WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG. v. Webmedia Ltd.
Case No. D2011-2086
1. The Parties
The Complainant is SAP AG. of Walldorf, Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is Webmedia Ltd. of Pennsylvania, United States of America, represented by Charles Carreon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sapcorp.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2011. On November 29, 2011, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On November 29, 2011, Network Solutions, LLC 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 December 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2011.
On December 20, 2011, Mr. Carreon (on behalf of Mr. Sanjiv Lall and Kleinstar Limited) contacted the Center and the Complainant indicating that his clients should be the Respondent and seeking an extension of time in which to file the response. After a further exchange of communications between the Center and the parties, the Center granted an extension of time for the filing of the Response to January 11, 2012.
The Response was filed with the Center on January 11, 2012.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 20, 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.
4. Factual Background
The Complainant commenced business in 1972. It provides computer software and consulting services. It is headquartered in Germany and employs over 53,000 people in more than 50 countries. It has more than 109,000 customers in 120 countries and claims that more than 12 million users use its software each day. It commenced operations in the USA by the late 1980s.
It is listed on the Frankfurt and New York Stock Exchanges under the ticker code SAP.
The Complainant has many trademark registrations throughout the world. They include:
(a) SAP, German Trademark No. 557756, for a range of goods and services in International Classes 9, 16 and 42, registered on February 13, 1990;
(b) SAP in a figurative or device element, German Trademark No. 638468, for a range of goods and services in International Classes 9, 16 and 42 registered on June 2, 1995;
(c) SAP, German Trademark No. 638470, for a range of goods and services in International Classes 9, 16 and 42, registered on June 2, 1995; and
(d) SAP in a figurative or device element, US Trademark No. 2,538,716, for a range of goods and services in International Classes 9, 41 and 42, registered on February 19, 2002.
The Complaint includes evidence of many other registrations, all of which appear to be later in date to US Trademark No. 2,538,716.
The disputed domain name was registered in March 1998. It resolves to a website at “kleinstar.co.nz” which declares “We provide SAP consulting”.
The disputed domain name was and is registered in the name of Webmedia Ltd. That company apparently ceased to exist in about October 2001. When operating, Webmedia Ltd provided website design services. According to the declaration of Mr. Glenn Harding filed in this proceeding, he was the managing director of that company and arranged to register the disputed domain name on behalf of one Mr. Sanjiv Lall.
Mr. Lall is the administrative contact for the disputed domain name. In his declaration, Mr. Lall states that he selected the disputed domain name and instructed Mr. Harding’s company to register it in connection with his (Mr. Lall’s) business. Mr. Lall states that he has control over the passwords and the like for the administration of the disputed domain name.
In 1994, Mr. Lall was providing consultancy services for SAP software in New Zealand. In his declaration, he states that this business was conducted under the assumed name “Sanjiv and Partners”. Mr. Lall also states that in August 1994 Kleinstar Holdings Limited (Kleinstar) was incorporated in New Zealand to provide consultancy services for SAP software, which it has continued to do until this day. Amongst other things, Kleinstar registered the domain name <kleinstar.co.nz>, and apparently promotes its services from the website which that domain name resolves to. Mr. Lall is the current administrative contact for that domain name.
In November 1997, he incorporated a company under the name SAPCORP Consulting Inc. in California to provide consultancy services relating to SAP software there. He also incorporated another company under the same name in New Zealand in February 1998. Shortly after this, he declares he gave the instructions for the registration of the disputed domain name already mentioned.
In April 1999, the Complainant challenged Mr. Lall over his company names and the disputed domain name. Shortly after that, Mr. Lall caused the company names to be changed to STLCorp Consulting and registered a new domain name <stlcorp.com>. The disputed domain name was redirected to the new site at the new domain name.
At some point, the disputed domain name was re-directed from <stlcorp.com> to Kleinstar’s website.
In November 2011, the Complainant made demands against the appearance of its trademarks on Kleinstar’s website and the use of the disputed domain name. While those demands led to some changes to the Kleinstar website, other issues remained unresolved and these proceedings were brought.
5. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain names are identical or confusingly similar to a trademark to which it has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Before dealing with these matters, two procedural aspects must be addressed.
First, the Registrar has confirmed that Webmedia Ltd is the registrant of the disputed domain name recorded in its records. Mr. Harding states in his declaration that his company’s name was Webmedia Group Ltd. This could be a different entity to the registrant or one or other of the entries could be in error. On balance, the Panel has decided to proceed on the basis that there is a typographical error in either Mr. Harding’s declaration or the WhoIs listing. The reasons for this conclusion include that the Complaint has been served on the addresses confirmed as correct by the Registrar. As a result, Mr. Lall and/or Kleinstar’s response has been elicited. Mr. Lall at Kleinstar Ltd (not Kleinstar Holdings Ltd) is listed as the address details for the registrant in the WhoIs record for the disputed domain name and Mr. Lall himself is the administrative contact. In these circumstances, the Panel is satisfied that Mr. Lall and Kleinstar are properly respondents and will simply refer to them jointly as “the Respondent”.
Secondly, the Complainant has sought to file a Supplemental Filing. The Respondent’s representative has objected to this, but has not sought or requested permission to file any material in rebuttal. In the Panel’s view, the proposed Supplemental Filing addresses matters which arguably are properly the subject matter of reply rather than Complaint as they arise out of points raised specifically in the Response. Accordingly, the Panel will admit the proposed Supplemental Filing into the record.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain names must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has clearly established the registered trademark rights referred to in section 4 above. Although the evidence is less detailed, the Panel also considers that the Complainant has unregistered rights in the acronym SAP by reason of its long and extensive use of that trademark in connection with its software and services relating to that software.
The disputed domain name differs from the SAP trademark only by the addition of the letters “corp” and the generic top level domain name (gTLD) “.com” suffix.
The Respondent points out that SAP is just an acronym for the German expression translating as system analysis and program development. The Respondent also notes that the word “SAP” has many other meanings or significations including use in a number of trademarks registered by other parties.
Nonetheless, the Panel considers that some notional Internet users who were aware of the Complainant’s trademarks are likely to think there is or may be an association between the Complainant and the holder of the disputed domain name.
The addition of the letters “corp” does not dispel that risk. They are likely to be taken by many Internet users as an abbreviation for the word “corporation” or for a commonly used term to indicate (or claim) that an entity is a company of some sort. It is also well established that the gTLD “.com” suffix can be disregarded as a functional requirement of the Internet.
In these circumstances, the Panel finds that when viewed as a whole the disputed domain name is confusingly similar to the Complainant’s registered and unregistered mark. The Panel would also find it confusingly similar to the figurative or device trademarks as well, as the disputed domain name and those trademarks share the string SAP which is the likely verbal reference in those trademarks.
B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on a complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of a respondent only, it will be sufficient for a complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 2.1.)
The Complainant states that it has not licensed its trademarks to the Respondent nor authorised the Respondent to use the SAP trademark in the disputed domain name. It does not appear that the Respondent has any registered trademarks for SAP of its own. These matters are not disputed by the Respondent.
These matters are typically sufficient to raise a prima facie case against a respondent.
The Respondent seeks to rebut this prima facie case in a number of ways. First, the Respondent invokes paragraph 4(c)(i) of the Policy and points out that its business of providing consultancy services for SAP software is entirely legitimate and, further, it is appropriate for it to use the Complainant’s trademarks in connection with that business given the nature of the services its provides.
Next, the Respondent invokes paragraph 4(c)(ii) of the Policy and contends that the disputed domain name is derived from the name by which it (or more precisely its predecessor) was commonly known before the dispute arose. In addition, the Respondent contends that it (or its predecessor) had the exclusive right to its name under the California Business & Professions Code §14415.
Thirdly, the Respondent invokes the very long passage of time between the Complainant’s first challenge in April 1999 and the challenge in November 2011 leading to the filing of the Complaint.
The Panel accepts that, given the nature of the services the Respondent provides, some use of the Complainant’s trademarks is appropriate. The question under the Policy, however, is different and to some extent narrower: whether the Respondent is entitled to the registration of the disputed domain name. Cases under the Policy have recognised that it can be permissible for a reseller or service provider to adopt or include someone else’s trademark as or in their domain name. An example involving the Complainant’s own trademarks is SAP AG v UniSAP, Inc., WIPO Case No. D2009-0297 (unisap.com). Whether the adoption or inclusion is permissible under the Policy, however, depends on the particular facts of the case.
As noted above, Mr. Lall declares that he was carrying on a business in providing SAP consultancy services in 1994 and 1995 under the name “Sanjiv and Partners”. In late 1997, he decided to incorporate a company to run the business in California and, shortly after in February 1998, another in New Zealand. At that time, he chose “SAP” as an acronym for “Sanjiv and Partners” and “Corp” to reflect the corporate nature of the new entity. Apparently, the “partners” reflected the involvement of one Mr. Ken Taylor. In March 1998, Mr. Lall gave the instructions to register the disputed domain name as it reflected the corporate names of his two new companies.
At that time, Mr. Lall declares, he was unaware that the Complainant asserted any right to stop others from using the three-letter acronym “SAP” or that it had any trademark registrations. Mr. Lall was apparently aware that acronyms of persons and companies were being used as Internet domain names. Moreover: “It did not occur to me that anyone could possibly mistake our modest SAPCorp Consulting Inc. website for that of the Complainant.”
As the Respondent contends, all of these events took place before the Respondent received any notice of any dispute with the Complainant. That alone is not sufficient to satisfy the defence under paragraph 4(c)(i). The usage must in addition satisfy a criterion of good faith.
It certainly appears from the Respondent’s current website that it is offering consultancy services in relation to SAP brand software in good faith. That, however, is only part of the story. The issue here is the adoption of the disputed domain name and, in view of the explanation offered by the Respondent here, the original corporate name.
In proceedings of this sort, the Panel is limited in its ability to assess the creditworthiness of a particular party’s claim. There is no oral evidence or cross-examination. Instead, the Panel is limited to consideration of the written record and inferences which may be drawn from that. That said, a Panel is not bound to accept a party’s denials or assertions at face value or as conclusive of a matter.
In different circumstances involving a different domain name, Mr. Lall’s explanation of how the disputed domain name came to be adopted may well be sufficient to found a right or legitimate interest. The Panel is not prepared to find that it does in the present case.
First, Mr. Lall was plainly aware of the Complainant and its use of SAP when he adopted the corporate name SAPCorp Inc in November 1997. Whether or not he knew of the Complainant’s registered trademarks at that time (and at least some of the German trademarks were registered at that point), he must have been aware that the Complainant was using the acronym SAP to identify its software and related services at that time. It also appears highly unlikely that, in choosing the corporate name, Mr. Lall was not intending to convey to the public that the business provided products or services related to the Complainant’s software. In contrast, as summarised in the Response, the Respondent in Schering Aktiengesellschaft v. Metagen GmbH, WIPO Case No. D2000-0728 (metagen.com) adopted its name without any knowledge of the Complainant’s name.
Secondly, the terms comprising the disputed domain name must be considered. Apart from the gTLD they are “SAP” and “Corp”. The disputed domain name is not simply the trademark or the trademark with some ancillary or accessory connotation: e.g. LEGO Juris A/S v. Legoverhuur.nl, Frank Schuermans, WIPO Case No. D2011-1559 (legoverhuur.com) and IVECO S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008-1725 (cheapivecoparts.com). The 2LD component of the disputed domain name combines the Complainant’s registered and unregistered trademark with a term likely to be understood to mean “corporation”; i.e., this is the domain name of an entity called SAP Corp or SAP Corporation. If anything, therefore, the particular terms chosen have a high potential to suggest that the holder is the Complainant or to reinforce an official connection with the Complainant. This particular disputed domain name is very different to the domain name at issue in the Unisap case above.
The registration of the corporate name under the California Business and Professions Code does not avail the Respondent. First, by the terms of the provision invoked, §14415, only a rebuttable presumption is created. Moreover, as in trademark law, a registration of a company name simpliciter cannot be used to circumvent the Policy. See e.g. Royal Bank of Canada v RBC Bank, WIPO Case No. D2002-0672 (rbcalliancebank.com). In this case, there is a period of about a month between the incorporation of the New Zealand company and few more months from the incorporation in California. It is not entirely clear when either entity actually commenced business. However, the period is so short as to make no difference to the application of the principle in RBC Bank.
The long period between the Complainant’s objection in 1999 and its renewed objections in November 2011 is troubling. Contrary to the Respondent’s assertions however, the Complainant’s demands in 1999 sought the removal of its trademark from both the corporate names and the disputed domain name. In response, Mr. Lall declares that he changed the corporate names, set out on redesigning the new website and redirected the disputed domain name to the new domain name. In its Supplemental Filing, the Complainant asserts that it thought the dispute had been resolved by its objections and it was not until 2011 that it discovered the disputed domain name was still in use and redirecting people to Kleinstar’s website. As the Respondent points out these claims are unverified in contrast to the declarations supporting the Respondent’s evidence. The Supplemental Filing is however advanced under cover of the certification of accuracy in the Complaint and goes to matters about the Complainant’s knowledge which are not directly contradicted by the Respondent’s declarations, for example, by way of reporting admissions made by the Complainant’s officers.
It is not clear from the record whether there was an hiatus between the website the Respondent’s predecessor operated at the disputed domain name and the re-direction of the disputed domain name to the <stlcorp.com> domain name. It is also not clear how the Respondent’s predecessor communicated these changes to the Complainant or what, if anything, the Complainant did in following up its demands in 1999.
On this record, it is clear that the Respondent’s predecessors and Mr. Lall were on notice that the Complainant objected to the use of the disputed domain name. Mr. Lall admittedly took steps to address those objections (although the Response states that these steps were without any admission of liability) to some extent. The Panel also notes that the Respondent has not clearly explained how the disputed domain name came to be redirected to Kleinstar’s website.
In these circumstances, although the matter is finely balanced, the Panel would not find that the Complainant is estopped from challenging the Respondent’s use at this point in time.
Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case that it does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that a respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) a complainant.
The Complainant essentially relies on the fame of its trademarks to give rise to an inference of registration and use in bad faith. In response, the Respondent contends that it could not have registered the disputed domain name in bad faith in view of its “legitimate interest” in the disputed domain name.
That is, the Respondent effectively relies on the arguments it advanced under the second factor discussed in section B above.
The reasons why those arguments were unsuccessful in that context also lead to the conclusion that the disputed domain name was registered in bad faith within the meaning of the Policy. The disputed domain name does not just indicate a relationship with or to the Complainant’s software, it conveys an additional representation.
The website to which the disputed domain name resolves, “kleinstar.co.nz”, does not on its face appear to misuse the Complainant’s trademarks as it appears to promote the Respondent’s business of providing consultancy services for users of the Complainant’s SAP software. The use of the disputed domain name to redirect users to that website, however, is different. As discussed above, the particular elements of the disputed domain name appear calculated to convey the representation that its holder is the Complainant or officially associated with it. That is not true. While the website which the disputed domain name redirects to itself appears to be quite legitimate, there does not appear to be anything on the homepage of that website which makes it clear that the Respondent is not associated in anyway with the Complainant.
According to Mr. Lall’s declaration, when the disputed domain name began redirecting to the revamped “stlcorp.com” website, there was a disclaimer:
The names of other entities, products, and services which may appear on this Web site. All trademarks remain the property of their respective owners. [sic]
Putting to one side whether the disclaimer was sufficiently prominent (when it was in use), it does not make clear what the relationship between the holder of the disputed domain name and the owner of any trademarks was.
The Respondent also points out that there have been only 8 cases of redirection from the disputed domain name to Kleinstar’s website in the past year. That does indicate that not many people are using or looking for an entity using the disputed domain name. This does not assist the Respondent, however, as it demonstrates that there are people out there looking for SAP or SAP Corp even though an entity with the latter name has not existed for over 13 years.
In these circumstances, the Panel finds that the Complainant has established the third requirement under the Policy also.
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 <sapcorp.com> be transferred to the Complainant.
Warwick A. Rothnie
Dated: February 3, 2012