The Complaint is SAP AG of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is Stephen M Meli (managing director of “SAP Resources Group LLC”) of Manchester, New Hampshire and Sunnyvale, California, United States (“U.S.”).
The disputed domain name <sapresourcesgroup.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2010. On May 12, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On May 17, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 19, 2010. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on May 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2010.
The Center appointed Clive Duncan Thorne, Andrea Jaeger-Lenz and Michelle Brownlee as panelists in this matter on June 29, 2010. The Panel finds that it was properly constituted. Each member of 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.
In the absence of a Response, the facts are set out in the Complaint.
According to the Complainant, SAP AG, began operations in 1972 and is now the worlds largest business software company. SAP AG is headquartered in Germany and employs over 51,000 people in more than 50 countries. It serves more than 82,000 customers in more than 120 countries. Each day more than 12 million users work with SAP AG and its products and services. SAP AG is listed on several exchanges, including the Frankfurt Stock Exchange and the New York Stock Exchange under the ticker symbol “SAP”. SAP America is the U.S. subsidiary of SAP AG which together are collectively referred to in this decision as “SAP”.
SAP has been offering its products and services under the SAP mark in the United States since the late 1980s, long prior to the registration date of the disputed domain name.
SAP has been and continues to be an industry leader in providing businesses with innovative and collaborative business solutions and software. The industries served by the SAP products and services include the following: aerospace and defence, automative, banking, chemicals, consumer products, defence and security, engineering, construction, operations, healthcare, high tech, higher education and research, industrial machinery and components, insurance, life sciences, logistics, service providers, media, mill products, mining, oil and gas, postal services, professional services, public sector, railways, retail, telecommunications, utilities and wholesale distribution.
Enterprise Resource Planning (“ERP”) and IT Management comprise some of the core services offered by SAP under its SAP mark in the U.S. and elsewhere. In connection therewith SAP offers technology, business/software solutions and support services to help protect its clients' IT Infrastructure. Such services include annual IT assessments and the provision of a specialized individual support adviser which work together to provide SAP's business clients the tools to effectively and securely execute their business strategies, reduce operation costs, mitigate risks and maximize returns on investment.
SAP owns over 600 domain names incorporating the mark SAP. A list of the domain names is annexed as Annex C to the Complaint. SAP operates websites resolving from the domain names <sap.de> in Germany and <sap.com> in the United States among others. In particular the domain name <sap.com> has been registered as of January 18, 1995 and the website links viewers to SAP's U.S. website.
SAP owns numerous subsisting trade mark registrations and applications for its SAP marks. These are listed in Annex E and Annex F to the Complaint. These include in particular the United States trade mark registrations: SAP – registration number 2538716 filed on February 6, 1989; SAP and design – registration number 2905468 filed August 1, 2001; SAP and design – registration number 2688099 filed August 1, 2001; SAP and design – registration number 2688100 filed August 1, 2001; SAP NETWEAVER – registration number 3022393 filed February 6, 2003; SAP NETWEAVER – registration number 3141056 filed February 6, 2003.
According to the Complainant its long continuous use of the SAP mark and the success of the products and services provided under that mark means that the mark has come to be recognized by the public as indicating SAP as the exclusive source of the IT, software and business solutions services in the United States and around the world. It submits that the SAP mark is well-known around the world.
On May 10, 2006, the Respondent registered the disputed domain name <sapresourcesgroup.com>.
The Complainant wrote to the Respondent on January 26, 2010 a letter which is exhibited as Annex H to the Complaint. The letter came from the Complainant's U.S. lawyers, Panitch Schwarze Belisario & Nadel LLP and requested that the Respondent cease all use of the SAP name and transfer the disputed domain name to the Complainant. An email response to that letter was received on February 4, 2010 pointing out that the Respondent was a relatively small firm providing consultancy services to small businesses. Its consumers and clients were generally small to mid market companies. Its activities were focused primarily on New England on a very select group of clients.
The Respondent pointed out that there were a number of other companies that used “SAP” in their names or logos within the business services field. The Respondent asserted that there was room for “co-existence in the field” and wished to discuss ways in which the respective brands might co-exist in some form. The email concluded with a request that the Complainant's solicitors contact Mr. Stephen Meli, Managing Director of SAP Resources Group, at its convenience.
The Panel has seen no further correspondence between the parties.
In the absence of a response, the Panel finds the above facts to be true.
(i) The Complainant owns trade marks identical or confusingly similar to a trade mark or service mark to which the Complainant has rights
(ii) The disputed domain name fully incorporates the SAP mark. The descriptive wording “resources group” does not provide sufficient differentiation.
(iii) Accordingly the confusing similarity between SAPs marks and the disputed domain name is not in reasonable dispute.
(iv) The Respondent has no right or legitimate interest in the disputed domain name.
(v) The Respondent has no trade mark rights or any other rights in the mark SAP nor has he been licensed to use the mark.
(vi) The disputed domain name was registered and is being used in bad faith
(vii) The Complainant relies upon the argument that the disputed domain name fully incorporates the SAP mark and was registered without any authority or permission from the Complainant. The Complainant relies upon the fact that the Respondent was aware of the Complainant's rights.
The Respondent has not replied to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
The Panel is satisfied that the Complainant has valid and subsisting trade mark registrations for the mark SAP.
The Complainant submits that the addition of the additional descriptive wording “resources group” in the disputed domain name does not provide sufficient differentiation from the SAP mark to avoid a finding that the disputed domain name is confusingly similar to the Complainant's trade mark SAP.
The Panel's view is that the addition of the descriptive term “resources group” to the mark SAP means that it is confusingly similar to the domain name in dispute.
The Panel therefore finds for the Complainant with regard to this element.
According to paragraph 4(c) of the UDRP the Complainant is required to show that the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name. A respondent may demonstrate rights or legitimate interests in a domain name if either
(i) before any notice to the respondent of the dispute, he makes use of, or demonstrable preparations to use, the domain name; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Complainant submits that there is no evidence showing that the Respondent has any legitimate interest or legitimate bona fide business purpose for using the disputed domain name. He claims that he has no trade mark rights or any other legitimate rights in the mark SAP nor has he been licensed to use the mark SAP or the name SAP and that there is no evidence that the Respondent is a reseller of the Complainant's products and services.
In doing so, the Complainant relies upon excerpts from the Respondent's website annexed as Annex J to the Complaint and has submitted correspondence with the Respondent as Annexes H and I to the Complaint. These Annexes demonstrate that the Respondent is the managing director of an entity called SAP Resources Group LLC, which company name is identical to the disputed domain name, that the services that SAP Resources Group LLC offers and apparently has been offering for some time are consulting services that are at least partly related to SAP software and that the Respondent is making use of the disputed domain name for the purpose of a company website of SAP Resources Group LLC. The Respondent, on this website, is making an express disclaimer that SAP Resources Group LLC is not affiliated to SAP AG or any SAP Company.
Even though the Respondent has failed to file a proper Response to the Complaint, and even though in his pre-Complaint response according to Annex I to the Complaint he is not expressly invoking such legitimate rights or interests, the Panel has to take the facts evident from the above mentioned Annexes supplied by the Complainant itself as undisputed and must take these into consideration in rendering its decision. In the light of the above facts it is not implausible that the Respondent, as the business SAP Resources Group LLC, may be commonly known by the disputed domain name and/or that he may be making fair use of the mark as a designation of the content or target of his services without intention to misleadingly divert consumers or to tarnish the trademark at issue. Thus, the Panel is not entirely convinced that the Respondent lacks rights or legitimate interests in the disputed domain name. However, the Panel does not have to take a final decision on this element as it finds that in any event the element of evidence of bad faith under paragraph 6.C to the Decision is absent, as will be explained below.
The Panel finds that the Complainant has not on balance met its burden in proving bad faith on the evidence available in the present record. The Respondent is seemingly using the disputed domain name to advertise the services provided by his company, which is seemingly called “SAP Resources Group,” and which provides consulting services relating to the Complainant's SAP software. The Respondent's website provides several clues to visitors that the web site owner is not directly or presently affiliated with the Complainant. It mentions that the company was founded by former employees of the Complainant, and also includes the following disclaimer at the bottom of the home page: “SAP Resources Group LLC is not affiliated with SAP AG or any SAP company”.
Although the Complainant might be able to succeed in a trade mark infringement claim against the Respondent, this is not the type of case that the UDRP was designed to address. The UDRP was designed to address a narrow class of cases in which the registration and use of a domain name were made in bad faith – primarily cases of cybersquatting. See, e.g., Human Resource Certification Institute v. Tridibesh Satpathy, Edusys, WIPO Case No. 2010-0291. Although the Respondent's failure to submit a Response does not assist its case, it is still incumbent on Complainant to prove each element of its own case in view of the evidence of record, including the apparent actual use being made of the disputed domain name by the Respondent. In this case, where the Respondent is apparently using the disputed domain name <sapresourcesgroup.com> in connection with a website that advertises his consulting services offered under his company name “SAP Resources Group LLC” and has disclaimed affiliation with the Complainant, it seems more likely than not that he was acting on the belief that he could use the disputed domain name in connection with his business activities. The Respondent's motivations are further evidenced by his correspondence with the Complainant's attorneys in which he noted differences in the parties' channels of trade and a number of other users of SAP, and proposed an amicable coexistence. On the one hand, it does need to be acknowledged that, in general, ignorance of the law and the Policy in particular is no defence. On the other, there may also be particular circumstances in which the respondent's reasonable belief may suffice to exclude the respondent from coming within the concept of bad faith as contained within the Policy. This Panel believes this is one such case. As a previous panel noted, “[w]hether or not the [r]espondent's use of the [d]omain [n]ame constitutes trade mark/service mark infringement is outside the scope of this proceeding. For the purposes of the Policy, if the [r]espondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the [d]omain [n]ame was in bad faith.” Id. Therefore, the Panel does not find bad faith registration and use under the Policy on the record presented in this particular case.
For all the foregoing reasons, the Complaint is denied.
Clive Duncan Thorne
Dated: July 27, 2010