programs.
h United States Class 38 (IC 09)Ė computer programs pre-recorded on magnetic tapes or magnetic plates for use in mainframes, work stations, mini computers and computers other than personal computers, and instructional manuals sold therewith for the use in the field of financial management.
In summary, the complete lack of any corroborating evidence, coupled with the Panelís difficulties with some of the assertions made by the Respondent, leads the Panel to find that the Respondent has no legitimate right or interest in the disputed domain name <sap.biz>.
Bad Faith Registration or Bad Faith Use
Under the STOP, the Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. The STOP provides that:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:
i. Circumstances indicating that you have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant 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 complainant from reflecting the mark in a corresponding domain name; 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 web site 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 web site or location or of a product or service on your web site or location."
Panels often note that the one common feature of these three circumstances is that the respondent had the complainant in mind at the time of the registration of the disputed domain name. This will usually be easier to demonstrate in relation to .biz domain name registrations, as registrants are expressly put on notice of complainantsí IP claims.
Under the STOP Procedures, the "Notice of a .biz Intellectual Property Claim" form is supposed to be sent to every potential registrant where there is a pre-filed IP Claim. The form contains the following notice to potential registrants:
"According to our records you have applied for the above listed .BIZ domain name. The purpose of this E-mail is to formally notify you that the domain name for which you applied matches one or more Intellectual Property (IP) Claims that were received by the .BIZ Registry. In other words, one or more intellectual property owners believe that they have intellectual property rights in the domain name for which you have applied. You should be aware that if you choose to continue the application process, your domain name registration may be challenged under several Internet Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm."
Thus, the respondent should have been put on notice prior to registration that a potential STOP claim existed from an intellectual property owner. However, in this case, the Respondent claimed that:
"Respondent was not made aware of any specific Complainant trademarks during the NeuLevel registration process."
Upon request from the Panel, the WIPO Center made further inquiries as to whether the Respondent in this case was actually notified of the Complainantís IP claims during the NeuLevel registration procedure. On July 3, 2002, NeuLevel confirmed:
"In the case of sap.biz Ö our records show that the IP Claims notification was sent to the Registrant of Sap.biz at firstname.lastname@example.org."
The Panel does not, therefore, accept the Respondentís contention that he was not made aware of the Complainantís trademarks during the NeuLevel registration process.
The Respondent also claims that any customers of the Complainant who might mistakenly arrive at the Respondentís website would immediately recognize the difference between the two sites and that therefore, the Respondent would not derive any commercial gain from such customers.
The Panel does not accept this contention, either. As the Respondentís site is not yet active, the Panel is unable to determine whether or not Internet users would in fact recognize the difference between the two sites. Also, by the time the User has mistakenly entered the Respondentís site, some confusion would have already ensued. It is likely that the Respondent would benefit from this additional traffic, even if the Internet user realized his or her mistake Ė there may be something of interest on the Respondentís site, even if it were not the userís intended on-line destination.
The Panel also notes the Complainantís claim that the Respondent has already registered a number of domain names, which seem to indicate that he is involved in the field of computer technology, which is closely related to the Complainantís field of business. In all the circumstances, the Panel finds that the Respondent registered the disputed to domain name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of his website.
The Panel acknowledges that it is making this finding on the basis of circumstantial evidence only.
It notes the comments of the Panel in Gene Logic Inc v Cho Kyu Bock - Claim No. FA01120001030432:
"There is here, admittedly, no objective evidence of an attempt to sell the domain name or to prevent the Complainant from using it, so that the evidence of bad faith is circumstantial and pragmatic. Given the limitations of no-hearing nature of the STOP arbitration, there is, in the judgment of this Panel, no other basis on which a case like this could be decided within the constraints of the STOP Policy. The Panel believes this is a fair result in a difficult case."
The Panel considers that similar considerations apply in this case and it finds that the disputed domain name was registered in bad faith.
For all of the foregoing reasons, the Panel decides that:
(a) The domain name registered by Respondent is identical to the trademark SAP 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 Respondent has registered the disputed domain name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the STOP Policy, the Panel requires that the registration of the domain name <sap.biz> be transferred to the Complainant.
Dated: July 3, 2002