WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Domain Admin, Whois Privacy Corp.
Case No. D2021-2787
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 Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <sapspot.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2021 the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on October 11, 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
Since 1972, the Complainant has supplied enterprise software applications, analytics, intelligent technologies and experience management services under the name “SAP”. The Complainant has approximately 103,000 employees and 230 million users worldwide. Around 94% of the world’s largest 500 companies are customers of the Complainant.
The Complainant operates a website at “www.sap.com”.
The Complainant owns many registered trade marks for SAP including United States trade mark no. 2538716, filed on February 6, 1989, registered on February 19, 2002, in classes 9, 41 and 42.
The disputed domain name was registered on March 17, 2016.
As of August 24, 2021, it was used for a blogsite, including many blogs copied from the Complainant’s website. The website included a prominent banner stating: “SAP Certification. Online Practice Exams. Guaranteed Results.” This linked to a website at “www.erpprep.com” that invited users to pay to acquire unauthorised copies of the Complainant’s certification exam materials.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant’s trade mark is a well-known international brand. The disputed domain name is confusingly similar to the Complainant’s mark, which it fully incorporates.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent owns no trade mark or other legitimate rights in the disputed domain name and has not been authorised to use the Complainant’s mark.
The Respondent is not making use of the disputed domain name for a bona fide business purpose but, instead, is using the Complainant’s trade mark and content to divert users to another website for the Respondent’s commercial gain.
The disputed domain name was registered and is being used in bad faith
The Respondent’s registration of a domain name that is confusingly similar to a famous trade mark is, of itself, sufficient evidence of bad faith registration and use.
The Respondent is trading on the Complainant’s goodwill, and using the Complainant’s famous brand, and its content, to intentionally attract users to its commercial website, which offers materials pirated from the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Preliminary - identity of the Respondent
The Panel notes that the underlying owner of the disputed domain name has not been clearly identified, and instead the only details known for the registrant are those of a privacy service that will be considered as the Respondent.
B. Identical or Confusingly Similar
The Complainant has established rights in the name “SAP” by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and longstanding use of that name.
Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “spot” does not prevent a finding of confusing similarity.
For the above reasons, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Given the evidence of use of the disputed domain name for a website impersonating the Complainant including by use of blogs copied from the Complainant’s website, and which redirects users to another website which offers unauthorised copies of the Complainant’s certification exam materials for sale – the Respondent has not appeared in the proceeding to dispute the Complainant’s assertion to this effect – the Panel readily concludes that the disputed domain name was registered and is being used in bad faith by the Respondent in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Complainant has therefore established the third element of paragraph 4(a) of the Policy.
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 <sapspot.com> be transferred to the Complainant.
Date: October 25, 2021