WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Subramaniyam Swamy
Case No. D2016-0863
1. The Parties
Complainant is SAP SE of Walldorf, Germany, represented by RNA, IP Attorneys, India.
Respondent is Subramaniyam Swamy of Hadapsar, India.
2. The Domain Name and Registrar
The disputed domain name <saplearninghub.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 April 29, 2016. On April 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2016.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on June 8, 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
Complainant owns a large number of trademark registrations globally for its famous SAP family of marks, including for example, SAP, India Trademark Registration No. 1238969 in classes 41 and 42, registered January 29, 2008. Complainant’s Trademark registrations in India for classes 9 and 16 date back to 1992.
The disputed domain name was registered December 21, 2014 and does not presently resolve to an active website. However, the Complaint annexes screen images of Respondent’s website as it apparently appeared on April 29, 2016.
The webpages under the disputed domain name prominently displayed Complainant’s logos and the logos of several of Complainant’s competitors. The website was used to promote Respondent’s training courses for users of Complainant’s products. The heading at the top of the website reads “SAP Learning Hub”, and the text claims that “Learning Hub is the true Real time Training Institute of SAP at Pune, in Magarpatta City”. Similar claims implying affiliation with Complainant also appear elsewhere in the screen displays.
5. Parties’ Contentions
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
The Complaint also includes allegations respecting the unauthorized use of Complainant’s trademarks and copyrights through another website at “www.learninghub.co.in”, which similarly offered training courses and unlicensed proprietary software of Complainant. Complainant avers that in September 2014, Complainant sent a cease and desist letter relating to that website, and ultimately filed a police complaint, which resulted in a search, seizure of computers, and the arrest and incarceration of Respondent.
On the basis of the above, Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent by courier and email to Respondent notification of these proceedings, using the contact information provided by the Registrar. The contact information did not include a fax number. The courier notification was not deliverable at the address provided.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to notify the Complaint upon Respondent.
B. Substantive Rules of Decision
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
C. Evidence in the Present Proceeding
As a threshold matter, the Panel has decided to exclude the Complaint’s allegations relating to the website at “www.learninghub.co.in”.
The Complaint alleges that this website and related activities infringing SAP’s proprietary intellectual property rights were undertaken by Respondent. Based on the Panel’s online viewing of the material, the Panel can confirm that the pages at “www.learninghub.co.in” are very similar to those alleged to have been posted on Respondent’s website at the disputed domain name.
However, the Complaint’s allegations and annexes relating to “www.learninghub.co.in” (consisting of Complainant’s cease and desist letter and the Police First Information Report) name an individual other than Respondent. Without further elaboration of the relationship of the two individuals, the Panel will refrain from taking into consideration evidence relating to “www.learninghub.co.in”. In any case, it is also unnecessary to consider this material for the Panel to render its decision.
D. Identical or Confusingly Similar
Moving to the substance of this proceeding, first, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s trademark.
UDRP panels commonly disregard the generic Top-Level Domain (“gTLD”) suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607.
The disputed domain name includes Complainant’s SAP mark in its entirety, adding only the generic terms “learning” and “hub.” Omitting the gTLD suffix, the Panel finds that the addition of those two generic terms is not sufficient to distinguish the disputed domain name from the SAP mark. In fact, the Panel finds that Respondent’s addition of the terms “learning” and “hub” is likely to increase the confusion that Internet users would experience, since the terms are suggestive of the field of activities in which Complainant uses its mark, even emulating services offered on Complainant’s website.
The Panel concludes that the first element of Policy paragraph 4(a) is fulfilled.
E. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the disputed domain name; or (3) making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
The Panel accepts the Complaint’s undisputed allegations that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not making bona fide use of the disputed domain name under the Policy. The Panel also agrees with the Complaint’s allegations that Respondent is not known by the disputed domain name.
The Panel notes that Respondent’s website is being used to entice Internet users to enroll in Respondent’s courses. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Complaint makes out a prima facie case. Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
F. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The record shows that Respondent registered the disputed domain name long after Complainant obtained trademark rights in many countries, including in India. The name and content of the website makes obvious that Respondent was aware of Complainant’s trademark and sought to exploit it for profit, apparently by trying to emulate services provided by Complainant via Complainant’s primary, authentic websites. Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s marks. This is evidence of bad faith registration and bad faith use.
The Panel further finds that Respondent’s use of the website to promote the business of Complainant’s competitors, Respondent’s failure to reply to the Complaint, and Respondent’s failure to maintain accurate contact details as required by the agreement with the Registrar are cumulative evidence of use in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled.
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 <saplearninghub.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: June 13, 2016