WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong
Case No. D2013-1868
1. The Parties
The Complainant is SAP AG of Walldorf, Germany, represented by Panitch Schwarz Belisarius & Navel LLP, United States of America.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Dzone Inc., Yeonju Hong of Kwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <sap-cloud.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On November 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 2013.
The Center verified that the Complaint together with the amended 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 amended Complaint, and the proceedings commenced on November 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2013.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 30, 2013. 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 owns an array of trademark registrations for SAP in the major markets world-wide, including International Registrations, Community Trademark Registrations and a United States federal registration for SAP renewed on February 19, 2012 under No. 2538716 for goods and services in classes 9, 41 and 42. The Complainant also holds other SAP and Design registrations granted as of August 21, 2009 for similar and different goods and services.
The disputed domain name <sap-cloud.com> was registered by the Respondent on February 17, 2013.
5. Parties’ Contentions
The Complainant claims that it began operations in 1972 and is the world leader in enterprise software applications and services, headquartered in Germany, employs over 55,000 people in 130 countries, and each day millions of people work with SAP products and services.
The SAP brand is ranked 25th of the world’s top brands by Interbrand, as shown in the excerpt from “Best Global Brands 2013” by Interbrand, attached as Annex E to the Complaint.
Furthermore, the Respondent’s acquisition of the disputed domain name <sap-cloud.com> on February 17, 2013 was long after the Complainant’s use of the SAP mark, with which it is confusingly similar.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name which was registered and is being used in bad faith. In this connection, the Complainant affirms that the Respondent is deriving financial benefit from the web traffic diverted through the disputed domain name, which is also for sale (see landing page of at “www.sap-cloud.com” attached as Annex F to the Complaint) for the exorbitant amount of USD 9,900 (see bid thread from sedo.com, attached as Annex G to the Complaint).
Consequently, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any principles of law that it deems applicable.
A. Identical or Confusingly Similar
The distinctive element in the disputed domain name <sap-cloud.com> is the trademark SAP in which the Complainant has rights. In the Panel’s view, the descriptive term “cloud” is insufficient to prevent the threshold on Internet user’s likelihood of confusion and confusing similarity as a result. Moreover, the word “cloud” tends to strengthen the idea that the disputed domain name belongs to the Complainant and identifies the business of the Complainant or a site associated with the Complainant’s cloud-based offerings. As to the generic Top-Level Domain (gTLD) “.com” the Panel, in line with many previous UDRP decisions, considers that it may be disregarded under the confusing similarity test.
Hence, the Panel finds that the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interest in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
For these reasons, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has produced evidence to the Panel’s satisfaction to show that the SAP trademark has been registered and known around the world and that when the Respondent registered the disputed domain name <sap-cloud.com> many years after it could not have ignored the fame of the Complainant’s SAP trademark.
Thus, the Panel deems that the disputed domain name <sap-cloud.com> was registered in bad faith for the purpose of either selling it to the Complainant who is the owner of the trademark SAP or to a competitor of the Complainant for a valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, or to otherwise use it to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s web site.
The Complainant has proved that the disputed domain name resolves to a parking page and moreover has been offered for sale for USD 9,900 (Annexes F and G to the Complaint), which, per se, can hardly constitute a bona fide use of the disputed domain name by the Respondent.
Regardless of whether the Respondent is making any other use of the disputed domain name, as stated in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith”, and further indicates that “examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”.
Since the three circumstances mentioned in the above paragraph are present in this case, and particularly in view of the Respondent not having answered the Complainant’s contentions, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore succeeded in making out the third element of the case.
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 name <sap-cloud.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: January 8, 2014