WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Domain Admin, Whois Privacy Corp.
Case No. D2019-0602
1. The Parties
Complainant is SAP SE, Dietmar-Hopp-Allee 16, of Walldorf, Germany represented by RNA IP Attorneys, India.
Respondent is Domain Admin, Whois Privacy Corp., Ocean Centre of New Providence, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <saphanacentral.com> and <saphanaclass.com> (the “Domain Names”) are registered with Internet Domain Service BS Corp TLD Registrar Solutions Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 20, 2019, 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 April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2019.
The Center appointed Clive Elliott Q.C as the sole panelist in this matter on May 2, 2019. 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
According to the publicly available WhoIs information, the Domain Names were registered as follows:
(a) “www.saphanaclass.com” – May 11, 2015; and
(b) “www.saphanacentral.com” – December 9, 2015.
Complainant is a German multinational software corporation making enterprise application software to manage business operations and provide technology solutions. It was founded in 1972 and has its headquarters in Walldorf, Germany, and regional offices in 180 countries.
Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange under the ticker symbol “SAP”.
Complainant has been the registered owner of the trade marks “SAP” and “SAP HANA” in over 75 countries since 1972 (“Complainant’s Marks”).
Complainant has owned and operated its main website “www.sap.com” since its registration in 1995, and its India specific domain name “www.sap.in” since 2005.
5. Parties’ Contentions
Complainant states that it originally coined, adopted and commenced use of Complainant’s Mark “SAP” in 1972, and since then Complainant’s Marks form an integral part of Complainant’s trade and business. Complainant has continuously and extensively used Complainant’s Marks for its products and services, and due to the widespread use of Complainant’s software, applications, solutions and platforms globally and longstanding goodwill in the trade and business, Complainant’s Marks have become highly distinctive of Complainant’s goods and services.
Complainant states that it spends significant sums on advertising and promoting Complainant’s Marks SAP worldwide. Its sales and marketing expense in 2018 were Euro 6,781 million and in the fiscal year 2018, Complainant’s total annual revenue was approximately Euro 24.74 billion.
Complainant states that it employs 96,498 people and serves more than 425,000 customers in more than 180 countries worldwide. In India alone, Complainant has over 3,000 customers.
Complainant states the one of the application solutions it provides to its customers is a product called “SAP Business Suite”. Complainant’s software products, such as Business Suite, are not available off-the-shelf, or through e-stores or through other general, commercial retail channels. Complainant’s Business Suite software products, in India, are not available with any computer hardware vendors as an Original Equipment Manufacturer (OEM) product or as a gift.
Complainant advises that many of Complainant’s software require trained professionals to load, execute, access, employ, utilize, store and display them. Complainant has created education and training programs for this purpose and enters into contractual arrangements with third party software specialists (known as “Education Partners”) worldwide for this purpose. A company or individual end user intending to use SAP software is required to enter into to an agreement called an “End User License Agreement” (EULA) with Complainant. In India, for the purpose of providing education training services upon its software products, Complainant has partnerships with specific entities to provide such training.
Complainant argues that the trade mark SAP has high degree of inherent distinctiveness denoting the products and services of Complainant only; has been used extensively over a long period of time and spanning a wide geographical area including in India; has been given significant publicity and attained popularity; it is well recognized by members of the trade and public. Therefore, Complainant is entitled to protection of the mark SAP against its misappropriation for goods or services whether similar or different in nature to those of Complainant.
Complainant asserts that the Domain Names incorporate Complainant’s Marks in their entirety and have been registered in bad faith. The addition of the descriptive terms like “class” and “central” to the respective Domain Names does not lend any distinctiveness to the Domain Names as the term SAP or SAP HANA remains to be the predominant feature of the Domain Names.
The term “class” is commonly used for training and educational services and its use in conjunction with Complainant’s Marks in the Domain Names suggests that Respondent provides training classes for SAP and/or SAP HANA courses. This is confirmed by the title displayed on the website- “www.saphanaclass.com” stating “SAP HANA Online Training and Material”and provides a link to SAPHANA Server Access. Respondent’s website is actively offering to sell SAP Training videos like Basic SAP HANA, SAP ABAP on HANA training, SAP BW on HANA training, SAP HANA Administration Training (SPS12).
Complainant asserts that according to the websites at the Domain Names the website owner is Ms. Sokita Paul. The website at “www.saphanaclass.com” also displays a note from Ms. Paul stating that “My team of HANA professionals have started providing online video training of SAP HANA, please visit at “www.saphanaclass.com”. The second website at “www.saphanacentral.com” also contains redirection links to “SAP HANA Certification Material; SAP HANA Certification Material; SAP HANA Training Videos”which redirects to the first website “www.saphanaclass.com”. Complainant submits that Respondent is unauthorizedly offering SAP HANA online training courses by use of unlicensed SAP software and other confidential or copyright-protected training materials and SAP certification tests.
Complainant states that Respondent is not an Education Partner, nor has it signed any license agreement with Complainant and nor has Complainant authorized Respondent to use the Domain Names for imparting or selling SAP online training courses or SAP Training videos or providing SAP HANA live server access. Complainant goes on to assert that Respondent has acquired the Domain Names illegally to attract Internet traffic by falsely claiming an association or connection with Complainant to make illicit gains.
Complainant advises that on December 5, 2018 it sent Respondent a cease and desist letter by email. No response was received, and Respondent continues to offer unauthorized SAP trainings, videos and server access through the Domain Names with the Domain Names being currently active.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Marks have been widely used since approximately 1972, and registered, and that Complainant has for many years provided enterprise application software under and by reference to Complainant’s Marks. Relevantly, Complainant has used Complainant’s Marks in India and it is reasonable to infer that Complainant has attained exposure and popularity in relation to Complainant’s Marks.
Complainant contends that the Domain Names incorporate Complainant’s Marks in their entirety, albeit with the addition of the descriptive words “class” and “central” to the respective Domain Names and that this does not lend any distinctiveness to the Domain Names. The Panel accepts this argument. It is apparent that the terms SAP or SAP HANA remain as predominant and key recognizable feature of the Domain Names. Further, the words “class” and “central” could just as well be referring to services provided by Complainant.
Respondent has made no effort to explain its actions or attempt to refute the allegations made by Complainant. In the absence of such response it is found that:
a) Complainant has rights in respect of Complainant’s Marks.
b) The Domain Names are confusingly similar to Complainant’s Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Names, Complainant contends that Respondent is wrongly suggesting to customers that it is able to provide training relating to Complainant’s goods and services and further that it has its own team of HANA professionals who provide video training of SAP HANA. Complainant denies that Respondent has any association or connection or indeed approval from Complainant, and do not avoid a finding of confusing similarity.
Again, in the absence of any response or explanation, the Panel has no difficulty in concluding that Respondent has no rights or legitimate interests in the Domain Names.
The Panel is therefore satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Marks, and its international repute the Panel infers that Respondent knew of Complainant’s Marks when registering the Domain Names and holding itself out as a licensed supplier of services relating to Complainant and its goods and services.
Complainant points out that notwithstanding sending Respondent a cease and desist letter by email, no response has been received, while Respondent continues to offer unauthorized SAP training, videos and server access through the Domain Names.
On the basis of the record, the Panel finds that Respondent registered and is using the Domain Names to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name and since. The Domain Names consist of Complainant’s Marks followed by common descriptive words and Internet users might reasonably believe that the Domain Names are somehow associated with or endorsed by Complainant, contrary to the fact.
The Panel thus finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <saphanacentral.com> and <saphanaclass.com> be transferred to the Complainant.
Clive Elliott Q.C.
Date: May 22, 2019