WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Hugo Hector Ferreyra
Case No. D2011-0073
1. The Parties
Complainant is SAP AG of Walldorf, Germany, represented by Hogan Lovells International LLP, Germany.
Respondent is Hugo Hector Ferreyra of Cordoba, Argentina.
2. The Domain Name and Registrar
The disputed domain name <sapbanking.com> is registered with Directi Internet Solutions Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 13, 2011, the Center transmitted by email to Directi Internet Solutions Pvt Lt d d/b/a PublicDomainRegistry.com a request for registrar verification n in connection with the disputed domain name. On January 14, 2011, Directi Internet Solutions Pvt Ltd d/b/a PublicDomainRegistry.com 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 January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. The Response was filed with the Center on February 4, 2011.
The Center appointed Mary Padbury as the sole panelist in this matter on February 22, 2011. 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.
On February 15, 2011, the Complainant filed a request for permission to file a supplemental submission.
The Panel decided to permit the supplemental filing in accordance with paragraph 10(c) of the Rules on the basis that Respondent be given a corresponding period to respond and the decision date be extended. The Respondent did not make a supplemental filing. The decision date was extended to March 15, 2011.
4. Factual Background
Complainant is one of the largest software companies worldwide and is acknowledged as a market leader for inter-enterprise software solutions. Complainant was founded in 1972 and its software is now deployed at more than 47,800 business installations in more than 120 countries. 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".
Complainant has registered a large number of national, European Community and international trademarks SAP and SAP SOLUTION. These trademarks are registered, inter alia, for goods and services in classes 9, 16, 41 and 42. Details of Complainant's trademark registrations are at Annex D to the Complaint. The earliest registration dates from 1999.
Complainant has registered and uses, inter alia, Internet domain names <sap.com>, <sap.net> and <sap.de>. Print outs of the respective entries for these domain names are at Annex E to the Complaint.
Complainant is widely known by the name "SAP".
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's trademark SAP on the basis that the domain name consists of Complainant's mark and the term "banking". Complainant submits that term "SAP" is the dominant and distinctive component of the disputed domain name. Complainant further submits that the addition of a generic term such as "banking" does not prevent the disputed domain name from being confusingly similar to Complainant's trademarks on the basis that the public would interpret the term "banking" as a pure description of the domain name's content and will expect information on (SAP) banking software under the domain name. As Complainant also offers software solutions for the banking sector, Complainant submits that the addition increases the confusing similarity between the disputed domain name and the trademarks of the Complainant.
Respondent registered the disputed domain name on May 24, 2008 and has been using the disputed domain name for a forum for users of SAP banking software. Complainant contends that the forum has not been used extensively with the last post dating from February 19, 2009. Currently, an error message is displayed when entering the domain name into the browser.
Complainant submits that none of the circumstances listed under paragraph 4(c) of the Policy apply to demonstrate rights or legitimate interests. Respondent has not used the disputed domain name for a bona fide offering of goods or services. There is no indication that Respondent was commonly known before by the domain name or by the designation "SAP" and/or "SAP BANKING". Respondent is not and never has been a representative or licensee of Complainant and is not otherwise authorized to use Complainant's SAP mark.
Complainant contends that Respondent is not making a legitimate non-commercial or fair use of the domain name. A non-commercial forum website with regard to Sap Banking software should not entail use of Complainant's trademark. This enables Respondent to get a free ride and benefit from goodwill created by Complainant in its trademarks. Furthermore, Complainant contends that as the forum has never been used extensively, it is likely that the disputed domain name was primarily registered for the purpose of selling it to Complainant and that the forum that has been created under the disputed domain name is a bogus forum. Complainant contends that the disputed domain name has not been used in a genuine and effective manner such that a legitimate noncommercial or fair use of the disputed domain name has been established.
Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant contends that registration of Complainant's trademark as a domain name is evidence of bad faith. Complainant also contends that the disputed domain name has been used in bad faith by the Respondent in that the disputed domain name has been registered primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to Complainant in excess of the documented out-of-pocket costs of Respondent directly related to the disputed domain name. Complainant first learnt of Respondent's registration when the Respondent offered the disputed domain name for sale for a price of EUR 200,000 in his email of August 11, 2010. In this email, Respondent advertised the domain name with the words "The SAP projects involving millions of euros in consultancy, this domain channeled thousand of potential business to your company, strengthen their brand, communications strategy and services related to SAP solutions." and stated that "sale of the domain will be done to who made the highest bid". This email is Annex G to the Complaint. Following receipt of this email, Complainant sent a cease and desist letter to Respondent. This is Annex H to the Complaint. With his letter of September 14, 2010, Respondent asked Complainant to make a suggestion how an amicable agreement could be reached. A copy of this letter is Annex I to the Complaint. Complainant authorized its representatives to offer an amount of EUR 500 as compensation for the registration and administration cost of the disputed domain name if Respondent agreed to transfer the disputed domain name to Complainant. The letter containing this offer of September 23, 2010 is Annex J to the Complaint. When this letter did not receive a reaction, a further letter was sent by Complainant. With his email of December 1, 2010, Respondent informed Complainant's representatives that he would only be ready to transfer domain name to Complainant for a minimum price of EUR 7,800 which he considered "reasonable compensation". This email is Annex L to the Complaint. Complainant contends that this exceeds Respondent's out-of-pocket costs including costs for registration and maintaining the domain name and demonstrates registration in bad faith.
In relation to Respondent's reference to other domain names which feature Complainant's trademark SAP, Complainant contends that this is not relevant in that a registration in bad faith is not justified by similar registrations by third parties and that it does not have any details about the other domain names mentioned in the Response. Complainant contests Respondent's contention that it has received "hundreds of contacts over the years".
Respondent contends that the disputed domain name was registered for a forum or website offering information on real-life experiences about data migration to SAP Banking. Respondent contends that the idea was only to build a free-access space containing information for consultants and refers to a number of websites that exist that include the word "SAP". Respondent contends that he did not misuse Complainant's trademarks. Respondent contends that Complainant's Complaint is designed to secure ownership of the disputed domain name.
6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Panel finds that the domain name <sapbanking.com> is confusingly similar to the trade mark SAP. The disputed domain name incorporates Complainant's trademark in its entirety and this is the dominant and distinctive component of the domain name. The word "banking" is descriptive and does not remove the confusing similarity between the disputed domain name and Complainant’s trademark. See Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2009-0896.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate this as follows:
(i) before notice to the Respondent of the dispute, the Respondent's use of, or demonstrative preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the Respondent, making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of Complainant that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. The evidence that Respondent is making a noncommercial use of the disputed domain name in connection with a forum to discuss SAP software in a banking context needs to be considered against evidence that an amount of EUR 200,000 was requested for the domain name and a lack of evidence about the extent of the forum. On balance, the Panel is not persuaded that there has been a legitimate noncommercial or fair use of the domain name without intent for commercial gain.
C. Registered and Used in Bad Faith
The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that the respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor for valuable consideration in excess of the respondent's out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in the pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on the respondent's website or location.
The Panel is satisfied that it is likely that Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name. This is covered by paragraph 4(b)(i) of the Policy. As such, the Panel finds evidence of registration and use 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, <sapbanking.com> be transferred to the Complainant.
Dated: March 21, 2011