The Complainant is SAP AG of Germany, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is UniSAP, Inc. of United States, represented by Buus, Kim, Kuo & Tran, APC, United States.
2. The Domain Name and Registrar
The disputed domain name <unisap.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2009. On March 6, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 6, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2009. The Response was filed with the Center on April 1, 2009.
The Complainant filed a reply to the Respondent's response on April 8, 2009.
The Center appointed John Swinson as the sole panelist in this matter on April 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.
4. Factual Background
The Complainant is a large, well-known, multi-national software company, which was originally founded in Germany in 1972. The Complainant owns many registered trade marks around the world which incorporate the term SAP. According to its website, the Complainant primarily provides business software products, as well as services relating to the software (such as SAP consulting or hosting).
The Respondent operates a consulting business based in California, United States. According to its website, the Respondent has been in business since 2000, providing customers with assistance in relation to SAP technology.
The website operating from the disputed domain name is the Respondent's primary business website. The website features a “Unisap” logo, and also contains the header “Bringing the latest SAP technology”. The Respondent's employees are referred to on the website as experts in SAP technology.
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant began operations in 1972 and is the world's largest business software company, and the third-largest independent software provider in the world. The Complainant's headquarters are located in Germany and it employs over 51,000 people in more than 50 countries. The Complainant services over 82,000 customers in more than 120 countries, and its products are offered to a wide range of industries including banking, defense and security, engineering, media, professional services, public sector and telecommunications. The Complainant is also listed on several stock exchanges.
The Complainant has been offering its products and services under the registered SAP trade mark in the United States since 1988. These trade marks include United States Registration No 2,538,716 for SAP, filed on February 6, 1989; United States Registration No 2,905,468 for SAP and design, filed on August 1, 2001; United States Registration No 2,688,099 for SAP and design, filed on August 1, 2001 and United States Registration No 2,688,100 for SAP and design, also filed on August 1, 2001.
The Complainant also operates websites resolving from the domain names <sap.de> in Germany and <sap.com> in the United States. The latter domain name has been registered by the Complainant since January 18, 1995.
The SAP trade mark is recognised by the relevant public as indicating the source of the IT, software and business solutions services of SAP, exclusively in the United States and around the world.
The Respondent registered the disputed domain name without authority of the Complainant on June 3, 2000. The Respondent's registration conflicts with a term of the registrar's agreement, namely that registration would not directly or indirectly infringe the legal rights of a third party.
The Respondent was fully aware of the Complainant's prior rights in the registered SAP mark. In 2007, an employee of the Complainant contacted the Respondent and requested that they change their name and logo. On May 23, 2007, the Respondent advised that they had changed their logo and were in the process of changing the appearance of their name from “UniSAP” to “Unisap”. Later that year however the Respondent filed a United States trade mark application for “UniSAP” and the Complainant has opposed this application.
The website operating from the disputed domain name contains a header that reads: “Bringing the latest in SAP Technology” and also contains statements advising that the Respondent is “a customer focused, highly skilled professional SAP group”, and its employees help customers “through strategic application of SAP technology”. The website often refers to SAP technology and services.
The disputed domain name fully incorporates the SAP trade mark, and is therefore confusingly similar.
The Respondent has no rights or legitimate interests in, or legitimate bona fide business purpose for using the disputed domain name. The Respondent has no trade mark rights or legitimate rights in SAP.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name despite having no rights in SAP. The disputed domain name was registered without any authority or permission from the Complainant.
The disputed domain name is confusingly similar to the registered SAP mark in which the Complainant has long standing rights in the United States and elsewhere.
B. Respondent
The Respondent makes the following contentions:
The disputed domain name is neither identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant fails to provide any actual evidence to suggest that there exists any confusion resulting from the Respondent's use of the disputed domain name. There is no record of confusion which shows the general public or computer industry is confused or believes that the disputed domain name is associated or affiliated with the Complainant's trade mark.
The fact that the disputed domain name and Complainant have co-existed for nearly ten years without evidence of confusion is significant. The disputed domain name and the website make it clear that the Respondent provides an entirely different business from the Complainant, and merely provides consulting services for the Complainant's product.
The Respondent has legitimate rights to the disputed domain name, and this name has been registered and used in good faith.
The Complainant owns proprietary software called SAP. The Respondent is an established full service provider of consultation services for businesses that use SAP. The Respondent has been servicing clients across the United States in relation to SAP consultation since 2000. The Respondent's business has grown dramatically and is heavily sought out for its consultation services with the SAP consultation industry.
The fact that the Complainant refers to the Respondent's efforts in changing its logo (from UNISAP to Unisap) actually weighs against the Complainant, and shows that the Respondent has acted in good faith to avoid the possibility of confusion between the disputed domain name and the Complainant's trade mark.
Because of the Respondent's reputation in the marketplace, the Respondent has built a strong brand identity and goodwill in its business. The disputed domain name relates directly to its business, and maintaining the disputed domain name is essential to the continuation of the Respondent's business. The Respondent has actively marketed its business name of Unisap, including investing heavily in marketing materials, attending trade shows and conferences, and providing training seminars since 2000. The Respondent is running a successful business and has legitimate rights and interests in the disputed domain name.
The Respondent has operated its website since 2000 in good faith. The mere fact that the disputed domain name contains the term “SAP” is not determinative of whether the Respondent has used its domain name in good faith or not. There are many examples of domain names and trade marks that share a common term and peacefully co-exist, for example, Microsoft and Microsemi, which both operate in the computer industry. There is no reason why both the disputed domain name cannot continue to co-exist with the Complainant's trade marks.
The Complainant offers no other evidence to support its claim that the Respondent has used the disputed domain name in bad faith.
The Complainant has failed to establish each of the elements required.
6. Supplemental filings
The Complainant filed a reply to the Respondent's Response, stating that it wished to address two issues raised in the Response. The supplemental filing was short, and the factual submission made is unlikely to be disputed by the Respondent (as it provides evidence of the Complainant's reputation which is publicly available from a trustworthy source). The Panel has taken the Complainant's further submissions into account when making its decision.
7. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in paragraph 4(a) of the Policy):
(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied.
The Panel further notes that the purpose of the Policy is to resolve 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. The Panel's role is to provide a remedy only in cases of “the abusive registration of domain names” or “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187.
A. Identical or Confusingly Similar
The Complainant owns numerous trade mark registrations in the United States which contain the term SAP. The earliest registration for the word mark SAP (Registration No. 2,538,716) was filed in 1998 and registered on February 19, 2002.
For the Complainant to succeed on this element it must be shown that the disputed domain name of “unisap” is confusingly similar to SAP.
The Complainant's trade mark is comprised entirely in the disputed domain name which indicates confusing similarity. The only difference between the trade mark and disputed domain name is the addition of the prefix “uni”. This is a popular pre-fix, and often is used to mean “one”. People may recognise the “uni” component as a pre-fix, and concentrate on the remaining term, which is the Complainant's trade mark.
On the other hand, the Complainant's trade mark is relatively short and only consists of three letters. With the addition of another three letters in front of the trade mark, there is a possibility that people will read the domain name an invented word, and will not identify SAP as a separate trade mark.
On balance, the Panel is of the view that the disputed domain name is confusingly similar to the Complainant's trade mark, primarily because the disputed domain name contains the Complainant's trade mark in its entirety.
The Respondent refers in the Response to the fact that no instances of actual confusion between the disputed domain name and the Complainant's trade mark has arisen in the past. This is irrelevant in determining confusing similarity for the purpose of paragraph 4(a)(i) of the Policy.
Accordingly the first element has been met.
B. Rights or Legitimate Interests
Paragraph 4(b)(i) to (iii) of the Policy lists three ways in which a respondent can demonstrate rights or legitimate interests in a disputed domain name. Subparagraph (ii) states that this can be shown if the Respondent is commonly known by the disputed domain name.
The Respondent is commonly known by the disputed domain name (namely Unisap, Inc.). Under this name the Respondent provides consulting services in relation to SAP programs. The Respondent claims that it has been in business in the United States, operating under the Unisap name, since 2000. However, this fact alone will not be sufficient to prove rights or legitimate interests if the Respondent has adopted the Unisap name to trade off the Complainant's reputation. The Respondent may have incorporated “Sap” into its business name to indicate the type of service offering it could provide, but the Panel does not have enough evidence before it to show that the Respondent did so with the intention that the public would by misled into believing that the Respondent was associated or affiliated with, or endorsed by, the Complainant.
One of the leading decisions in relation to resellers of trade marked goods is Oki Data Americas, Inc. v. ASD, Inc.
WIPO Case No. D2001-0903. However, in this instance the Respondent is not a reseller, and does not have a contractual arrangement or understanding with the Complainant. Accordingly, it is more appropriate to have regard to the case of DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160. There is some similarity between this case and the case presently before the Panel. The Respondent was obviously aware of the Complainant's trade mark at the time of registering the disputed domain name, as the Respondent's business directly relates to the Complainant's products. It is clear from the website that the Respondent is not affiliated with the Complainant. The Respondent has also operated the website for a significant period of time without receiving any notice of dispute from the Complainant.
Sub-paragraph 4(b)(i) states:
“…before any notice to the respondent of the dispute, the respondent used, or made 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.”
It appears that the earliest the Respondent was notified of the Complainant's concern with the Respondent using “Unisap” was in 2007.
The Respondent was clearly using the disputed domain name, prior to notice of any dispute in connection with an offering of goods and services. The question is whether such offering was bona fide, given the Complainant is the owner of the SAP brand and software.
It is well known in UDRP cases that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” (See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847). The Panel must therefore consider whether the Respondent's use of “SAP” is designed to trade on the fame of the Complainant, and whether it is an intentional infringement on the part of the Respondent.
On the facts provided by the parties, this is a difficult issue to determine. It is clear that the Complainant has not given the Respondent any authorisation or permission to use its registered trade marks, either in its business name or in the disputed domain name. However “SAP” is a well known and widely-used name of the Complainant's software products, and the Respondent's business directly relates to providing consultancy services in relation to this type of software. The Respondent appears lawfully entitled to provide these types of services and there is no suggestion from the Complainant that it has a monopoly over providing SAP consulting services.
On this issue, the following circumstances favour the Respondent:
- In the Complaint, the Complainant has gone to little effort to establish a prima facie case in respect of the second element, other than making mere assertions that the Respondent has no rights or legitimate interests in the disputed domain name. The same is also true of the third element.
- There is nothing in the evidence which suggests any intention on the part of the Respondent to trade on the goodwill in the Complainant's mark (See SAP AG v. Chris Pranzini,WIPO Case No. D2006-1525).
- The use of the Complainant's trade mark on the website is somewhat unavoidable, having regard to the nature of the Respondent's services. In most instances on the Respondent's website, the Respondent is using SAP as a descriptive term, rather than a trade mark.
- The Respondent has operated a respectable business under the “Unisap” brand for almost ten years, and the Complainant has only recently objected to the Respondent's branding. The Complainant has significant operations in the United States, where the Respondent is located, so it can be assumed that the Complainant has been aware of the Respondent for some time.
The Panel has also considered the purpose of the UDRP, namely to prevent the abusive registration of domain names. The Panel cannot, on the present record, confidently say that the Respondent has engaged in cybersquatting.
The following statement from the DaimlerChrysler case, supra, is also relevant here, albeit in relation to different goods and services:
“Under the present facts, if the Panel were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and aftermarket accessories could ever register a domain name descriptive of that business. The Policy was designed to deal only with the limited problem of cybersquatting. It was not designed to establish for the holder of a strong trademark a bar to entry of online competitors.”
While there may be ongoing trade mark disputes between the parties, this is not the proper forum in which to comment on them. Trade mark disputes involve larger issues which are inappropriately resolved under the Policy (See Jason Crouch and Virginia McNeill v. Clement Stein,
WIPO Case No. D2005-1201).
In these particular circumstances, the Respondent could be said to be providing legitimate services from the disputed domain name, under the Unisap brand. In the Panel's view, this is enough to tip the finely balanced scales in the Respondent's favour, on the provided record in this particular case.
The Panel finds that the Complainant has on balance failed to show that the Respondent lacks rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the findings above, it is not necessary to discuss the final element. However, the Panel notes that the Complainant provided little evidence or argument to demonstrate bad faith on the part of the Respondent. Also, while it is not necessary to make a definitive conclusion on this issue, the Panel notes that the Complainant's delay in bringing the Complaint does not assist them (See Francine Drescher v. Stephen Gregory,
WIPO Case No. D2008-1825).
7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson Sole Panelist
Dated: April 28, 2009
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