Complainant is SAP AG of Waldorf, Germany represented, by Panitch Schwarze Belisario & Nadel LLP of United States of America.
Respondent is Harrison Barnes of Pasadena, California, United States of America, represented by Aine Ford.
The disputed domain name <sapcrossing.com> is registered with GoDaddy.com, Inc. (“Domain Name”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2009. On October 2, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On October 5, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 27, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on October 29, 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.
Respondent did not reply to Complainant's contentions by the due date of October 26, 2009. He did however make contact by email on October 31, 2009 advising that he had received the notice of the claim late and did not have time to file a timely response, and asked to be directed to the appropriate person to take care of the matter.
On November 11, 2009 the Panel directed that Respondent be given three days from that date to respond, should he choose to do so. Having been granted such an extension Respondent filed an extensive response on November 13, 2009.
On November 18, 2009 Complainant submitted to the Center a supplemental filing. The Panel has not considered the supplemental filing in its decision.
Complainant is a software company operating worldwide with its headquarters in Germany. It has been in operation since 1972 and is listed on the Frankfurt and New York stock exchanges.
Complainant is the owner of more than 600 domain names incorporating the mark SAP. It is also the owner of various trademark registrations and applications for the trademark SAP. Details of such domain names and trademarks were provided.
The Domain Name was registered on October 3, 2007.
Complainant states that it has been offering its products and services under the SAP trademark in the United States since the late 1980's. It also contends that, based on its long and continuous use of the SAP trademark and the success of the products and services provided thereunder, the SAP trademark has come to be widely and highly recognized by the public as a source of IT, software, and business solutions services in the United States and around the world. Complainant also contends that the SAP trademark is well known around the world and that this is supported by the 2008 Interbrand Survey of Best Global Brands, in which SAP ranked 31st in a list of the world's top brands.
Complainant asserts that Respondent registered the Domain Name without authority to do so and that Respondent was aware of Complainant's rights in the SAP trademark as Complainant wrote to Respondent on May 8, 2009 (with a follow up letter on June 30, 2009) outlining SAP's trademark rights. Complainant states that no response was received to either communication.
Complainant asserts that the Domain Name is confusingly similar to the SAP trademark as it fully incorporates the SAP trademark and that the addition of the additional word “crossing” does not provide sufficient differentiation from the SAP trademark.
Complainant contends that Respondent has no rights or legitimate interest in or legitimate, bona fide business purpose for the Domain Name, and that he has no legitimate rights in the SAP trademark, and has not been authorized or licensed by SAP to use the SAP trademark or name.
Complainant notes that as at September 29, 2009 Respondent's website “www.sapcrossing.com” purports to offer SAP jobs and submits that the use of the SAP trademark in the Domain Name is likely to confuse job seekers, customers, and the public into thinking this site is authorized by or affiliated with SAP.
Respondent first asserts that the Domain Name is not “identical” to the trademarked SAP name, and it is not “confusingly similar” either. Respondent argues that “crossing” is a descriptive word that does not add to the likelihood that a consumer might unwittingly mistake the Domain Name as either a product or affiliate of the SAP mark as it has no relation to a typical SAP service or product.
Respondent argues that the average Internet user would logically interpret the site as a simple job board, listing job openings that require knowledge of SAP software as a qualification for obtaining the listed jobs.
Respondent asserts that he possesses rights and legitimate interests in the Domain Name and that before receiving any notice of this dispute, he began using the Domain Name to offer a bona fide service to job seekers. He submits that the aggregation of jobs opening listings that have the requirement of fluency in use of SAP software into a single online location is a bona fide service.
Respondent further asserts that given its success, SAP is software that many employers require their employees and prospective employees to have familiarity with, and that this is evident from the success of the Domain Name.
Respondent points out that he has over 140 websites that all offer access to industry specific job openings. Details are provided. Respondent also points out that all of these sites possess the suffix “crossing” and have an industry or job type listed in front of the “crossing” suffix. Accordingly, it is submitted that the Domain Name was registered solely for its descriptive qualities and its relevance to the type of jobs listed by Respondent on the site.
Finally, Respondent notes that Complainant and Respondent have never been competitors and are not now competitors and that it is inherent in the posting of job opportunities that the skill set required for a particular job be clearly described. He concludes the submission by arguing that if a job seeker needs to find a job that requires use of SAP software, it is only logical that the jobseeker would search for domain names with SAP in them.
Respondent contends that given the lack of bad faith on Respondent's part, in addition to Respondent's contentions that the Domain Name is not confusingly similar to the trademarked material and that Respondent has explained that he has rights or legitimate interests in the Domain Name that Complainant is acting in bad faith in bringing this complaint. Accordingly, Respondent submits that this is a case of Reverse Domain Name High Jacking.
Complainant provides clear evidence to show that it is the owner of the SAP trademark, through registration and use of the trademark and that SAP is one of the world's top brands.
Complainant contends that it is made long and continuous use of the SAP trademark and that the said trademark has come to be widely recognized by the public as a source of IT related services in the United States and around the world. Complainant is also the owner of a large number of domain names incorporating the SAP trademark.
Complainant asserts that the Domain Name is confusingly similar to the SAP trademark as it fully incorporates the SAP trademark and that the word “crossing” (in which Complainant does not claim rights) does not provide sufficient differentiation from the SAP trademark.
Respondent acknowledges the reputation of the SAP trademark. However, he argues that “crossing” is a descriptive word that does not add to the likelihood that a consumer might unwittingly mistake the Domain Name as either a product or affiliate of the SAP mark as it has no relation to a typical SAP service or product and that Internet users would simply see the site that resolves to the Domain Name as a job board, listing SAP related job openings.
While this argument may be relevant to the “Rights and Legitimate Interests” issue below, it does not impact per se on assessment of identity or confusingly similarity under the first element. However, as Respondent has raised the point the Panel finds it convenient to consider the issue here. Respondent relies on his 140 websites that offer access to industry specific job openings and utilise the suffix “crossing”. Respondent points out that they all have an industry or job type listed in front of the “crossing” suffix. Accordingly, Respondent asserts that the Domain Name was registered solely for its descriptive qualities and its relevance to the type of jobs listed by Respondent on the site.
This argument has a central flaw. As far as the Panel is able to ascertain all or virtually all of the said domain names comprise descriptive terms. For example the first three domain names are:
None or very few of them contain the brands or trademarks of large international commercial entities. It is one thing to use the suffix “crossing” to identify a range of services associated with a particular activity or interest, it is quite another to use a well-known trademark in conjunction with that common descriptor.
In any event, the Domain Name contains the trademark SAP in combination with the descriptive word “crossing”. It is found that the Domain Name is confusingly similar to the SAP trademarks in which Complainant has rights regardless of the fact that Respondent has added the descriptive term “crossing”. It is therefore found that Complainant has established the requirements of paragraph 4(a)(i) of the Policy are met.
Respondent argues that he possesses rights or legitimate interests in the Domain Name and that he is simply offering a bona fide service to job seekers. Respondent suggests that given its success, SAP is software that many employers require their employees and prospective employees to have familiarity with, and that this is evident from the success of the Domain Name.
The central question however is whether Respondent is entitled to use an admittedly well-known trademark as part of a domain name to provide employment services to those familiar with or seeking employment opportunities in relation to the company SAP. There is no doubt that Respondent is entitled to use its “EmploymentCrossing” domain name to attract potential employers or employees interested in SAP software. It may also be legitimate to refer to the company SAP in the course of communications between interested parties.
In the Panel's view it is however a different matter to use the SAP trademark in the Domain Name itself, particularly in the dominant first part of the Domain Name and in doing so to acknowledge that such reference is to the company SAP. That is, to use the SAP trademark as an indication of product or service origin, in circumstances in which it is acknowledged that Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use the SAP trademark.
On this basis the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and uses the Domain Name in bad faith.
Respondent submits that because Complainant and Respondent have never been competitors and are not now competitors that there is no risk of damage to Complainant and that if a job seeker needs to find a job that requires use of SAP software, it is only logical that they would search for domain names with SAP in them. This is effectively the same argument made by Respondent throughout its Response and which has been dealt with above and rejected.
In the Panel's view SAP can only have one meaning in the context of employment opportunities in the IT field and Respondent does not argue otherwise. It may well be entirely logical, as Respondent contends, that Internet users interested in the company SAP would search for domain names with SAP in them. However, that is because SAP has a particular meaning as a specific indication of product or service origin, not as a descriptive term capable of describing IT services generally.
Accordingly, the Panel is unable to accept Respondent's arguments and concludes that the Domain Name was registered and used in bad faith, such use being quite different to the other “crossing” domain names used by Respondent. On this basis, Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
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, <sapcrossing.com> be transferred to Complainant. For obvious reasons the allegation of reverse domain name hijacking is rejected.
Dated: November 18, 2009