WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Identity Secured
Case No. DCO2011-0042
1. The Parties
The Complainant is SAP AG of Walldorf, Germany, represented by Hogan Lovells International LLP, Germany.
The Respondent is Identity Secured, of Nottingham, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sapbydesign.co> is registered with Tucows Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 14, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 14, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.
The Center appointed Edoardo Fano as the sole panelist in this matter on August 18, 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 august 1 and 18, 2011, the Center received three email communications from a third party to these proceedings regarding the status of this dispute. On August 12, 18 and 22, 2011, the Center invited the third party in question to identify itself, to explain its relationship with the Respondent and to submit material evidence in support to its alleged relationship with the Respondent. No material evidence was provided by the third party and the Panel has decided to proceed to render its decision solely on the basis of the statements and documents submitted by the parties in this case.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is SAP AG, based in Germany, a world-famous company in the software field, created in 1972 and operating in more than 120 countries.
The Complainant is the owner of numerous trademark registrations for SAP in many countries, including:
- German Trademark Registration SAP, No. 39946355, registered in 1999;
- International Trademark Registration SAP, No. 00726890, registered in 1999.
- Community Trademark Registration SAP, No. 01271402, registered in 2000;
The Complainant is also the owner of the Community Trademark Registration for SAP BUSINESS BYDESIGN, No. 6165666, registered in 2008 and of two trademark registrations for BYDESIGN, namely:
- International Trademark Registration for BYDESIGN, No. 00948363, registered in 2007.
- Community Trademark Registration for BYDESIGN, No. 06060636, registered in 2008;
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Complainant also owns several domain names, among which <sap.com> and <sapbydesign.com>.
The Respondent’s domain name <sapbydesign.co> was registered on December 15, 2010. It presently points to a webpage displaying the wording “This page has been reserved for future use”.
On June 3, 2011 the Complainant’s lawyers sent a cease and desist letter to the Respondent, without receiving any answer.
5. Parties’ Contentions
The Complainant states that the disputed domain name <sapbydesign.co> is confusingly similar to its trademarks SAP, SAP BUSINESS BYDESIGN and BYDESIGN, being a combination of them and therefore increasing the likelihood of confusion among internet users.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and/or use the disputed domain name and it is not commonly known by “sapbydesign”.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
In fact, the Complainant’s trademark SAP enjoys worldwide fame and the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark rights, especially because it was combined with another trademark of the Complainant, namely BYDESIGN.
Moreover, although the Respondent is not technically using the disputed domain name for commercial or other purposes, this passive use can be considered as use in bad faith according to many previous decisions applying the Policy.
Further proof of the Respondent’s bad faith is the fact that the Complainant cease and desist letter remained unanswered.
The Respondent did not reply to the Complainant’s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by a complainant may be taken as true, and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn. (See also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark SAP and BY DESIGN both by registration and acquired reputation and that the disputed domain name <sapbydesign.co> is confusingly similar to said trademark, especially but not only, because it consists of the combination of the two trademarks of the Complainant: the widely known trademark SAP and the more recent trademark BYDESIGN.
Even if the wording “by design” would be considered as generic, and the fact that both an International and a Community trademark registration for BYDESIGN have been granted should suggest the contrary, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713).
It is also well accepted that a top-level domain, in this case, the country code “.co”, may be ignored when assessing identity of a trademark and domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired 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 of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.”
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark SAP is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name <sapbydesign.co> was confusingly similar to a trademark of a third party.
The addition of BYDESIGN, that consists of another more recent trademark of the Complainant, further suggests that the Respondent must have been aware of the relationship between the trademarks SAP and BYDESIGN and therefore of the existence of both of them.
As regards the use in bad faith of the disputed domain name, and given the circumstances of this case, the Panel considers valid the Complainant’s allegation that bad faith exists even if the Respondent has done nothing but register the disputed domain (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sapbydesign.co> be transferred to the Complainant.
Dated: September 1, 2011