WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SAP SE v. Moritz Honig, VCSB Ltd.

Case No. D2018-1346

1. The Parties

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

The Respondent is Moritz Honig, VCSB Ltd. of Sliema, Malta, self-represented.

2. The Domain Name and Registrar

The disputed domain name <sap.app> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2018, 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 sent an email communication to the Complainant on June 20, 2018 providing the full 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 June 20, 2018.

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 June 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2018. The Response was filed with the Center on July 5, 2018.

The Complainant submitted an unsolicited supplemental filing on July 10, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 11, 2018. 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.

Having regard to paragraphs 10 and 12 of the Rules, the Panel declines to consider the Complainant’s unsolicited supplemental filing since, in the opinion of the Panel, the Complainant has failed to provide any persuasive reason why that filing should be admitted.

4. Factual Background

The Complainant is a European company headquartered in Germany. It is a provider of enterprise software applications, analytics, mobile solutions and related services.

The Complainant is the owner of numerous registrations for the trademark SAP worldwide, including e.g. European Union Trade Mark number 013107818 for the word mark SAP, registered on December 16, 2014 in Classes 9, 16, 35, 38, 41 and 42.

The disputed domain name was registered on May 5, 2018.

According to evidence submitted by the Complainant, the disputed domain name has resolved to a web page which states “Coming Soon” and “[email protected]”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has traded since 1972 and is a market leader in its sector. It states that it employs over 91,000 people worldwide and serves over 388,000 customers in over 180 countries. It submits that millions of people worldwide work daily with SAP branded products and that SAP is ranked at number 21 in the Interbrand list of the world’s top 100 brands. The Complainant exhibits evidence of its trading and business profile, including total revenue in 2017 of EUR 5.26 billion.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits that the disputed domain name is in fact identical to its trademark SAP.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant says that it has never authorized the Respondent to use its trademark SAP, that the Respondent has no trademark rights in that name and that the Respondent is not making any bona fide commercial use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that the disputed domain name is identical to its famous trademark and that there is no plausible explanation for its registration and use. The Complainant adds that the Respondent’s web page has no content and that the Respondent can show no legitimate business interest in the disputed domain name.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent does not address the contention that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent submits that it has rights or legitimate interests in respect of the disputed domain name. It states that it is a software developer for platforms, mobile and web applications within the sports industry. It exhibits publicity headed “Cloud Platforms for Sport Education & Administration” dated 2018 which makes reference to both “PSP Media” and the Respondent.

The Respondent states that it decided to establish a “Sports Administration Platform” given the success of the administration features of its product. It submits that the disputed domain name <sap.app> reflects the acronym SAP for “Sports Administration Platform” and indicates a credible and legitimate intent which does not seek to capitalize on the reputation or goodwill of the Complainant’s trademark.

The Respondent states that the disputed domain name comprises a three-letter acronym which has hundreds of potential meanings and is used by a wide variety of third parties. The Respondent produces a list generated by a website named “Acronym Finder” which includes a large number of terms represented by the initials “SAP”.

The Respondent denies that the disputed domain name was registered or has been used in bad faith. It states that it has never targeted the Complainant’s trademark and that it has provided a reasonable explanation for its registration and use of the disputed domain name. It asserts that the passive holding of the disputed domain name does not indicate bad faith and that a complex software application takes time to develop. The Respondent submits that the disputed domain name has pointed to a parking page which makes no reference to the Complainant, its trademark or products.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the name and mark SAP. The disputed domain name is identical to the Complainant’s trademark but for the generic Top-Level Domain (“gTLD”) “.app” which is typically to be disregarded for the purposes of comparison. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Respondent’s submission that the disputed domain name comprises a three-letter term that could have a variety of meanings and need not necessarily refer to the Complainant’s trademark. Nevertheless, the question remains of whether the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of targeting that trademark, or genuinely in pursuit of an unconnected bona fide commercial venture. While the Respondent has asserted that it intended the disputed domain name to refer to its nascent “Sports Administration Platform”, it can show no actual use of the disputed domain name in that regard and none of the documentary evidence that it produces makes reference to that term. The Panel does not therefore accept that the Respondent has established either the use, or demonstrable preparations to use, the disputed domain name for the purpose of any bona fide offering of goods or services. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s submissions to the effect that its trademark SAP has been used for many years and is widely known in commerce. The Respondent having failed to establish that it has any rights or legitimate interests in respect of the disputed domain name, the Panel draws the inference that the Respondent, a software developer, registered the disputed domain name in the knowledge of the Complainant’s trademark SAP and more likely than not with the intention of taking unfair advantage of that mark by, for example, implying an association between the disputed domain name and the Complainant’s trademark and/or by preventing the Complainant from reflecting its trademark in the gTLD “.app”. In the light of this finding as to the Respondent’s likely intent, the Panel does not consider that the Respondent’s “passive” holding of the disputed domain name precludes a finding of use of the disputed domain name in bad faith: see for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.
D2000-0003. The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

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 <sap.app> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: July 13, 2018