WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / Amit Kumar
Case No. D2020-2005
1. The Parties
The Complainant is SAP SE, Germany, represented by K&G Law LLC, United States of America (“United States”).
The Respondent is Domain Privacy Service FBO Registrant, The Endurance International Group, Inc., United States / Amit Kumar, India.
2. The Domain Name and Registrar
The disputed domain name <sapebooks.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, 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 August 12, 2020, 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 August 20, 2020.
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 August 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on October 6, 2020. 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. It produces end-to-end enterprise software applications together with a number of related services and applications. Its headquarters are in Germany and it employs over 101,000 people worldwide and serves over 440,000 customers in more than 180 countries.
The Complainant’s principal trading style is SAP and it has secured trade mark registrations in many countries to protect this brand. These include, by way of example only, European Union Trade Mark registration number 001270693 for SAP, registered on July 9, 2002, in international classes 9, 16, 18, 25, 28, 41, and 42.
The disputed domain name was registered on September 20, 2008. It resolved to a website which is headed: “SAP ebooks - simplifying SAP for you”. A wide variety of e-books relating to many different SAP products provided by the Complainant are offered for sale, such as “SAP Financial Complete Document Set” and “SAP IS Utility Complete Project Documents”. Towards the bottom of the home page of the Respondent’s website is a section headed “Our Brands”. These are stated to comprise SAP FI GL, SAP FI AA, SAP FI AP, and SAP FI AR. The “About Us” section of the Respondent’s website states that; “SAPebooks.com is a team of SAP experts from all over the world who worked on various industry and large successful implementation projects. We are team of professionally qualified people who have excellent holding on business process understanding and rich experience in SAP solution”. Another page on the Respondent’s website invites website owners, blog writers, and others to join the Respondent’s affiliate network.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It draws attention to its trade marks for SAP, full details of one of these marks having been set out above. The disputed domain name incorporates the Complainant’s trade mark in full. This is sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s mark; see, for example; F. Hoffmann-La Roche AG v. Globex International, WIPO Case No. D2006-1008.
The Complainant says also that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trade mark rights or other legitimate rights in the SAP trade mark, nor has he been authorized or licensed by the Complainant to use it. The Respondent purports to offer for sale electronic books about SAP that are authored by SAP experts. The Respondent uses the Complainant’s blue and gold colour scheme and each of its alleged brands begins with a prominent blue “SAP”. The Respondent’s use of SAP as a trade mark is evident, for example, in the “About Us” section of its website which claims that “a large collection of SAP ebooks are available”. Books can be written about SAP but they cannot be branded as “SAP books” or “SAP ebooks” without the Complainant’s authorization.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The registration of a domain name that is confusingly similar to a famous trade mark, by an entity that has no relationship to that mark, is sufficient evidence of bad faith; see AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440. The incorporation of a well-known trade mark into a domain name by a registrant with no plausible explanation for doing so is also an indication of bad faith. The disputed domain name is trading on the Complainant’s goodwill in order to attract users to the Respondent’s website. In addition, the Respondent is evidently deriving revenue from his use of the Complainant’s brand, not only in relation to the sale of e-books but also from its affiliate programme.
Moreover, the Respondent has adopted a famous brand for his own use on previous occasions; see Compagnie Gervais Danone v. Amit Kumar, WIPO Case No. D2010-0563, which related to the <activiaindia.com> domain name; and Monster Energy Company v. amit kumar, WIPO Case No. D2020‑0165, which related to <monsterenergy.engineer>. The Respondent’s pattern of conduct involving the speculative registration of famous marks is further indicative of his bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of the many registered trade marks it owns for SAP, which establish its rights in this mark.
As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s SAP mark and the disputed domain name is the word “ebooks” which is placed after the mark. This does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Complainant’s SAP trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
The exercise of determining whether the Respondent’s website might comprise a bona fide offering of goods or services requires consideration of both the form and content of the Respondent’s website. It should be noted in this respect, that the disputed domain name presently resolves to a webpage containing a notice, evidently placed there by the Registrar, indicating that the disputed domain name has expired and inviting the registrant to get in touch with it. In point of fact, the registration for the disputed domain name has been renewed relatively recently. As there is every possibility that the Respondent’s website may reappear, the Panel deals with the Complaint primarily by reference to the appearance of the Respondent’s website as at the time the Complaint was filed, but also considers the position in the event that the disputed domain name remains effectively inactive.
In considering the Respondent’s website, it is necessary to consider whether an Internet user might be misled by its content into thinking that it is operated by, or with the approval of, the Complainant and/or whether the website unfairly or unlawfully takes advantage of the Complainant’s trade mark and repute.
It is unlikely that many Internet users visiting the Respondent’s website would assume that it is actually operated by the Complainant. By way of example, the “About Us” section of the website claims that “We are team of professionally qualified people who have excellent holding on business process understanding and rich experience in SAP solution”. However, the lack of notice on the website disclaiming a connection with the Complainant, coupled with the fact that the Respondent has claimed that its brands include names such as SAP FI GL and SAP FI AA, is likely to lead many Internet users to the mistaken belief that the Respondent has some form of formal association with the Complainant or that the Complainant has authorized the Respondent to use the disputed domain name for the purpose of selling e-books about its products. Moreover, the invitation on the Respondent’s website for parties to join its affiliate programme comprises an unauthorized and unfair exploitation of the Complainant’s repute in its SAP mark, as any Internet users who are redirected to the Respondent’s website are likely to visit it under the erroneous belief that it has some form of connection with the Complainant.
As with decisions under the Policy that have considered the position of authorised and unauthorised distributors of a complainant’s goods or services, the lack of a disclaimer on the Respondent’s website is particularly significant. This omission increases the likelihood that Internet users will mistakenly assume that a website which features the Complainant’s trade mark as a component of the disputed domain name and which prominently features the Complainant’s trade marks throughout, will have some commercial association with the Complainant.
In the light of the above, the Panel concludes that the Respondent’s website does not comprise a bona fide offering of goods and services. Even if the Respondent’s website does not reappear and the disputed domain name remains inactive, the Respondent’s holding of it in these circumstances would not amount to use in connection with a bona fide offering of goods and services.
The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name was put, whilst it was active, was commercial in character and did not constitute fair use.
Moreover, as explained at section 2.5.1 of the WIPO Overview 3.0; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
The Complainant has made out a prima facie case under the second element and, in the absence of any response to it by the Respondent, the Panel finds that he has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name contains the Complainant’s SAP trade mark in full and adds to it the word “ebooks”. The only known use of the disputed domain name has been to resolve to a website selling e‑books about a variety of the Complainant’s SAP-branded software products. This points to an awareness by the Respondent of the Complainant and its SAP trade mark as at the date of registration of the disputed domain name. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”. Whilst the disputed domain name was registered over twelve years ago there is nothing in the circumstances of this case that suggests that the time which has elapsed since the date of registration is a material consideration in determining the Respondent’s motivation and the Panel finds the disputed domain name to have been registered in bad faith.
In considering the question of bad faith use, paragraph 4(b) of the Policy lists, without limitation, four circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent. These include (in summary) the following:
- the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; and
- by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on it.
The use to which the Respondent has put the disputed domain name falls clearly within the second circumstance outlined above in that it pointed to a website which offers a variety of e-books about the Complainant’s products with no attempt having been made to explain the lack of any association with, or approval of, the Complainant. The belief of Internet users that the Respondent’s website is connected with the Complainant or is operated with its approval will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s SAP trade mark. Moreover, there is no conceivable good faith use that the Respondent could make of the disputed domain name and he has not made any attempt to justify his conduct or to rebut the Complainant’s assertions. This points clearly to bad faith registration and use; see, by way of example, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
The fact that the Respondent has been found to have registered domain names which incorporate the names of well-known brands on two previous occasions (see Compagnie Gervais Danone v. Amit Kumar, and Monster Energy Company v. amit kumar, supra) brings it within the first circumstance outlined above and therefore amounts to a further basis for finding bad faith on the part of the Respondent.
For these reasons, the Panel finds that the disputed domain name was both registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Moreover, even if the Respondent’s website does not reappear and the disputed domain name remains inactive, this would amount to passive holding (see section 3.3 of the WIPO Overview 3.0) and the circumstances support a finding of bad faith on this basis. The Panel notes in this respect (i) the repute of the Complainant’s mark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealment of his identity through use of a privacy service, and (iv) the implausibility of any good faith use to which the disputed domain name could be put.
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 <sapebooks.com> be transferred to the Complainant.
Date: October 20, 2020