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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SAP SE v. WhIis Privacy Service on behalf of sapinapp.com owner / Nataliia Kovalenko

Case No. D2021-2608

1. The Parties

The Complainant is SAP SE, Germany, represented by K&G Law LLC, United States of America (“United States”).

The Respondent is WhoIs Privacy Service on behalf of sapinapp.com owner, United States / Nataliia Kovalenko, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <sapinapp.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2021, 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 13, 2021 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 13, 2021.

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 17, 2021. On August 20, 2021, the Center received an email communication from the Respondent containing questions regarding the formal proceedings. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Center received another email from the Respondent on September 7, 2021, containing further questions regarding the formal proceedings. The Panel takes note of the Respondent’s email communications of August 20, 2021 and September 7, 2021 but does not consider them relevant to the outcome of the case, as is within the Panel’s authority pursuant to the Rules, paragraph 10.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 15, 2021. 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 is a market leader in end-to-end enterprise software applications, analytics, intelligent technologies and experience management, employing over 103,000 people worldwide.

The Complainant owns trademark registrations in various jurisdictions, including the United States trademark SAP (Reg. No. 2538716, registered on February 19, 2002), the European Union trademark SAP (Reg. No. 013107818, registered on December 16, 2014) and the European Union trademark SAP (Reg. No. 001270693, registered on July 9, 2002).

The Complainant further holds the domain name <sap.com> under which the official website of the Complainant is available. The Complainant advertises and sells its services through its <sap.com> domain name.

The disputed domain name was registered on April 11, 2021 and resolved to a website with user content copied from the Complainant’s official website and interspersed with pay-per-click content. In the meantime, the website has been deactivated.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

In the Respondent’s email communication of August 20, 2021, the Respondent argued regarding the content of the disputed domain name that the Complainant is publicly sharing a feed of its blogs. The Respondent’s belated email correspondence of September 7, 2021 did not contain any further material arguments.

The Panel does not consider the Respondent’s correspondences of August 20, 2021 and September 7, 2021 relevant to the outcome of the case. The fact that the Complainant is sharing a public blog is no valid justification to copy user content from the Complainant’s official website to the website available at the disputed domain name in any event.

6. Discussion and Findings

Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the SAP trademark.

The Complainant’s trademark is wholly reproduced in the disputed domain name.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). This includes a term like “inapp”, which appears to be related to the Complainant’s activities.

Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s SAP trademark.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.

The Complainant has credibly alleged that the Respondent has used the disputed domain name for generating revenue by using pay-per-click services while taking advantage of the Complainant’s trademark notoriety. This cannot be considered a bona fide offering of goods or services or a noncommercial use.

Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s trademark and the term “inapp”, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.5.1.

Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.

The Panel finds that the reproduction of the Complainant’s trademark along with the term “inapp” creates a likelihood of confusion between the Complainant’s trademarks and the disputed domain name, noting that the added term “inapp” appears to be related to the Complainant’s activities.

The evidence and allegations submitted by the Complainant support a finding that the Respondent was engaged in an attempt to pass itself off as the Complainant by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website and to attract Internet users to its website for its own commercial gain. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466). The fact that the website at the disputed domain name has been deactivated in the meantime does not prevent a finding of bad faith.

Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) of the Policy.

7. Decision

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 <sapinapp.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: September 24, 2021

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