The Complainant is SAP AG of Walldorf, Germany, represented by Lovells LLP, Germany.
The Respondent is Reffael Caspi of Ramat Gan, Israel.
2. The Domain Name and Registrar
The disputed domain name <sap-microsoft.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2009. On January 19, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2009, 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 the UDRP (the “Rules”), and the WIPO Supplemental Rules for the UDRP (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 January 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2009. The Response was filed with the Center on February 4, 2009 by email and on February 10, 2009 in hardcopy.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 20, 2009. 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.
On February 16, 2009 the Complainant transmitted to the Center a reply to the Response. The Rules make no provision for any such supplemental filings save with the consent or at the request of the Panel. The Panel has been given no reason why, exceptionally, the Panel should exercise his powers pursuant to paragraphs 10 and 12 of the Rules to permit this supplemental filing into this administrative proceeding and declines to do so.
On February 22, 2009 the Respondent transmitted to the Center a sur-reply to the Complainant's reply to the Response. In the circumstances, there is no need for the Panel to look at it and the Panel does not do so.
4. Factual Background
It is not in dispute that the Complainant and its brand, SAP, and Microsoft, the other name featured in the Domain Name, are very well-known names in the area of computer programs and software.
The Complainant, which was founded in 1972, is the proprietor of many trade mark registrations of or incorporating the mark, SAP, dating back to 1999. One of those registrations is German registration No. DE39946355 SAP for a wide variety of goods and services in classes 9, 16, 18, 25, 28, 41 and 42.
The Domain Name was created on November 16, 2005. A Network Solutions Whois search conducted on February 7, 2008 identifies the registrant as Reffael Levi of an address in the town of Herzliya, Israel. On March 10, 2008 the Israeli Postal Service attempted to deliver a mail item at that address from the Complainant, but was unable to do so on the basis that it was an “undeliverable address”.
Following an approach to the Registrar, the Whois details were subsequently updated and on June 11, 2008 the Complainant's representatives wrote to the Respondent drawing the Respondent's attention to its trade mark rights and seeking transfer of the Domain Name.
On July 14, 2008 the Complainant's representatives followed this up with a further letter seeking an amicable settlement, the terms of which were to include transfer of the Domain Name and suitable undertakings. The letter refers to an email from the Respondent of June 23, 2008, but neither party has put it in evidence before the Panel, so the Panel assumes that it was a holding response.
On July 23, 2008 the Respondent replied substantively, denying the Complainant's claims, but offering to include a disclaimer on his website and offering too to consider any reasonable offer to purchase the Domain Name that the Complainant might wish to make.
On September 3, 2008 the Complainant's representatives made an offer of USD 1000 for the Domain Name in recognition of the fact that the Respondent would have spent a certain amount of money in registering and maintaining the Domain Name.
On October 9, 2008 the Complainant's representatives emailed the Respondent suggesting that, in order to speed the matter up, he should let it be known what he would accept for the Domain Name. On October 17, 2008 the Respondent indicated that he would be prepared to accept USD 9,500 for the Domain Name. On December 15, 2008, not having had a reply from the Complainant, the Respondent sent the Complainant's representatives a “chaser”.
On December 3, the Microsoft Corporation gave the Complainant its approval in writing to the Complainant filing a complaint under the Policy in respect of the Domain Name.
Currently, the Domain Name is connected to a website featuring references to four articles dealing with co-operation between the Complainant and Microsoft and/or possible acquisition of the Complainant by Microsoft.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its SAP registered trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant contends that no use of any substance has been made of the Domain Name and that in all probability the Domain Name was registered with a view to selling it at a profit. The Complainant refers to the Respondent's offer to sell the Domain Name for USD 9,500. The Complainant also refers to the fact that the contact address for the Domain Name was originally a false address.
B. Respondent
The Respondent does not deny the Complainant's trade mark rights, but says that the Domain Name is not confusingly similar to the Complainant's SAP trade mark. The Respondent states that nobody visiting the Respondent's site would think that it had anything to do with the Complainant.
The Respondent states that he is an IT developer and registered the Domain Name for a noncommercial site featuring articles and information about SAP and Microsoft applications and software. He states that the website to which the Domain Name is connected “has been active since December 2005”. He states that his reason for registering the Domain Name is a legitimate one and that the pages that he has posted pre-date any notification to him of the Complainant's objections. He acknowledges that the site is still under development, but that he means to get round to completing it in due course.
The Respondent states that on the same basis he cannot be said to have registered and to be using the Domain Name in bad faith. The Respondent exhibits the Complainant's email of October 9, 2008 and states that this throws a completely different light on the negotiations over the purchase of the Domain Name.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
There is no dispute that the Domain Name features the Complainant's registered trade mark SAP. The sole issue under this head is whether the rest of the Domain Name, namely “-microsoft.com”, is sufficient to render the Domain Name not confusingly similar to the Complainant's trade mark.
The Panel notes from the Respondent's exhibit B that the articles therein (or one or more of them) talk of merger talks and commercial co-operation between the Complainant and Microsoft. Thus, there is obvious scope for association between the two brands.
The Panel takes the view that the Domain Name is likely to lead to a not insubstantial proportion of Internet users believing any site to which the Domain Name is connected to be a joint site of the Complainant and Microsoft.
The Respondent argues that nobody visiting the site will believe it to be a site associated in any way with the Complainant. That may be so, but by then the confusion (initial interest confusion) will already have occurred.
1.2 Is the content of a web site relevant in determining confusing similarity?
Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
For the reasons given above the Panel is of the view that the nature of the Domain Name is such that there is a very real risk that Internet users will visit the Respondent's site in the belief that it is a joint site of the Complainant and Microsoft. For the Respondent to have a right or legitimate interest in respect of such a domain name, the Respondent's explanation for his choice of the Domain Name has to be a powerful one.
While it is true that it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy, if the Complainant is able to make out a prima facie case under this head, it is for the Respondent to answer it. The Panel is satisfied that the Complainant has made out such a case. The Domain Name by its very nature appears to be a domain name of the entities whose names feature in it. Neither the Complainant nor Microsoft have given the Respondent any permission to use their trade marks and there is nothing about the use of the Domain Name up to June 11, 2008, when the Complainant's representatives first wrote to the Respondent, which demonstrates any obvious right or legitimate interest in respect of the Domain Name.
The Respondent's answer is that paragraph 4(c)(i) and/or 4(c)(iii) of the Policy applies. He contends that by his Annex B he has demonstrated that in advance of any notification of the Complainant's objections to the Domain Name, he has used and/or made demonstrable preparations to use the Domain Name for a bona fide offering of services, namely provision of a noncommercial forum for information and articles dealing with SAP and Microsoft programs and software.
The Panel is not impressed with the Respondent's explanation. If the Respondent had had genuine plans to set up a site of the kind he describes, the Panel would have expected more than a couple of pages from the Wayback machine, which raise more questions than they answer. For example, the articles posted on the site all appear to have been posted by the same man on the same day. All are said to have been posted by a John Thulean. Each article is preceded by the “label” “334 days ago” for the March 12, 2007 page and “331 days ago” for the March 15, 2007 page. The articles are not entirely consistent. One talks of all out war between the Complainant and Microsoft, another talks of co-operation between them and the third talks of top-secret merger negotiations between them. The Respondent explains them thus:
“The Respondent had used the website to provide information to the community of users of SAP and Microsoft applications before he received any notice from the Complainant.”
The Panel does not believe that to be an accurate account. It would have made more sense to the Panel if the explanation had been to the effect that these were “spoof” articles being used simply for website development purposes.
Currently, the Domain Name is connected to a website featuring references to four articles. All seem to have been posted on July 19, 2008. One of them deals with co-operation between the Complainant and Microsoft. The other three deal one way or another with possible acquisition of the Complainant by Microsoft. They appear to be genuine references, but their posting on the Respondent's website post-dates the Complainant's first approach to the Respondent and pre-date by 4 days the Respondent's substantive approach to the Complainant's representatives.
No other evidence has been produced to demonstrate the Respondent's plans for the site, still less any other use of the site. If there have been any pages other than those archived or those on the current site, the Panel is not aware of them. In the result, the Panel has doubts about the Respondent's intentions in the matter. The Respondent's answer to the Complainant's prima facie case under this head is unsatisfactory.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Ordinarily, it is but a short step to find that a domain name is an abusive registration within the meaning of paragraph 4(a)(iii) of the Policy where, as here, the Domain Name is potentially so deceptive and where the Panel has found that the Respondent has no rights or legitimate interests in respect of it.
The evidence that the Complainant has put forward in support of its contentions under this head are:
(i) The fame of the two brands featured in the Domain Name. This is not disputed by the Respondent. He acknowledges their fame and acknowledges, too, that he selected the Domain Name for the express purpose of providing information etc. concerning the products of the Complainant and Microsoft. The Complainant asserts that the Respondent was likely to be aware of a potential partnership between the Complainant and Microsoft and therefore registered the Domain Name with a view to selling it at a profit to the Complainant. The Respondent contends that when he registered the Domain Name, nobody thought a merger likely.
(ii) The Complainant refers to the email correspondence between the Complainant's representatives and the Respondent and the Respondent's request for USD 9,500 for the Domain Name, which in the Complainant's view was an excessive sum to put forward and only justifiable on the basis of the fame of the two brands featured in the Domain Name. The Complainant cites this as evidence of bad faith use of the Domain Name.
(iii) The fact that the WhoIs details originally featured in respect of the Domain Name were false (see Section 4 above). The Respondent states that this had nothing to do with him. It was a mistake made by the Registrar, which was corrected by the Registrar as soon as the Registrar had been alerted to it.
The Panel is not prepared to decide this dispute on the basis of erroneous contact details for the Domain name on the WhoIs database. There is nothing before the Panel to suggest that the Respondent's explanation is false.
This leaves the claim that the Respondent registered the Domain Name in bad faith within the meaning of paragraph 4(b)(i) (i.e. to sell it to the Complainant at a profit) and that the price that the Respondent put on it of USD 9,500 is evidence of that and of bad faith use of the Domain Name.
For a complaint to succeed under the Policy, the Respondent's motivation when registering the Domain Name has to have been abusive. The Panel must be satisfied that when registering the Domain Name the Respondent intended to exploit the Complainant's rights unfairly (e.g., with a view to selling it at a profit to the Complainant) or with a view to damaging the Complainant in some way (e.g., by disrupting the Complainant's business).
The mere fact that the Respondent registered the Domain Name with knowledge of the Complainant's rights is not enough. If his intention was as he says it was, namely to provide a forum for the exchange of information in relation to the products of the Complainant and Microsoft, the Complaint should fail. It may not give him a right or legitimate interest in respect of the Domain Name, but it is not cybersquatting, the activity, which the Policy was designed to address.
The Respondent registered the Domain Name in 2005 and made no approach to the Complainant. The first person to open up negotiations was the Complainant. The fact that the Respondent offered to accept USD 9,500 in response to the Complainant's invitation to name a figure is of no assistance to the Complainant. It is of no assistance in determining what the Respondent's intention was when it first registered the Domain Name. Before leaving this topic, it is right to point out that, as claimed by the Respondent, the Complainant's failure to include in its evidence the Complainant's representatives' email of October 9, 2008 gave a very different slant to that correspondence. The Respondent's figure of USD 9,500 was not a response to the Complainant's opening offer of USD 1000, but a response to the Complainant's representatives' invitation to name a figure. In the event nothing has turned on it, but if parties are going to exhibit correspondence, they should be careful to ensure that either it is complete or, if it is not, that the selection fairly illustrates the complete picture.
This leaves the use that the Respondent has made of the Domain Name. The post-Complaint use is of no assistance in identifying what the Respondent's intentions were at time of registration of the Domain Name. All we have, therefore, are the pages for March 12, 2007 and March 15, 2007 exhibited as Annex B to the Response and featured on the Internet archive (the Wayback Machine). A brief description appears at Section 6.C. above.
As indicated in Section 6.C., the Panel is in doubt as to what the Respondent's intentions were when he registered the Domain Name.
It is possible that the Respondent registered the Domain Name with a view to selling it to the Complainant at a profit. It is possible that the Respondent's use of the Domain Name has been self-serving and purely with a view to defeating a complaint under the Policy. It is possible that the Respondent was just sitting on the Domain Name waiting for the Complainant or Microsoft to approach him with an offer and hoping that the price invited out of him by the Complainant's email of October 11, 2008 would be accepted. The Respondent's explanation is not altogether satisfactory and it is very possible that the Complainant is right in its contention that the Domain Name was registered in bad faith.
Another possibility is that the Respondent registered the Domain Name for the purpose he claims, namely for a noncommercial forum site providing information and comment relating to the programs and software of the Complainant and Microsoft. It is possible that the Respondent's usage of the Domain Name in March 2007 (as depicted in Annex B to the Response) was a website trial rather than, as the Respondent seems to be suggesting, a genuine use of the finished product. Indeed, it is obvious to anyone visiting the site that it may not be a finished product.
The Panel remains in doubt on the provided record as to the Respondent's intentions in the matter. The Panel is not able to conclude here on the evidence before him that the Domain Name was registered and is being used in bad faith1.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby Sole Panelist
Dated: March 6, 2009
1 However, the case is finely balanced. If for example the website at the disputed domain name had been, or was subsequently to be, used by the Respondent in a clearly abusive manner, this could significantly colour the Respondent's claimed original intent in registering the domain name. If evidence of abusive use of the domain name was to come to light only after the issuing of the present decision, such new development may provide possible grounds for a re-filing.
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