The Complainant is SAP AG of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is Domains by Proxy, Inc. / Sales of Morristown, New Jersey, United States of America.
The disputed Domain Name <sap-email.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 27, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 27, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 2, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 5, 2009. The Center verified that the Complaint and the amended 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 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2009.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 6, 2009. 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 SAP AG began operations in 1972 and is known worldwide as a leading business software company. SAP AG is headquartered in Germany. SAP serves thousands of customers all over the world.
SAP AG is listed on several stock exchanges, including the Frankfurt Stock Exchange and the New York Stock Exchange under the ticker symbol “SAP”.
SAP has been offering its products and services under the SAP trademark in the United States since 1988, long prior to the February 20, 2009 registration date of the Domain Name.
SAP operates websites resolving from the domain names <sap.de> (Germany) and <sap.com> (United States), among others. In particular, the domain name <sap.com> has been registered as of January 18, 1995. That website links viewers to SAP's United States website.
SAP owns numerous valid and subsisting trademark registration and applications for its SAP trademarks.
SAP produced true and accurate copies of the registration certificates for the United States trademark registrations identified in the Complaint.
SAP's trademarks are well known.
On February 20, 2009 the Respondent registered the Domain Name. The Domain Name resolves to a “Google Apps”website.
The Complainant developed only very brief arguments and was very succinct in the development of such arguments. It argues the following:
- the disputed Domain Name is identical to a trademark or service trademark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain name; and
- the disputed Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
The burden that the Complainant must meet under paragraph 4(a) of the Policy is to prove:
(i) that the Disputed Domain name is identical or confusingly similar to a trademark or service trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and
(iii) that the disputed Domain Name has been registered and is being used in bad faith.
The Panel disagrees with Complainant where it argues that the Domain Name is identical to SAP's trademark.
However, the Panel is of the opinion that the Domain Name is confusingly similar to the Complainant's SAP trademark.
The SAP trademark is incorporated in its entirety in the Domain Name.
The fact that the only other word Respondent used in the Domain Name is “email” preceded by a hyphen and positioned after the SAP trademark, makes the Domain Name appear to be a legitimate source of SAP email, which it is not.
Therefore, the confusing similarity of the SAP trademark with the Domain Name at issue is not in reasonable dispute.
As it is often impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in a disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of a respondent. The burden of proof will then shift to the respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel is satisfied that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed Domain Name.
The Respondent is not commonly known under the name which is used for the disputed Domain Name.
Furthermore, the Respondent has not made “significant” use of the disputed Domain Name in a corresponding website. The Panel considers this to be another indication that the Respondent has no rights or legitimate interest interests in respect of the disputed domain name (see Mediacorp Radio Singapore Pte Ltd v. HL Lim aka Hwee Lee Lim, WIPO Case No. D2004-0291).
Moreover, the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark.
The Respondent did not file a response and, therefore, failed to refute the Complainant's prima facie showing on this matter.
According to Paragraph 4 (a)(iii) of the Policy it is required that the Complainant show that the Respondent registered and used the disputed Domain Name in bad faith.
At the time of the registration of the Domain Name, the Respondent must have been fully aware of SAP's prior rights in the SAP trademark.
On February 20, 2009, several emails were sent from [Mr.carter]@sap-email.com to SAP's customers. These emails use the registered SAP logo, and falsely state that Mr. Carter is employed by SAP. The emails invite the recipient to contact Mr. Carter regarding product and service offerings.
SAP has received inquiries from companies that received the fraudulent emails, and who mistakenly believed they originated from SAP. The emails were not authorized by SAP.
The express statements made in the emails, the use of the SAP name, and the use of the SAP logo demonstrate that the Respondent was aware of SAP's business and its rights in the SAP trademark.
The Respondent has never been authorized by or affiliated with SAP in any way and is not authorized or licensed by SAP to provide any services or goods under the SAP trademark or logo.
The Respondent's actions have prevented SAP from registering the Domain Name in its own name, thereby depriving SAP of a valuable marketing tool for its products and services.
Therefore, it is the Panel's opinion that the Respondent registered and used the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sap-email.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Dated: April 20, 2009