WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Domains by Proxy, LLC / Kamal Karmakar
Case No. D2016-2497
1. The Parties
The Complainant is SAP SE of Walldorf, Germany, represented by K&G Law LLC, United States of America (“United States”).
The Respondent is Domains by Proxy, LLC of Scottsdale, United States / Kamal Karmakar of New York, United States, represented by Singh & Singh Lall & Sethi, India. In this decision where necessary Domains by Proxy, LLC is referred to as the “First Respondent” and Kamal Karmaker as the “Second Respondent”.
2. The Domain Name and Registrar
The disputed domain name <sapbusinessonecloud.com> (the “Disputed Domain Name”) 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 December 9, 2016. On December 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 12, 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 December 14, 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 December 14, 2016.
The Center verified that the Complaint together with 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 December 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2017. The Response was filed with the Center on January 4, 2017. An unsolicited supplemental filing was filed with the Center by the Complainant on January 6, 2017. An unsolicited supplemental filing was filed with the Center by the Respondent on January 12, 2017. For reasons discussed below the Panel will exercise its discretion to admit each of these supplemental filings.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 18, 2017. 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 began operations in 1972 and is a market leading supplier of enterprise software applications, analytics, and related services. The Complainant is headquartered in Germany and employs over 76,000 people worldwide. It serves approximately 300,000 customers in nearly 190 countries. The Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange. The Complainant’s SAP brand is widely recognized, particularly in the area of enterprise software.
The Complainant owns trademark registrations, (both word marks and device marks), in respect of the term SAP in numerous countries, including for example United States of America Trademark Registration No. 2,538,716 (word) for goods and services in classes 9, 41 and 42 with filing date February 6, 1989 and registration date February 19, 2002; European Union Trade Mark Registration (word) No. 1,270,693 for goods and services in classes 9, 16, 18, 25, 28, 41 and 42 with filing date August 9, 1999 and registration date July 9, 2002. These trademarks are referred to collectively in this decision as the “SAP trademark”.
The Disputed Domain Name was registered on March 28, 2010. The Disputed Domain Name is used in relation to a “parking” webpage where links to various other websites are provided. These appear to be automatically generated by the software associated with the parking page.
In July 2016 the Complainant’s counsel contacted the First Respondent. Correspondence then took place with a person who described herself as counsel for the Disputed Domain Name owner. In that correspondence she declined to identify the substantive owner of the Disputed Domain Name. She offered to sell the Disputed Domain Name to the Complainant for USD 4,000. This offer was not accepted. This offer was expressed to be made on a “without prejudice” basis (see further below).
Following the commencement of these proceedings the Second Respondent was identified and added to the proceedings by amendment. When the Response was filed it became apparent that the Second Respondent claimed the Chief Executive of a company he referred to as “CitiXsys” (the full name of this company appears from documents filed in evidence to be “CitiXsys Americas Inc.”, but it is referred to in this decision as “CitiXsys”) which either is, or has been, a “Partner” of the Complainant under a contract which is entitled “Platform Application Development Cooperation Agreement” dated December 2, 2013. This contract is referred to in this decision as the “Platform Agreement”. It is a lengthy and complex agreement which is expressed to be subject to the law of Ireland. There is a dispute between the parties as to whether or not the Platform Agreement is still in force (the Respondent says it is) or has been lawfully terminated (which is the Complainant’s case). The position of “Partner” appears to be in substance a licensee who is granted certain rights to develop software for customers, such development using the Complainant’s proprietary software for such development. In return the “Partner” accepts various obligations including as to payment of royalties.
5. Parties’ Contentions
Prior to learning of the Second Respondent’s connection to CitiXsys the Complainant’s case was in summary as follows.
a) The Disputed Domain Name is confusingly similar to the SAP trademark as (i) it incorporates in its entirety Complainant's well-known and distinctive SAP trademark, and (ii) the combination thereof with generic terminology is insufficient to distinguish the Disputed Domain Name from the Complainant's trademark.
b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent uses the Disputed Domain Names in bad faith as the website to which the Disputed Domain Name resolves, make use of the Complainant's SAP trademark in order to raise advertising revenue through the use of sponsored or click-through links. Further the offer made to sell the Disputed Domain Name for USD 4000 was further evidence of bad faith.
When the Response identified the Second Respondent as the Chief Executive of CitiXsys, the Complainant by its supplemental statement went on to say that the Respondents were acting in bad faith as the Platform Agreement between the Complainant and CitiXsys explicitly prohibited CitiXsys from registering any domain name containing the SAP trademark while the agreement was in force without the Complainant’s express consent, and required CitiXsys to transfer any such domain names to the Complainant upon termination. The Complainant said that the agreement had been terminated because of breach of contract by CitiXsys, including non-payment of invoices.
The Second Respondent says he is the Chief Executive Officer of CitiXsys, which has been a partner of the Complainant since the year 2005. He says that his company works very closely with the “SAP Business One product line and community”. He says his company has over 1,000 customers in over 45 countries and is the largest Software Solution Partner to the SAP Business One community. He refers to various awards his company has won.
The Second Respondent says he registered the Disputed Domain Name to be able to distribute/sell the products of the Complainant.
He also says that the Complainant does not own the trademark SAP BUSINESS ONE CLOUD in the United States. He goes on to say that even if the Disputed Domain Name owned by the Respondents does not link to an active website this does not matter and his registration was bona fide and without any intention to extort any money from the Complainant.
The Respondents say that they were approached by the Complainant and offered a sum of USD 690 for sale of the Disputed Domain Name. They say they were willing to transfer the Disputed Domain Name to the Complainant for a sum of USD 4.000 as this was the minimum value of the Disputed Domain Name to the Second Respondent's business. They also say that they clearly communicated to the Complainant that the offer was without prejudice and in no way to be construed as an effort to extort money in bad faith.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Domains by Proxy, LLC.) appears to be a privacy or proxy registration service while the other Respondent (Kamal Karmakar) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows: “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision generally refers to both Respondents. Where it is necessary to distinguish between them Domains by Proxy LLC is referred to as the “First Respondent” and Kamal Karmakar as the “Second Respondent”.
The Panel will in its discretion admit the Supplementary Statements filed by each party. It appears to the Panel that the Response raised matters the Complainant could not readily have anticipated, namely the Second Respondent’s position as chief executive of CitiXsys and the contractual relationship between that company and the Complainant. The Complainant’s Supplementary Statement deals with this issue in a concise and convenient manner. The Respondents’ Supplementary Statement is in turn responsive to matters the Complaint raised in its Supplementary Statement and so in fairness should also be admitted. Admission of these statements allows the Panel to proceed with its decision in the light of all relevant facts, which in large measure are undisputed.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of the SAP trademark.
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name, as registered by the Respondents, incorporate the SAP trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the addition of the generic words “business”, “one” and “cloud”, all of which are descriptive words, and in the case of at least “business” and “cloud” likely to be commonly used in connection with enterprise software. These additions do not in the opinion of the Panel suffice to negate the similarity between the Disputed Domain Name and the Complainant’s SAP trademark having regard to the established principles set out below.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here words such as “business” and “cloud”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).
It is also well established that the specific top level of the domain name (in this case “com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SAP trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(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 organisation) 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 non-commercial 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.
None of these clearly apply in the present circumstances, although conceivably the Respondents may be suggesting (i) is applicable. In any event the list is non-exhaustive. As the Panel understands it the Respondents’ case is that the Second Respondent was entitled to register the Disputed Domain Name because he intended that it be used by the company of which he is chief executive, and that company is a “partner” of the Complainant which entitles it to make use of the Disputed Domain Name. The Panel is not able to resolve the dispute between the parties as to whether or not the Platform Agreement is subsisting or has been terminated, nor does the Panel propose to review the terms of the Platform Agreement which is not a matter within the Panel’s jurisdiction. The Panel does not consider these issues matter because even assuming in the Respondents’ favour that they have the benefit of being an authorised “partner” of the Complainant they do not meet the applicable principles which would allow such a “partner” to establish a legitimate interest in the Disputed Domain Name. That is because the Panel considers that in those circumstances the relevant principles are as established in what is known as the Oki Data test (arising from the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The substance of the test is set out in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows (excluding cited cases):
“2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]
Furthermore: A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”
In the present case the Respondents’ website does not seek to sell products or services from or related to the Complainant but comprises automatically generated links which connect to third party sites entirely unrelated to the Complainant. Further the website in question does not disclose any relationship between the Complainant and the Respondents. Accordingly the applicable requirements to fall within the Oki Data “safe harbor” principles are not satisfied. Put shortly the Oki Data principles do not allow an organisation, even if it is an affiliate or “partner” of the Complainant, to establish a legitimate interest where the domain name is linked to a parking page containing links to third party sites unrelated to the Complainant.
Accordingly the Panel finds that the Respondents have failed to establish any rights or legitimate interests in the Disputed Domain Name and hence the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The present case is unusual. The Second Respondent says that he is the chief executive of what by his account is a very large and successful company and a major “partner” of the Complainant. Very little evidence has been produced by the Second Respondent to substantiate these claims. However the Complainant in its Supplemental Statement has not sought to dispute these facts save to say that the contractual relationship that existed with the Second Respondent’s company has been terminated for breach of contract (which the Second Respondent disputes).
The Panel finds it very difficult to reconcile the Respondents’ actions with this factual background. In particular (notwithstanding the undisputed nature of the facts) the Panel does not understand why: (a) the Disputed Domain Name was not registered by CitiXsys rather than the Respondent; (b) why the Second Respondent wanted to obtain a domain name which combined the Complainant’s own name with entirely descriptive terms and which would in all probability be taken as being a domain name that was directly associated with the Complainant rather than one of its “partners”; (c) why the Disputed Domain Name was not put into use rather than linked to an automatically generated parking page; (d) why when approached by the Complainant the Second Respondent did not make clear who he was and explain how his company planned to use the Disputed Domain Name; (e) why he did not then assert positively what he now says is his bona fide entitlement to register and use the Disputed Domain Name; and (f) why instead the Second Respondent offered to sell the Disputed Domain Name to the Complainant. All of this has more than an air of unreality about it and strongly suggests to the Panel that the Complainant in fact registered the Disputed Domain Name opportunistically and with some ulterior motive in mind. Whatever the reasons were for the Respondents’ conduct the Panel is satisfied that the Disputed Domain Name has been registered and used in bad faith. It is generally accepted that the linking of a domain name to a webpage which contains third party material, even if automatically generated, can support a finding of bad faith. The website operated by the Respondents at the Disputed Domain Name comprises a series of “click through” links to other third party websites. The Panel infers that some visitors, once at the Respondent’s website will follow the provided links and “click through” to other sites which offer products or services unrelated to the Complainant and where some of the sites in question may offer products or services which compete with those of the Complainant. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site.
This is explained in WIPO Overview 2.0 in the following manner:
“3.8 Can third party or "automatically" generated material appearing on a website form a basis for finding bad faith?
Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement”
The Panel agrees with the applicability of this approach in the present case.
The Panel is reinforced in its conclusion by the Respondents’ offer to sell the Disputed Domain Name to the Complainant for USD 4000. Although this was said to be made on a “without prejudice” basis the Panel will admit this material, which both parties have referred to. In this regard the Panel adopts the approach set out in WIPO Overview 2.0 as follows:
“3.6 Can statements made in settlement discussions be relevant to showing bad faith?
Consensus view: Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith. This is so both in relation to offers by a respondent to sell made prior to a complainant's filing of a UDRP complaint, or after such filing. The latter takes account of the fact that cybersquatters often wait until a trademark holder launches a complaint before asking for payment. The legal criteria for showing bad faith directly specify that an offer for sale can be evidence of bad faith, and panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Admissibility may turn to some extent on which party - complainant or respondent - initiated the settlement discussions, and on whether the complainant itself may have solicited any offer to sell.”
The Panel notes that in this correspondence the Respondent’s representative expressly referred to the Oki Data principles (above) as applicable and permitting the use in question but at the same time expressly refused to identify who her client was or make clear the connection which is now relied upon. As the Complainant’s representatives at the time said, this hardly supported a claim to good faith, observing that “bona fide users do not hide in the shadows”. The Panel agrees. Further the Panel does not find the Respondents’ explanation of how the figure of USD 4,000 was arrived at to be convincing, nor indeed does the Panel understand why, if matters are as the Respondents now suggest, they were even prepared to sell the Disputed Domain Name at all. Overall the Panel finds that this correspondence is further evidence of bad faith registration and use.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been 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, <sapbusinessonecloud.com> be transferred to the Complainant.
Nick J. Gardner
Date: January 30, 2017