The Complainant is SAP AG, Germany, represented by Akin, Gump, Strauss, Hauer & Feld, United States of America.
The Respondent is Chris Pranzini, San Jose, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sapnet.net> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2006. On December 1, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On December 1, 2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2007. The Response was filed with the Center on January 3, 2007.
The Center appointed William R. Towns as the sole
panelist in this matter on January 18, 2007. 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 the world’s largest inter-enterprise software company and the world’s third largest independent software supplier overall. Launched in Germany in 1972 as a small software vendor developing applications for date processing, the Complainant has emerged as a global leader in collaborative, inter-enterprise business solutions for a wide variety of industries. The Complainant has established a significant presence in the United States, and owns certificates of registration issued by the United States Patent and Trademark Office (“USPTO”) for the trademarks SAP and SAP NETWEAVER, as well as other “SAP” formative marks (hereinafter collectively the “SAP marks”). The Complainant has used its SAP marks extensively in the United States since as early as 1993. The Complainant also registered and has been using the domain name <sap.com>since 1995, to direct Internet users to the Complainant’s official website.
The Respondent, an individual residing in California,
registered the disputed domain name on July 7, 2001, according to the Dotster
WHOIS database. Archived webpages at “www.archive.org” reflect the
Respondent’s past use of the disputed domain name in connection with a
personal website or blog between 2001 and 2005. The disputed domain name more
recently has been pointed at the home page for the Google search engine.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that its SAP marks are well known and famous, and that the disputed domain name is confusingly similar to its marks. The Complainant has not authorized or given permission to the Respondent to register a domain name reflecting the Complainant’s marks, and the Complainant maintains that the Respondent does not have rights or legitimate interests in the disputed domain name. Further, given the Complainant’s extensive use of its SAP marks in the United States, the Complainant concludes that the Respondent had actual knowledge of the Complainant’s trademark rights. The Complainant also contends that Respondent currently is pointing of the disputed domain name to the Google search engine, and has made no commercial or legitimate use of the domain name. The Complainant concludes from the foregoing that the Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
The Respondent claims that the disputed domain name
reflects his nickname – “Sap”. This nickname, according to
the Respondent, is a shortening of his email user name “chrisap”,
derived from his full name, Christopher A. Pranzini. The Respondent asserts
that between 2001 and 2005 he used the disputed domain name in connection with
a personal web space. He provides links to archived web pages at “www.archive.org”
to support his claim of good faith registration and use. The Respondent asserts
that the domain name more recently has been used with a private system, accessible
through the web or FTP, where he and acquaintances trade letters and photos.
According to the Respondent, he pointed the domain name to a “benign”
website, “www.google.com”, to protect against the threat of hackers.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive
domain name registration and use. See Milwaukee Electric Tool Corporation
v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO
Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited
to providing a remedy in cases of “the abusive registration of domain
names”, also known as “cybersquatting”. See Weber-Stephen
Products Co. v. Armitage Hardware, WIPO
Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process,
paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the panel
shall decide a complaint on the basis of statements and documents submitted
and in accordance with the Policy, the Rules and any other rules or principles
of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three non-exhaustive means
through which a respondent may establish rights or legitimate interests in the
domain name. Although the complainant bears the ultimate burden of establishing
all three elements of paragraph 4(a) of the Policy, a number of panels have
concluded that paragraph 4(c) of the Policy shifts the burden to the respondent
to come forward with evidence of a right or legitimate interest in the domain
name, once the complainant has made a prima facie showing. See, e.g.,
Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain name
<sapnet.net> is confusingly similar to Complainant’s SAP marks for
purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question
has established rights in the SAP marks through registration and use, and the
disputed domain name incorporates the Complainant’s SAP mark in its entirety.
At a minimum, the Complainant’s marks are entitled to a presumption of
validity by virtue of their registration with the United States Patent and Trademark
Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,
Inc., WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy that the question
of identity or confusing similarity is evaluated based on a comparison of the
complainant’s mark and the alphanumeric string constituting the domain
name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson,
WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name
alone, independent of the use factors usually considered in a traditional trademark
infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial
Advisor, WIPO Case No. D2001-1367;
InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet
Café, WIPO Case No. D2000-0068.
Upon direct examination, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks. Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant points out that the Respondent registered the disputed domain name, which incorporates the Complainant’s SAP mark in its entirety, without the Complainant’s authority or permission. Given the Complainant’s extensive use of its SAP marks in the United States, the Complainant urges that the Respondent must have had actual knowledge of the Complainant’s trademark rights before he registered the disputed domain name. The Complainant notes that the Respondent appears to be making no active use of the domain name, other than to direct consumers to the home page for the Google search engine.
The Panel considers that the Complainant has made a sufficient prima facie
showing under paragraph 4(a)(ii) of the Policy to require the Respondent
to come forward with evidence under paragraph 4(c) demonstrating rights to or
legitimate interests in the disputed domain name. See Compagnie de Saint
Gobain v. Com-Union Corp., WIPO Case No.
D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The Respondent has directed the Panel’s attention to archived web pages viewable at “www.archive.org”, which the Panel notes support the Respondent’s claim to have used the disputed domain name in connection with a personal web space or blog between 2001 and 2005. As noted earlier, the Respondent claims that “Sap” is his nickname, shortened from “chrisap”, an email username, which in turn was derived from the Respondent’s full name, Christopher A. Pranzini. The archived web pages to which the Panel’s attention has been directed contain numerous references to “Sap” as the Respondent’s nickname.
In view of the foregoing, the Panel concludes that the Respondent has met his burden of coming forward with evidence demonstrating rights to or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy. Nor has the Panel found in the record before it circumstances suggesting any intent on the part of the Respondent to trade on the goodwill in the Complainant’s mark. Accordingly, the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b)
are not meant to be exhaustive of all circumstances from which such bad faith
may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding
objective of the Policy is to curb the abusive registration of domain names
in circumstances where the registrant is seeking to profit from and exploit
the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO
Case No. D2004-0230. The circumstances of this case, as noted above, are
not indicative of bad faith registration and use of the disputed domain name,
and the Panel accordingly finds that the Complainant has failed to meet its
burden under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: February 1, 2007
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