WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Software GJG
Case No. D2012-2126
1. The Parties
1.1 The Complainant is SAP AG of Walldorf, Germany represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
1.2 The Respondent is Software GJG of Madrid, Spain, represented internally.
2. The Domain Names and Registrar
2.1 The disputed domain names initially referred to in the Complaint herein are <hanacloud.com>, and <hanaclouds.com> (the “Initial Domain Names”). The Complainant requested that the domain names <hanacloud.net>, <hanaapp.com> and <hanaapp.info> (the “Additional Domain Names”) be added to the Complaint. In this decision the Initial Domain Names and Additional Domain Names are referred to collectively as the “Domain Names”. All the Domain Names are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification for the Initial Domain Names. On October 26, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Initial Domain Names.
3.2 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”).
3.3 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 29, 2012.
3.4 In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2012. However, the Response was filed with the Center on October 29, 2012. That day the Complainant’s lawyers sent an email to the Center that stated as follows:
“We received the below response from the Respondent today. Now that we see he has purchased additional ‘hana’ domain names this month, we would like to add them to the complaint as well. Kindly advise whether we are able to amend the present complaint to do so, or if we must wait and file a new proceeding.”
3.5 That email was copied to the Respondent who sent an email on October 29, 2012, in the following terms:
“As you can see we are not hiding information, and they want all domains. We are transparent, and we trust in justice.”
It is unclear from that email as to whether the Respondent agreed to or objected to the addition of domain names to the Complaint.
3.6 The Center responded to the Complainant by email on October 30, 2011. The email stated:
“As at this time the Complaint has been notified to the Respondent, it shall be within the sole discretion of the Panel, upon appointment, to determine whether to add the submitted domain names to this Proceeding.”
3.7 On November 5, 2012, the Complaint sought to file a supplemental filing (the “Complainant’s First Supplemental Submission”). Various points are raised in the Complainant’s First Supplemental Submission and the admissibility of that submission in these proceedings is addressed later on in this decision.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 13, 2012. 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.
3.9 Having conducted an initial review of the papers, the Panel issued a procedural order (the “Procedural Order”) on November 21, 2012, directed to both parties. It noted:
(i) that paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") noted a reluctance on the part of panels to allow an amendment to the Complaint to include additional domain names after the panel had been appointed, but that there were cases in which this had been done subject to certain procedural safeguards being followed;
(ii) that an important part of the Complainant’s case appeared to be that the Initial Domain Names had been offered for sale, but the evidence that seemed to support that contention was not directly referred to in the Complaint;
(iii) that the Complainant appeared to rely upon the fact that the domain names offered for sale by the Respondent included domain names that included the term “SAP”, but that these domain names appeared now to be registered in the name of the Complainant. What had happened in this respect was not clear; and
(iv) that a Wikipedia entry for the term “Hana” had been amended so as to expressly refer to the Complainant’s products under the “SAP HANA2 name in May 2011.
3.10 Against that background, the Procedural Order gave the Complaint an opportunity to file a further supplemental submission confirming the additional domain names it wished to form part of the Complaint and addressing the questions whether: (a) in light of paragraph 4.8 of WIPO Overview 2.0, it would be appropriate to do so; and (b) why it was that these additional domain names should be transferred to the Complainant. Further the Respondent was offered an opportunity to file a supplemental submission addressing the factual points noted in the Procedural Order. These submissions were to be provided no later than November 26, 2012. The Procedural Order also stated that should either party wish to respond to the other’s further submission, it should notify the Center of that wish, at which point the Panel would consider that request and if appropriate set a deadline for those further submissions.
3.11 On November 26, 2012, the Complainant filed a further supplemental submission (the “Complainant’s Second Supplemental Submission”), inter alia, confirming that it wanted the Additional Domain Names (i.e. <hanacloud.net>, <hanaapp.com> and <hannaapp.info>) to form part of the Complaint.
3.12 On November 26, 2012, the Respondent also filed a supplemental submission (the “Respondent’s Supplemental Submission.
3.13 Neither party stated that they wanted to file a further submission in response to the supplemental submissions filed by the other party in response to the Procedural Order.
3.14 Further to the Panel’s finding concerning the procedural issue of the addition of the domain names to this Administrative Proceeding, discussed in greater detail below, the Panel ordered the Center on December 18, 2012, to transmit by email to the Registrar a request for registrar verification for the Additional Domain Names. On December 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Additional Domain Names.
4. Factual Background
4.1 The Complainant is a company with headquarters in Germany and registered on the Frankfurt and New York Stock Exchanges. It is part of the SAP group of companies, which deal in enterprise software applications and related services and employs more than 55,000 people in 130 countries.
4.2 The SAP group has used the term “Hana” as part of the term “SAP HANA” in relation to its “in-memory computing offerings” since October 2010.
4.3 The Complainant is the owner of the following registered trade marks:
(i) Community Trade Mark No. 009873365 for the word mark SAP HANA in classes 9, 26, 35, 41 and 42 filed on April 6, 2011, and proceeding to registration on September 8, 2011;
(ii) United States registered Trade Mark No. 4182072, for the word mark SAP HANA in classes 9, 26, 35, 41 and 42 claiming a priority date of April 6, 2011, filed on July 18, 2011, and proceeding to registration on July 31, 2012;
(iii) International Trade Mark No 1092223 dated July 27, 2011, for the word mark SAP HANA in classes, 9, 16, 35, 38, 41 and 42, designating 29 countries. The mark has proceeded to registration in at least some of those countries.
4.4 The Complainant registered the domain name <experiencesaphana.com> on September 8, 2011, and the domain name <saphanacloud.com> on October 12, 2012.
4.5 The Respondent describes itself as a “company” but its exact legal status is unclear. It claims that it has developed software since 1991.
4.6 The Domain Names were registered as follows:
(i) <hanacloud.com> was registered on May 19, 2011;
(ii) <hanaclouds.com> was registered on October 12, 2012;
(iii) <hanacloud.net> was registered on October 12, 2012;
(iv) <hanaapp.com> was registered on October 12, 2012; and
(v) <hanaapp.info> was registered on October 13, 2012.
4.7 As at the date of the decision:
(i) both <hanacloud.com> and <hanaclouds.com> resolve to a Spanish language webpage under the banner GJGsoftware.com, with the words “Consultoria en technologias de” followed by the Oracle and Microsoft logos. The webpage contain the text “HIGH ACCESS NETWORK APPLICATIONS and CLOUD (H.A.N.A.) Beta version 1.34”;
(ii) <hanacloud.net> , <hanaapp.com> and <hanaapp.info> all resolve to a mixed English and Spanish language website that contains the statement “DOMAIN RESERVED FOR FUTURE DEVELOPMENT, IF YOU WANT TO WRITE A PROPOSAL”
5. Parties’ Contentions
5.1 The Complainant refers to its SAP HANA marks. It annexes a copy of a press release dated October 19, 2010, that is said to have lauded the success of the launch of products under that name. The press release has the heading: “SAP® HIGH-PERFORMANCE ANALYTIC APPLIANCE GAINS MOMENTUM WITH KEY PARTNERS AND CUSTOMERS”. This is followed by the statements “SAP Successfully Launches Customer Co-Innovation Program for SAP ® HANA Software With HP and IBM”; and “Cisco, Fujitsu and Intel to Support SAP HANA”. There are other references throughout the release to “SAP HANA Software” and “SAP HANA customers”.
5.2 At the end of the press release is a Copyright and trade mark notice. The trade mark notice reads:
“SAP, R/3. My SAP.com, xApps, xApp, SAP NetWeaver and other SAP products and services the mentioned herein as well as their respective logos are trademarks or registered trademarks of SAP AG in Germany and in several other countries all over the world.”
5.3 The Complainant further contends that as a consequence of its “continuous use of the SAP HANA® mark and the success of the products and services provided thereunder, the SAP HANA® mark has come to be recognized by the relevant public as indicating that SAP is the exclusive source of HANA business enterprise software and business solutions services in the United States and around the world.”
5.4 The Complainant claims that in registering the Domain Names the Respondent contravened the representations made under Section 2 of the Policy. It also claims that the Domain Names “fully incorporate SAP’s HANA mark” and that the additional terms “cloud” and “clouds” in the Domain Names do not differentiate then from the HANA mark.
5.5 The Complainant denies that the Respondent has a right or legitimate interest in the Domain Name. It claims that the “Respondent’s sole use of [the Domain Names] is to offer them for sale”. Further, it claims that as “HANA is not a dictionary word, and given the tremendous press surrounding SAP HANA in-memory computing and analytics it is reasonable to conclude that [the] Respondent is seeking to capitalize on the brand. It also asserts that the Respondent is also offering for sale <sapahanaone.com> and <sapnetweavercloud.com>, which are said to be “names that clearly take aim at SAP”.
5.6 It further contends that these facts are sufficient to establish bad faith “especially where, as here, [the] Respondent was aware of SAP’s prior rights”.
5.7 The basis for the Complainant’s contention that the Domain Names were registered for the purposes of sale, is not explained in the Complaint. However, the Complainant does append a print out of a webpage with the url “http://www.gigsoftware.com/dominios.apx” as at October 25, 2012. The webpage contains a list of domain names and text which suggests that these domain names are for sale. Included in that list are (adopting the same capaitalisation) <HanaCloud.com>, <HanaClouds.com>, <SapHanaOne.com> and <SapNetweaverCloud.com>.
5.8 The Response is relatively short, but the English used is in places a little difficult to follow. Nevertheless it is reasonably clear to the Panel that the Respondent contends the following:
(i) it has been developing an application since 2009 called H.A.N.A. CLOUD, which is an application to load faster the software in networks and cloud systems. In support of that contention it provides a copy of a webpage which refers to “HIGH ACCESS NETWORK APPLICATIONS and CLOUD (H.A.N.A.) Beta version 1.34” (and which looks the same as the web page currently operating from the Domain Name as described in the Factual Background section of this decision);
(ii) that the Complainant did not “register the name hanaclouds until 2012”. This appears to be a reference to the registration of the domain name <saphanacloud.com> by the Complainant on October 12, 2012;
(iii) that the Complainant tried to buy the Domain Names and refers to an email received from an “engineer” of the Complainant. The email is not exhibited.
(iv) that the term “hana” has lots of different meanings. In support of that contention it refers to a Wikipedia page for the term Hana. This records various usages of that word. Under the sub heading “In acronyms” it refers to:
“- High-Definition Audio-Video Network Alliance or HANA
- SAP HANA (High-Performance Analytic Appliance), a column-oriented, in-memory database appliance from SAP AG”
(v) that the Complainant “only had the idea to put sap hana in the cloud in 2012, launching the product in 16 October 2012”; and
(vi) that the Complainant’s trade mark SAP HANA is not similar to the term “Hana Cloud” used in the Domain Names.
C. Complainant’s Supplemental Submissions
5.9 The nature and admissibility of the Complainant’s contentions as set out in the Complainant’s First Supplemental Submission of November 5, 2012, are addressed later on in this decision.
5.10 In the Complainant’s Second Supplemental Submission of November 26, 2012, in response to the Procedural Order the Complainant asserts as follows:
“The Administrative Panel has asked for clarification concerning the names SAP AG wishes to add to the complaint. They are hanacloud.net, hanaapp.com and hanaapp.info. Complainant learned of these names from Respondent on October 28, 2012 …The names hanacloud.net and hanaapp.com were purchased on October 12, 2012 (after Respondent was engaged in sale negotiations with an SAP employee for hanacloud.com and hanaclouds.com), and hanaapp.info was purchased on October 25, 2012, the day this proceedings was filed …These names appropriate SAP’s distinctive HANA mark, and, on information and belief, were acquired to profit from the renown of SAP HANA products and services.”
5.11 In support of these contentions the Complainant annexes email correspondence from GoDaddy Auctions in relation to the <hanacloud.com> Domain Name, the earliest of which is dated October 12, 2012, with a time of 12:09 pm. It also annexes an email from the Respondent dated October 25, 2012, in which the Initial Domain Names, and Additional Domain Names, as well as three other domain names (i.e. <hanaexplorer.com>, <hanadatabase.com> and <hanadatabase.info>) which do not form part of these proceedings, are offered for sale at a price of USD 35,000. In that email the Respondent states that it is “a small company that develops software since 1991, we buy domains for developing too”. It claims the reason why it seeks a sum as large as USD 35,000 for the Domain Name is that “we have to change our portfolio and the name of our application and more things”.
D. Respondent’s Supplemental Submission
5.12 As with the Response, the Respondent’s Supplemental Submission is not easy to follow. However, the following are apparent:
(i) the Respondent agrees to the Additional Domain Names being added to the Complaint;
(ii) the Respondent denies that it has ever offered any domain name that contain the term “SAP” and contends that WhoIs history details in relation to those domain names shows that they were previously owed by “digisoft” and not by the Respondent;
(iii) it claims that it was the Complainant that initially approached it in relation to one of the Domain Names; and
(iv) it does not know how a page offering for sale the Initial Domains and two SAP related domain names appeared on a webpage operating from the Respondent’s website. The only explanation given is as follows:
“The page referred to, we've been looking, and is not in our domain, we figured it might have been a page of one of our clients. Or was it a test page, it contains domains that are not owned by us”
6. Discussion and Findings
6.1 The Complainant must make out its case in all respects as set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (Policy, paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements of the Policy in turn, but before it does so it is necessary to deal with two procedural issues in this case. Those are whether the Complainant can add the Additional Domain Names to these proceedings and whether the Panel should consider the contents of the Complainant’s First Supplemental Submission dated November 5, 2012.
A. Procedural Issues
6.3 As paragraph 4.8 of WIPO Overview 2.0 records, there has been a reluctance by some panels to allow a complainant to add domain names to a complaint after formal commencement of proceedings. In response to the Panel’s invitation to the Complainant in the Procedural Order as to why this should be allowed in this case, the Complainant explained that it only became aware of the Additional Domain Names on October 28, 2012, as a result of an email from the Respondent on that date. It did not seek to put forward any argument based upon previous panel decisions or the contents of WIPO Overview 2.0, that given these fact the additions should be allowed. However, in the Respondent’s Supplemental Submission the Respondent agreed to the inclusion of the Additional Domain Names in these proceedings. Given the parties are in agreement, the Panel sees no good reason why it should not accede to the wishes of the parties in this respect.
6.4 The issue of whether the Complainant should take notice of the Complainant’s First Supplemental submission is less straight forward. The problem in this case is that the Complaint was apparently prepared without the care and attention that it perhaps should have been. One of the most basic things that a panel would expect a complainant to do is to explain and evidence how the relevant domain names have been used since registration insofar as this is known to the complainant. This is particularly important where, as here, it is not immediately obvious from the domain name alone that the only credible reason for its registration and use was to unfairly trade off the reputation of the complainant’s marks.
6.5 The Complainant failed to do this in this case. Print outs of certain web pages were appended to the Complainant. From the url set out at the bottom of those pages, one could perhaps infer that these pages come from a website controlled by the Complainant. But the Annex in which these pages appeared was not mentioned in the Complainant, no argument based upon the url was put forward, nor was any attempt made to describe what appeared on any webpage operating from any of the Initial Domain Names either at the time of the Complaint or otherwise. The Complaint contained plenty of assertions such as the “Respondent’s sole use of these domain names is to offer them for sale”, but no further explanation or evidence was provided to found those claims.
6.6 These deficiencies were in part remedied in the Complainant’s First Supplemental Submission. In essence it asserted that the pages that had been appended to the Complaint without explanation were in fact the pages that had appeared from the Initial Domain Names at the time of the filing of the Complaint. However, no explanation was provided as to why this information could not have been provided earlier.
6.7 It is a basic requirement of the Policy that a complainant should set out its case in full in the complaint. The Rules do not provide for the filing of a reply to any response and panels are generally wary of accepting unsolicited supplemental submission (as opposed to a submission filed in response to a procedural order from the panel issued under paragraph 12 of the Rules). The position is perhaps best summarised in paragraph 4.2 of WIPO Overview 2.0, which includes the following statement:
“The party submitting its [supplemental] filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing.”
6.8 In short, there has to be a very good reason why the submissions in the supplemental submission could not have been made in the complaint or response. The improvement or correction of a poorly prepared complaint is not a good enough reason.
6.9 However, the primary reason given by the Complainant for filling the Complainant’s First Supplemental Submission is that the web page operating from the Initial Domain Names, with its reference to “High Access Network Applications and Cloud”, and which are relied upon by the Respondent in support of its case that it has derived its own “Hana” product in 2009, is said to only have appeared after the Complaint was filed. Further it seeks to rely upon the October 28, 2012, email from the Respondent offering the Domain Names for sale.
6.10 Obviously, the Complainant could not be expected to address material included in the Response that only came into existence after the Complaint had been filed. In the circumstances, the Panel is prepared to admit the Complainant’s First Supplemental Submission solely to the extent that it addressed this subsequent material.
B. Identical or Confusingly Similar
6.11 The Complainant relies upon a number of registered trade marks that take the form SAP HANA. The mark SAP clearly predates those registered marks and has been combined with the term ”HANA”, which (if the Respondent’s Wikipedia evidence is to be given any credence) is an acronym derived from the words “High-Performance Analytic Appliance”.
6.12 The Respondent contends that the various Domain Names, all of which contain the term “HANA” and do not contain the term “SAP”, are not similar to the Complainant’s marks. Why this is so is not really explained, but presumably the argument would be that it is SAP is the most distinctive part of the Complainant’s marks and that “hana” is a non-distinctive addition.
6.13 However, if that is the Respondent’s position, the Panel does not accept that line of reasoning. In Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531, a three-member panel having considered some previous UDRP decisions on this issue (and in particular the decision in Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645, the “British Meat” case) held unanimously1 that it should:
“decline to follow the reasoning in the British Meat case insofar as that case is said to be authority for the proposition that a complainant must show that a part of the mark relied upon has acquired secondary meaning in the sense that it has become exclusively associated with the complainant’s goods and service. Instead, the Panel is of the view that the dismissal of a complaint under the first heading of the Policy on the ground that only a non-distinctive element of a registered trade mark has been taken, should be restricted to those cases where it is clear that the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered.” (See Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, supra. at paragraph 6.10).
6.14 In this case, there is simply no evidence before the Panel that the term “HANA”, even if it is was derived from an acronym, is so completely devoid of distinctive character that it is incapable of distinguishing the multiple classes of goods and services in respect of which the mark is registered. Further, it forms a prominent part of the mark relied upon. In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.15 The Panel notes, for the sake of completeness that the Complainant also appears to allege that it has trade mark right in the term “HANA” alone, referring at several places in the Complaint to the “HANA mark”. However, this claim is not properly substantiated in the Complaint. No registered trade mark for “HANA” alone is relied upon. It may be that the Complainant has some form of unregistered trade mark right in this term, but no claim of unregistered trade mark rights is alleged or evidenced. No attempt is made in the Complaint to identify the extent of the Complainant’s activities under the term “HANA” in any jurisdiction where unregistered rights might have been claimed. There is an assertion that there was “tremendous press surrounding SAP HANA in–memory computing and analytics”, but where and when that press occurred is neither explained nor evidenced.
C. Rights or Legitimate Interests
6.16 The Respondent contends that it registered domain names with the term “HANA” in them because it independently devised that term, being an acronym for an application that it started developing in 2009. The Complainant claims that the real reason for the registrations was to trade off the reputation of its SAP HANA marks.
6.17 The Respondent does not claim to have any trade mark right in the term “HANA” or “Hana Cloud”, but if the Respondent’s claims are true, that might well found a legitimate interest in the Domain Names.
6.18 Paragraph 4(c) of the Policy sets out a list of circumstances, which can demonstrate rights or legitimate interests. Paragraph 4(c)(i) refers to the following:
“before any notice to you of the dispute, your use of, or demonstrable 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.”
6.19 For reasons that are described in greater detail under heading of bad faith below, the Panel does not believe that the Respondent has shown any relevant “demonstrable preparations to use”. But this is not determinative. The list in paragraph 4(c) merely identifies a non-exhaustive list that is sufficient to demonstrate rights or legitimate interests. Rights or legitimate interests can still be shown even though none of the circumstances in that list applies.
6.20 Similarly, the submissions before the Panel refer to the fact that the Respondent was prepared to sell the Domain Names to the Complainant. There are many cases in which on the particular facts before the panel an offer for sale, and who approached who, is an important factor in a panel’s assessment. But if a domain name has been legitimately registered and is legitimately held there is nothing per se illegitimate in selling or dealing in domain names.
6.21 However, ultimately for the reasons that are set out in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Domain Names were registered and continue to be held in order to unfairly capitalise upon or otherwise take advantage of a similarity with the Complainant’s marks. As such the Panel finds the Respondent has no rights or legitimate interests in the Domain Names. The Complainant has made out the requirement of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.22 The Domain Names in this case broadly fall into two categories. First, there is the Domain Name <hanacloud.com> registered on May 19, 2011. Second, there are the Domain Names <hanaclouds.com>, <hanacloud.net>, <hanaapp.com> and <hanaapp.info> all of which were registered in October 2012.
6.23 It is convenient to deal first with the Domain Names registered in October 2012. As has already been recorded in this decision there is a fundamental dispute of fact between the parties. The Respondent contends that is registered domain names with the term “HANA” in them because it independently devised that term, being an acronym for a service or product that it started developing in 2009, whilst the Complaint claims that the real reason was to trade off the reputation of its SAP HANA, marks.
6.24 Thee out of the four later Domain Names were registered on October 12, 2012 and the fourth on October 13, 2012. Although the Complainant does not put forward any analysis in the Complaint of the exact time or times on October 12, 2012, that two of the Domain Names were registered, the Panel accepts that this took place (as is alleged) after the Complainant had made contact with the Respondent. The fact that the Domain Names were registered the same day that discussions were taking place through Google, is compelling. In short, regardless of the truthfulness of the Respondent’s contention that it had been developing a product since 2009 under the “HANA” name, the timing strongly suggests that the Respondent’s motive for making these registrations was not as part of that project but was instead in response to the Complainant’s interest in relation to the <hanacloud.com> Domain Name. It is, in the Panel’s view, simply not credible that the Respondent coincidentally decided to register those Domain Names on the same day as it was in discussions with the Complainant in relation to purchase of a similar domain name when (on the Respondent’s case) this was approximately 3 years after the Respondent had started work on its own “HANA” product.
6.25 The only sensible conclusion that the Panel finds can be drawn is that these registrations were an opportunistic response to the Complainant’s approach and that the real reason why they were registered was in the hope that they could be then sold at a profit to the Complainant because of their associations with the Complainant’s SAP HANA branded business.
6.26 The Panel has reached a similar conclusion in relation to the <hanaapp.info> Domain Name registered on October 13, 2012.
6.27 Further, there is the fact that the Respondent has caused, or allowed to be operated, from three of these Domain Names a web page that contains the text in capitals “domain reserved for future development, if you want to write a proposal”. This invitation for proposals makes no sense if, as the Respondent contends these registrations were made for some pre-existing commercial purpose.
6.28 Accordingly the Panel finds that the Complainant has shown that the Domain Names <hanaclouds.com>, <hanacloud.net>, <hanaapp.com> and <hanaapp.info> were all registered and have been used in bad faith. Accordingly, so far as these Domain Names are concerned, it has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.29 That leaves the Domain Name <hanacloud.com>. This is of a somewhat different character. None of the arguments about the timing of the registrations that have been central to the Panel’s findings on bad faith in relation to the other Domain Names apply, given that <hanacloud.com> was registered approximately 17 months earlier.
6.30 Further, there is also little or no evidence that at the time of registration, that the term SAP HANA marks and business was well known in any jurisdiction, let alone that the term “HANA” alone was one that was associated with the Complainant. Although the Complainant claims that the SAP HANA product achieved extensive press coverage, there is no further explanation as to when, where and in what form that press coverage took nor any evidence other than a press release offered to back up that statement. There is an English language Wikipedia entry for the term “HANA” that refers to the Complainant’s SAP HANA product, and this entry appears to have been amended to include that reference in late May 2011. This perhaps suggests that the term was to some degree being associated by members of the English speaking public with the Complainant by that date. However, this is a point not addressed in the Complaint, and although the Respondent was given an opportunity to comment on the same in the Procedural Order (and notwithstanding the commentary at paragraph 4.5 of WIPO Overview 2.0), it is questionable whether it is appropriate for the Panel to have independently sought out this material. Further, it is inherently dangerous to rely upon what is no more than an anonymous entry on Wikipedia when considering reputation. This is no substitute for a proper explanation and evidence from the Complainant as to the degree to which the term had been used and was likely to have been known of by the Respondent as at the date that this Domain Name was registered.
6.31 However, luckily for the Complainant that is not the end of the matter. Crucially there is the evidence from the Complainant that the webpage upon which the Respondent relies in support of its contention that it had been developing its own “HANA” application since 2009, only appeared after these proceedings were commenced. The timing of the appearance of that page does not appear to be disputed by the Respondent. If the Respondent were telling the truth about it own application, and given the long gestation of this project, one would have expected it to have been able to easily provide evidence stretching back over the past three years that supported its contention. Instead it appears to the Panel that the Respondent manufactured material that it only placed on a web page operating from the Domain Name after the Complaint was submitted. Not only does the recent appearance of the material not support the Respondent’s claims but it provides evidence of the Complainant’s contention that the 2009 claim is contrived and untrue.
6.32 Further, there is the Complainant’s evidence of the content of the web page that previously appeared from that Domain Name, and in which two of the Domain Names and a number of other domain names that contained the term “SAP” were offered for sale. The Respondent states that it is unable to give any explanation for the appearance of that page. However, the page clearly appears to have been displayed from a url that includes a domain name that appears to refer to the Respondent. There is no denial that this page appeared. In the circumstances vague assertions that the page may have belonged to one of the Respondent’s clients or was some form of “test page” are not satisfactory explanations for that page’s appearance.
6.33 The Panel feels uneasy in placing any reliance on the appearance of the “SAP” domain names given that they appeared to have been registered in the name of another entity and the Complainant has already acquired these without offering any explanation in relation to that acquisition. Why these domain names appeared on a webpage that appeared on the Respondent’s website is something that cries out for an explanation from the Respondent, but the Panel is also left in the unsettling position that the Complainant has not disclosed all the facts of which it is aware so far as those domain names are concerned.
6.34 However, the Panel feels less unease so far as the offer for sale of the <hanacloud.com> domain name is concerned. The Panel accepts that the page at the Doman Name provides prima facie evidence that the Respondent was advertising, or at least permitting the advertising of this Domain Name for sale prior to the filing of the Complaint. Although, this provides some what limited evidence as to the Respondent’s motivations for registration in May 2011, it is the best evidence before the Panel on this issue.
6.35 Further, although the Complainant’s evidence as to the extent of the reputation of its products in May 2011 is lacking, the fact remains that there is no obvious generic or descriptive meaning of the term “Hana” unconnected with the Complainant’s services that would explain the Respondent’s registration. The Respondent points to a Wikipedia entry that shows various meanings of the term “Hana” unconnected with the Complainant (for example, it is apparently the name of towns to be found in Hawaii, Norway and Ehtiopia), but in doing so the Respondent falls into the fallacy that is all too frequently found in responses. The fact that a term in a domain name might have a generic or descriptive meaning does not mean that the domain name cannot have been registered in bad faith so as take advantage of a complainant’s mark. For a respondent to point to numerous generic or descriptive meanings for a term is of little value unless the respondent contends that it was to take advantage of one of those meaning that a domain name was registered.
6.36 Here, the Respondent is a business engaged in computing, the name “Hana” was clearly registered for some computing related purpose and the registration was made after the Complainant had released a computing-relating product that had been given a name that used this term. If the Respondent’s claim of independent derivation of the term creation of the term is rejected, then the only reasonable explanation that remains is that it is registered with the Complainant’s products and mark in mind.
6.37 Finally, there is the Respondent’s registration and offer for sale of the other Domain Names. As this Panel has already recorded, the timing of the registration of the <hanacloud.com> Domain Name is so different from the other Domain Names that they need to be considered separately. The fact that the other Domain Names were opportunistically registered following an approach from the Complainant does not necessarily mean that the <hanacloud.com> Domain Name was registered in bad faith. Nevertheless, the other registrations do show that the Respondent is an entity that is prepared to register domain names with a view to selling them to a trade mark holder whose trade mark is reflected in whole or in part in the domain names. The Panel concludes that the Respondent’s actions in 2012, are something that can be weighed in the balance when considering the motives of the Respondent so far as the registration of <hanacloud.com> is concerned.
6.38 In the circumstances, on the balance of probabilities the Panel also finds that the Domain Name <hanacloud.com> was registered and subsequently held with the intention in some manner to unfairly trade off the reputation of the Complainant’s SAP HANA marks. As such this Domain Name was registered and subsequently held in bad faith and the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <hanacloud.com>, <hanaclouds.com>, <hanacloud.net>, <hanaapp.com> and <hanaapp.info> be transferred to the Complainant.
Matthew S. Harris
Date: December 18, 2012
1 The decision itself was a majority decision, but the dissenting panellist did not dissent from the legal analysis set out in that case.