WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Andrew Witzenfeld, Quimera Ltd.
Case No. D2014-2173
1. The Parties
The Complainant is SAP SE of Walldorf, Germany, represented by Baker & McKenzie, Germany.
The Respondent is Andrew Witzenfeld, Quimera Ltd. of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <simplysap.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2014, 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.
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 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. An informal Response was filed with the Center on January 21, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on January 26, 2015. 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 is a European multinational software corporation with its headquarter in Germany, that develops and distributes, in particular, enterprise software to manage business operations and customer relations.
It is the largest European and worldwide the fourth-largest software company with more than 248,500 customers in 188 countries and more than 65,500 employees and locations in more than 130 countries.
The Complainant’s best-known software products are notably its enterprise resource planning application systems and management (SAP ERP), its enterprise data warehouse product – SAP Business Warehouse (SAP BW), SAP BusinessObjects software, and most recently, its mobile products and in-memory computing application SAP HANA.
The Complainant has protected the SAP trademark in a large number of countries, among which are cited the following:
9 July 2002
(word mark stylized & device)
8 September 2000
(word mark stylized & device)
15 February 2002
5. Parties’ Contentions
Complainant first contends that the disputed domain name is confusingly similar to its SAP trademarks based on the following facts:
- The disputed domain name, <simplysap.com>, contains the entire SAP trademark of the Complainant and is used as the second element of the disputed domain name. The first element of the disputed domain name is the generic word “simply” which is used in a way to describe and advertise the second element “sap”;
- The mere addition of the generic element “simply” positioned in front of the Complainant's mark does little to avoid the confusing similarities to the Complainant's SAP mark. The public will therefore understand "simply" as serving to describe the second element "sap" in a way that the disputed domain name itself indicates that the website either offers easy access to SAP services or exclusively SAP branded goods or services originating from the Complainant;
- The confusing similarity between <simplysap.com> and the SAP mark is not prevented by the fact that the Respondent added a disclaimer to the website connected with “www.simplysap.com”.
The Complainant then asserts that the Respondent has no rights or legitimate interests in the disputed domain name <simplysap.com>:
- The Respondent has no rights in the trademark SAP nor “simplysap”, neither on the basis of common law nor as a registered trademark anywhere in the world and has no present or future intention of conducting any legitimate business under this name;
- The Respondent has not been and is not commonly known by the disputed domain name;
- The Complainant has also not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted to apply for or use any domain name incorporating the trademark;
- The Respondent uses the SAP mark to direct Internet users to its website (a job portal for people experienced with the use of products offered by the Complainant) by exploiting the high reputation of the Complainant's mark for its own commercial benefit. Thus, the aforementioned use does not qualify as a bona fide use for offering goods or services;
- Last the Respondent is making no legitimate noncommercial or fair use of the disputed domain name <simplysap.com>, without intent for commercial gain to misleadingly divert consumers: accessing the contact details of a job candidate in the so called "SimplySAP CV database" indeed triggers a fee.
At last the Complainant claims that the Respondent has registered and is using the disputed domain name <simplysap.com> in bad faith:
- When registering the disputed domain name, the Respondent was aware of the Complainant's trademarks;
- The Respondent's sole purpose of registering and using the SAP mark as part of the disputed domain name <simplysap.com> was to make use of and exploit the use of the world-famous SAP mark enjoying a high reputation;
- The Complainant has given the Respondent the opportunity to amicably settle the matter outside UDRP proceedings and issued warning letters in 2013 which remained unanswered.
The Respondent sent a informal letter on January 21, 2015, the day after he was found in default.
He disputes the Complaint and does not believe that the disputed domain name, that he has been using for nine years, should be transferred to the Complainant.
The Respondent indicates that he was advised to set up an independent website that would provide a platform for professionals within the ERP community to participate in forums, access the latest news, find training companies and search for jobs. He researched the industry, looked at sites like www.sapfans.com, www.thesapjobboard.com, www.sapcareers.com (all of which are still live) and decided to start his own job portal.
He has not made any attempt to pass-off the SAP mark. At first glance it is clear that the <simplysap.com> is in no-way associated with SAP SE (different branding, different logo) and there is absolutely no confusion.
The Respondent states that he has, in the past, advertised jobs on behalf of SAP SE competitors, which the Complainant would not have done on its websites. In the meantime the Respondent asserts that he enjoyed a great relationship with SAP America Inc. and worked with them in the past to develop a section of the site that would advertise their training courses and encourage people to sign up for them
The limited revenue that <simplysap.com> generates is from companies paying to advertise on its job board. However, most of the jobs on the website (95%) are from job aggregators and what little revenue the site brings, goes towards running costs.
Moreover, the Respondent underlines the fact that his website has a disclaimer on each page.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(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 was registered and is being used in bad faith.
Preliminary issue with respect to late filing of response
The Panel notes that the Response was received by the Center the day after the Response due date. The Respondent explained that he faced some difficulties to receive the Complaint and annexes sent by mail. Even if the Response filed may be considered late, the Panel finds no prejudice to the Complainant in the present circumstances and will consider the Response in rendering his decision. The Net-A-Porter Group Limited v. Suh Hanjun, WIPO Case No. D2014-2071(accepting late submission that resulted in no prejudice to the parties).
A. Identical or Confusingly Similar
The Complainant has provided evidence through its Annex 4 of its multiple trademark registrations for its SAP mark in connection with its computer software programs.
It results from the Complaint and annexes that the SAP trademark is well-known: the Complainant has been using the trademark since its creation in the early 70s. Since 2001, the Complainant’s brand SAP has been continuously ranked as one of the top 50 valuable brands worldwide.
The disputed domain name is confusingly similar to the Complainant’s SAP mark, because the Respondent’s disputed domain name incorporates the entirety of Complainant’s SAP mark and merely adds the generic term “simply” along with the generic Top-Level Domain (“gTLD”) “.com.”
See for instance: Red Bull GmbH v. Yvonne Aberl, WIPO Case No. D2009-1663, concerning notably the domain name <redbullsimply.com>.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to marks, in which the Complainant has rights.
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that the Complainant may establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name by making a prima facie showing that the Respondent lacks rights or legitimate interests.
Paragraph 4(c) of the Policy sets out the following examples:
(i) 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent claims that it has established rights or legitimate interests in the disputed domain name based on the fact that, before any notice of the dispute, the Respondent was using the disputed domain name in connection with a bona fide offering of goods or services: the Respondent has been indeed operating a platform for professionals within the ERP community to participate in forums, access the latest news, find training companies and search for jobs, for around nine years.
It is clear from the record that the Respondent has been using the trademark SAP in the disputed domain name and on its website by reference to the Complainant, to create a community dedicated to professionals working within the ERP industry, having in mind that the Complainant stands as one of the leading actor in this specific industry.
Such project could serve as a base for legitimate interest in the sense of the Policy, whether the Respondent could demonstrate that it is using the Complainant’s trademark as a reference, and under the fair use principles set forth by the Policy and case law.
However, to demonstrate that the disputed domain name has been fair used, the Respondent must show that it did not intend to misleadingly divert consumers, for commercial gain (paragraph 4(c)(iii) of the Policy).
As stated in the Complaint, the fact that that the Respondent uses the disputed domain name <simplysap.com> for a job portal for people experienced with the use of products offered by the Complainant does not justify the use of the Complainant's mark as the mark is not used to advertise the Complainant's products itself but for the Respondent's own, independent and unauthorized business model. In this context, the Respondent uses the SAP mark to direct Internet users to its website by exploiting the high reputation of the Complainant's mark for its own commercial benefit. Thus, the aforementioned use does not qualify as a bona fide use for offering goods or services in the meaning of Policy, Paragraph 4(c)(i).
Particularly, the Panel has pointed out the statement made by the Respondent in its response, confirming that it has in the past, advertised jobs on behalf of the Complainant’s competitors. Such use could clearly confuse Internet users who could legitimately think that the disputed domain name is used with Complainant’s permission, and the website is dedicated to information and job offers exclusively related to the Complainant.
Furthermore, the Respondent also does not dispute the fact that its job portal generates revenue, even limited.
The Respondent is thus offering information and job vacancies in the ERP industry, which the Complainant is a leading actor thereof, among other companies, under a domain name that is using only the Complainant’s trademark, and in a fee-based model.
Having regard to all of the relevant circumstances in this case, the Panel finds the Respondent’s registration and use of the disputed domain name not to be compatible with relevant fair use principles. The Panel also finds no convincing evidence in the record that the Complainant at any time authorized or acquiesced to the Respondent’s registration and use of the disputed domain name. It is clear that the Respondent, after being placed on notice by the Complainant (cease and desist letters sent in 2013), did not in any manner comply with the Complainant’s request, or take other steps to address the likelihood of consumer confusion arising from the unauthorized use of the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)(iv):
(1) Registering the disputed domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i),
(2) Registering the disputed domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii),
(3) Registering the disputed domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii),
(4) Using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
The Panel notes that there has been a nine year gap between the date the disputed domain name was registered and the date that the Complainant filed this proceeding.
Paragraph 4.10 of the WIPO Overview, 2.0, addresses this situation:
Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
The Complainant does not give details on this issue in the Complaint and the Panel has no information on the date where the Complainant was aware of the disputed domain name.
However it should be pointed out that the Complainant has officially notified the Respondent twice in 2013, while the Respondent claims that the Complainant’s United Sates of Amercia subsidiary used to post job vacancies on the website operated under the disputed domain name, which should infer that the Complainant would have been aware of the domain name since a couple of years. However, this assertion by the Respondent is not supported by evidence and the Panel did not find any relevant information on the website resolved by the disputed domain name <simplysap.com>.
The Complainant anyway claims that the Respondent could not have relied on the Complainant’s acquiescence because the Complainant never authorized or licensed Respondent to use its trademark SAP as a domain name.
See a recent application in Dr. Ing. h.c. F. Porsche Aktiengesellschaft v. John Smith, WIPO Case No. D2014-1859.
In the present case, and taking into consideration the circumstances, the Panel considers there is no evidence that the Complainant was aware of the registration of the disputed domain name in 2005 nor that it has ever given its permission, on an express or implied basis, for the registration and use of the disputed domain name.
At the time he Respondent registered the disputed domain name, he was presumed to be on notice that SAP was a trademark of another entity. Indeed, this is reflected in the web pages attached to the Complaint in which the Respondent has included a disclaimer. Such a disclaimer is an admission that Respondent recognized that Internet users would assume that web pages attached to the disputed domain name would be associated with the Complainant.
It is thus clear from the relevant circumstances that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The Respondent’s primary aim in relation to the registration and use of the disputed domain name most likely was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest confusion.
The evidence suggests that the Respondent adopted the disputed domain name in order to intentionally attract, for commercial gain, Internet users to his website www.simplysap.com by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website in violation of paragraph 4(b)(iv) of the Policy. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
It is the Panel’s opinion that potential visitors and notably job seekers arriving on the Respondent’s website could be quite easily confused, and the disclaimer displayed on the Respondent’s website is not so prominent to avoid the risk of confusion. The bad faith arises in the Respondent using the disputed domain name in which it has no legitimate interests to attract possible customers who were looking for, or expecting, the Complainant but who then get information from the Respondent, out of Complainant’s control, and are also invited to deal with the Respondent, who admits that he has promoted the Complainant’s competitors through the disputed domain nane. Indeed, from the Panel’s visit to the website at the disputed domain name, this appears to still be the case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <simplysap.com> be transferred to the Complainant.
Date: February 12, 2014