The Complainant is SAP AG of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is SAP User List of Covington, Washington, United States of America, represented by Stephen Nilsen, United States of America.
The disputed domain name <sapuserlist.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2009. On September 30, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 30, 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 October 5, 2009 providing the registrant and contact information disclosed by the Registrar, notifying the Complainant that the Complaint was administratively deficient, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 5, 2009. The Center verified that the Complaint together with 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 October 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009, which was extended to October 30, 2009 by agreement of the parties. The Response was filed with the Center on October 26, 2009.
The Center appointed Michael J. Spence as the sole panelist in this matter on October 30, 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 is an international supplier of business software based in Germany. It has extensive trade mark registrations including the mark SAP. The Respondent is the supplier of lists of users of “SAP” software to other companies seeking to target the users as potential clients. Both the Complainant and the Respondent are targeting their services at highly sophisticated consumers.
The Complainant claims that the disputed domain name contains the whole of the SAP mark and that the addition of the descriptive term “user list” does not distinguish the disputed domain name so that it is no longer confusingly similar to the Complainant's registered marks. The Complainant claims that the Respondent has no rights or legitimate interests in the mark, and that “[e]ven if [the] Respondent needed to refer to the Company SAP, the collateral trademark use necessary does not confer the right to use SAP's trademark as a domain name.” Finally, the Complainant claims that, given the strength of the SAP family of marks, the Respondent's knowing use of the mark constituted bad faith.
The Respondent claims that the likelihood of confusion arising from the use of the SAP mark as part of the disputed domain name is very small, especially given the nature of the target markets of the Complainant and the Respondent. Moreover, it claims that the addition of the term “user list” clearly distinguishes the services of the Complainant and the Respondent, and that cases in which such additional words have been held not to distinguish a mark from a disputed domain name involve additional language descriptive of activities commonly associated with the Complainant (such as “agent” and “ticket” for an airline). The Respondent also claims that the fact that the two businesses are not in competition, and “have wholly unrelated products”, makes confusion unlikely. It claims that the fact that it is a legitimate business operating in a different market sector means that it has a right or legitimate interest in the disputed domain name. Finally, the Respondent asserts that the Complainant has not provided “even a scintilla of evidence that would indicate that [the] Respondent is using its domain name in bad faith”.
While it is true that the target market of both the Complainant and the Respondent consists of sophisticated business users, the disputed domain name contains a registered trade mark and ordinary dictionary words. Moreover, the Complainant has a pattern of registered trade marks consisting of the mark SAP and descriptive suffixes. These facts, together with the fame of the Complainant's mark, make it plausible that the disputed domain name would cause confusion with the Complainant's mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the UDRP Policy.
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case, the Respondent has been operating its business under the disputed domain name for three years without complaint. The disputed domain name contains but is not comprised solely of the letters which make up the Complainant's SAP mark – it adds to those letters the term “user list”.
Moreover, it is arguably necessary for the Respondent to use the SAP name as part of its domain name to direct consumers to the nature of the products that it is offering for sale; products related to, but quite distinct from, those of the Complainant, with very different target markets. The Complainant argues that “[e]ven if [the] Respondent needed to refer to the Company SAP, the collateral trademark use necessary does not confer the right to use SAP's trademark as a domain name”. In so doing, it fails to deal with the body of panel decisions dealing with the situation of collateral trade mark use involving unauthorized resellers. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarises those decisions in the following terms:
A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
If an unauthorized reseller of a complainant's products into the same market can have a legitimate interest in the use of a disputed domain name containing a trade mark relating to those products, it must also be possible for the Respondent in this case to have a legitimate interest in the disputed domain name. In this case the Complainant's SAP mark is being plausibly used in the disputed domain name to refer to the nature of the Respondent's product, the intention is apparently to sell into quite a distinct market from that of the Complainant, and the Respondent's use of the disputed domain name in this Panel's view meets the four-point test outlined in the unauthorized reseller decisions (see e.g. National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524).
The Panel therefore finds that the Complainant has failed in this case to establish the second element of paragraph 4(a) of the UDRP Policy.
Given the Panel's finding in relation to the second element of paragraph 4(a) of the UDRP Policy, it is unnecessary that it should make any finding in relation to the third element. However, were it to do so, it would be inclined to agree with the Respondent that the Complainant has not provided “evidence that would indicate that [the] Respondent is using its domain name in bad faith”.
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Dated: November 8, 2009