WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP AG v. 21562719 Ont Ltd
Case No. D2014-0047
1. The Parties
The Complainant is SAP AG of Walldorf, Germany, represented by Baker & McKenzie, Germany.
The Respondent is 21562719 Ont Ltd of Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <sapcertification.com> (the “Disputed Domain Name”) is registered with Fabulous.com Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 15, 2014, 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 January 17, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 22, 2014.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 24, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 20, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a European multinational software corporation with its headquarters in Walldorf, Germany. The Complainant develops and distributes enterprise software to manage business operations and customer relations. With regional offices around the world, the Complainant has more than 248,500 customers in 188 countries and more than 65,500 employees in more than 130 countries.
The Complainant has been using and is the holder of the SAP trademark and service mark, either standing alone or in connection with a design element in the United States and in numerous countries throughout the world (the “SAP Marks”). As of May 1, 2004, the Complainant owned more than 200 trademark registrations for the SAP Marks in over 120 countries. The SAP Marks have been filed in numerous International Classes for many goods and services.
The Disputed Domain Name was registered on May 1, 2004. The Disputed Domain Name resolves to the website “www.sapcertification.com”, which is a landing page containing pay-per-click hyperlinks or sponsored listing advertisements. The links contain information about software products and services, including products created by the Complainant’s competitors.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s SAP Marks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s SAP Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
- The Respondent knew or should have known of the Complainant’s SAP Marks when it registered the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred, the Complainant must prove the following (Policy, paragraph 4(a) (i)-(iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the SAP Marks based on longstanding use as well as its United States and foreign trademark registrations for the SAP Marks. The Disputed Domain Name consists of the SAP Mark followed by the descriptive word “certification” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of descriptive words. F. Hoffman-La Roche AG v. Globex International, WIPO Case No. D2006-1008. The mere addition of the descriptive word “certification” to the Complainant’s SAP Mark does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a descriptive term is confusingly similar to the trademark); Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (The addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its SAP Marks. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name to disrupt the Complainant’s business and for commercial gain. In addition, the Respondent registered the Disputed Domain Name on May 1, 2004, long after the SAP Marks had become world famous and distinctive.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Sufficient circumstances are present here to evidence the Respondent’s bad faith registration and use of the Disputed Domain Name.
First, the Panel finds that Respondent’s registration of the Disputed Domain Name long after the Complainant began to use and widely promote its distinctive SAP Marks is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where respondent registered the domain name after complainant established rights and publicity in complainant’s trademarks). Similarly, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the Complainant’s SAP Marks prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is the present case with the Respondent’s registration of the Disputed Domain Name long after Complainant began using and registering its SAP Marks in the United States and in countries throughout the world.
Second, based on the circumstances here, it seems that the Respondent registered the Disputed Domain Name to disrupt the Complainant’s business and also attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SAP Marks. The Respondent’s website, “www.sapcertification.com” contains information about various products and services, including software, with links to third-party websites where these products and services are promoted. The links earn pay-per-click revenue when an Internet user clicks on the links and the user is then redirected to competing third party websites, thus capitalizing on the Complainant’s SAP Marks. The websites to which the Disputed Domain Name currently resolves contains sponsored ads to various websites that promote software services, among other things. As such, the Respondent is not only trading on consumer interest in the Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the websites, but the Respondent also derives commercial advantage in the form of referral fees. This constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Indeed, when the links on the pay-per-click pages are based on the trademark value of the domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page evidences bad faith where the ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same); Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353 (same).
Finally, the Respondent has made it a practice to register domain names containing well-known trademarks of other companies. See Bareweb, Inc. v. 21562719 Ont Ltd/Whois Privacy Services Pty Ltd., WIPO Case No. D2010-1341; Allstate Insurance Company v. 21562719 Ont Ltd, WIPO Case No. D2011-0305; ESH Strategies Branding, LLC v. 21562719 Ont Ltd / Whois Privacy Service Pty Ltd, WIPO Case No. D2011-0762; UCB PHARMA, S.A. v. 21562719 Ont Ltd, WIPO Case No. D2011-0821. Thus, the Respondent has engaged in a pattern of behavior which consists of registering domain names containing well-known trademarks and using them to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. The Panel finds that this is evidence of bad faith. Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Policy, paragraph 4(b)(ii).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <sapcertification.com> be transferred to the Complainant.
Lynda M. Braun
Date: February 28, 2014