WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Name Redacted / Domains By Proxy, LLC
Case No. D2016-0410
1. The Parties
The Complainant is SAP SE of Walldorf, Germany, represented by K&G Law LLC, United States of America.
The Respondent is Name Redacted1 of Richardson, Texas, United States of America / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sapincs.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 29, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2016, 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 March 3, 2016 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 March 8, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2016.
The Center appointed Jose Pio Tamassia Santos as the sole panelist in this matter on April 20, 2016. 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
4.1. The Complainant began operations in 1972 and is a market leader in enterprise software applications, analytics, mobile solutions, and related services. The Complainant is headquartered in Germany and employs over 76,000 people worldwide, representing over 120 nationalities. It serves approximately 300,000 customers in nearly 190 countries. Each day, millions of people work with the Complainant's products and services. The Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange under the ticker symbol "SAP". SAP America, Inc. is the U.S. subsidiary of SAP SE (collectively, "SAP" unless otherwise noted).
4.2. The Complainant's SAP brand was founded on April 1, 1972 and today is recognized worldwide.
4.3. The disputed domain name was registered on October 5, 2015. While the disputed domain name does not resolve to an active website, the Complainant has submitted emails sent from the disputed domain name in which someone - supposedly on behalf of SAP America, Inc. – has attempted to purchase USD 20,000 worth of computer hard drives from a vendor.
5. Parties' Contentions
5.1. The Complainant states that the Respondent registered, without authorization from the Complainant, the disputed domain name <sapincs.com> on October 5, 2015.
5.2. Furthermore, the Complainant contends that the disputed domain name <sapincs.com> fully incorporates the Complainant's well-known trade name and registered trademark, SAP. Moreover, the addition of "incs" does not provide a sufficient differentiation from the Complainant's mark. Indeed this suffix is likely to increase confusion with the Complainant, as customers may interpret "incs" as a reference to the corporate status of SAP.
5.3. The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) proves each of the following elements:
(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.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, "the panel shall draw such inferences […] as it considers appropriate".
A. Identical or Confusingly Similar
6.4. The Complainant owns dozens of trademark registrations for SAP in all major markets around the globe.
6.5. Due to the Complainant's continuous use of its marks and the success of the products and services provided thereunder, the brand has come to be recognized by the relevant public, indicating that the Complainant is the exclusive source of SAP business enterprise software and business solutions services around the world. Indeed the Complainant's brand is ranked 26th in a list of the world's top brands by Interbrand, a renowned global branding consultant.
6.6. Unbeknownst to the Complainant, without any authority, and long after the Complainant's first use of the SAP mark, the Respondent registered the disputed domain name <sapincs.com>. The registration of the disputed domain name conflicts with the representations made by the Respondent when applying for said domain name.
6.7. The Complainant's use of the SAP trademark occurred decades before the October 5, 2015 purchase of the disputed domain name <sapincs.com> by the Respondent. The disputed domain name <sapincs.com> fully incorporates the Complainant's well-known trade name and registered trademark, SAP, a fact that is sufficient to establish that the disputed domain name is confusingly similar to the Complainant's mark. See F. Hojfman-La Roche AG v. Globex International, WIPO Case No. D2006-1008; and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Moreover, the addition of "incs" does not provide a sufficient differentiation from the Complainant's mark. See Deutsche Lufthansa AG v. George Aby, WIPO Case No. D2009-0071. lndeed this suffix is likely to increase confusion with the Complainant, as customers may interpret "incs" as a reference to the corporate status of SAP.
6.8. Accordingly, the disputed domain name is confusingly similar to the SAP trademark. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.9. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
6.10. The Respondent used a false name clearly intended to impersonate the Complainant in registering the disputed domain name. The Respondent has no legitimate interest in or legitimate, bona fide business purpose for using this name or the disputed domain name <sapincs.com>. The Respondent has no trademark rights or any other legitimate rights in the mark SAP, nor has it been authorized or licensed by the Complainant to use this trademark.
6.11. There is no webpage associated with the disputed domain name <sapincs.com>. Indeed, the Respondent used the Complainant's name to register the disputed domain name, and is using the disputed domain name to generate fraudulent purchase orders under the Complainant's name. The Respondent, using the company name SAP America, Inc. and the name of an actual SAP employee, created the email address […]@sapincs.com, and used it order USD 20,000 worth of equipment on the Complainant's account.
6.12. Under these circumstances, including the Respondent's default, the absence of any permission by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the disputed domain name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Accordingly, the second element of the Policy has been established.
C. Registered and Used in Bad Faith
6.13. 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 the 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 has 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.
6.14. The fraudulent use of a variation of the Complainant's name in connection with registering the disputed domain name by itself evidences the bad faith of the Respondent. See Maplin Electronics Limited v. Name Redacted, WIPO Case No. D2015-0493. The fraud was furthered by the Respondent's use of the email extension "@sapincs.com" in conjunction with the name of the Complainant's subsidiary in placing orders for products to be charged to the Complainant.
6.15. Moreover, registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark is sufficient evidence of bad faith registration and use. See AT&T Corp.v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440. ln addition the incorporation of a well-known trademark into a domain name by a registrant with no plausible explanation for the usage is an indication of bad faith. See Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273.
6.16. The Respondent registered the disputed domain name in order to fraudulently represent itself as SAP. The disputed domain name incorporates the Complainant's mark in which the Complainant has prior valid and subsisting rights. These factors are sufficient to establish bad faith. See British Airways PLC v. Wayne Nicholas / Beroca Holdings B.V.l. Limited, WIPO Case No. D2009-0110.
6.17. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7.1. 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 <sapincs.com> be transferred to the Complainant.
José Pio Tamassia Santos
Date: April 25, 2016
1 For reasons that will become apparent in Section 6 below, the Panel has decided that no purpose will be served by including the name of the referenced individual in this Decision and has therefore redacted the name from the caption and body of this Decision. However, for purposes of decision implementation, an annex to this Decision will be forwarded to the Registrar disclosing this information.