WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SAP SE v. Whois Agent, Domain Protection Services, Inc. / Yacine Boukera Abaci, Gta

Case No. D2019-2915

1. The Parties

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

The Respondent is Whois Agent, Domain Protection Services, Inc., US / Yacine Boukera Abaci, Gta, Algeria.

2. The Domain Name and Registrar

The disputed domain name <realsapexams.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was initially filed for two domain names with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 27, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On the same day, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2019 providing the registrant and contact information regarding the two disputed domain names disclosed by the Registrars, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain names for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain names will no longer be included in the current Complaint. The Complainant filed an amended Complaint on December 5, 2019, removing one of the two disputed domain names initially stated in the Complaint.

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 December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.

The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on January 8, 2020. 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 SAP SE is a European multinational software corporation that makes enterprise software to manage business operations and customer relations.

The Complainant is the proprietor of several trademark registrations consisting of or including the sign SAP, inter alia:

- US trademark 73779534 (reg. 2538716) SAP, in classes 9, 41, and 42, registered on
February 19, 2002.
- US trademark 76293595 (reg. 2688100) SAP (fig), in class 41, registered on February 18, 2003.
- US trademark 76293589 (reg. 2905468) SAP (fig), in class 9, registered on November 30, 2004.
- US trademark 76293594 (reg. 2688099) SAP (fig), in class 42, registered on February 18, 2003.
- European Union Trade Mark (“EUTM”) 013107818 SAP, in classes 9, 16, 35, 38, 41, and 42, registered on December 16, 2014.
- EUTM 1270693 SAP, in classes 9, 16, 18, 25, 28, 41, and 42, registered on July 9, 2002.
- EUTM 2081966 SAP (fig), in classes 9, 16, 18, 25, 28, 41, and 42, registered on February 15, 2002.

The disputed domain name was registered on February 20, 2018, and resolves to a website offering “Real SAP Exams Prep”, including the sale of “SAP Certified” materials for EUR 80 each, with the title “SAP Exam Dumps”.

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments can be summarised as follows:

- The Complainant is a leader in enterprise software applications, analytics, mobile solutions and related services. The Complainant is headquarted in Germany and employs over 99,000 people worldwide, representing over 140 nationalities. It serves over 437,000 customers in over 180 countries.

- The Complainant owns hundreds of trademark registrations for its SAP mark throughout the world.

- The disputed domain name <realsapexams.com> fully incorporates the Complainant’s well-known trade name and registered trademark SAP.

- The Respondent has no legitimate interest in or legitimate, bona fide business purpose for using the disputed domain name <realsapexams.com>.

- The landing page for the disputed domain name <realsapexams.com> contains the title “SAP Exam Dumps”. The exams offered seem unauthorized copies of genuine SAP certification exams.

- The registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark is sufficient evidence of bad faith registration and use.

As a consequence, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, the Panel shall grant the remedies requested if the Complainant proves that:

(i) the disputed domain name 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 in respect of the disputed domain name; and

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

Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, for this purpose the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has trademark rights in the US and the European Union for SAP, both word and figurative, in relation to products and services. Evidence of the well-known character of this trademark has been filed.

The disputed domain name wholly incorporates the Complainant’s trademark SAP with the additional expressions “real” and “exams”, that can be considered as descriptive.

As stated in Crédit Industriel et Commercial v. Manager Builder, Builder Manager, WIPO Case No. D2018-2230:

“The disputed domain name incorporates the CIC trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “banks”, which even is the English translation of the French term “banques” as it is reflected in Complainant’s CIC BANQUES trademark, does not avoid the confusing similarity arising from the incorporation of Complainant’s CIC trademark in the disputed domain name.”

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s SAP trademarks as provided under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0 , section 2.1). Given that the Respondent has defaulted, it has not met that burden.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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’s website cannot be considered as a bona fide offering of services or fair use, since the website constantly refers to the Complainant’s main SAP (fig) mark, which is widely known for the software and other solutions to which the exams allegedly offered refer. In addition, the page is identified by the legends such as “Real SAP Exams Prep”, “SAP Certified” or “SAP Exam Dumps”, giving Internet users the impression that this is a service of the Complainant.

As stated in SAP SE v. Swarup Choudhuri, WIPO Case No. D2018-1829:

“The disputed domain name incorporates the SAP and SAP HANA trademarks entirely with the addition of the descriptive element “tutorial”. This makes it likely that Internet users may regard the disputed domain name as being an authorized online location offering training for the Complainant’s SAP HANA products. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that offers SAP HANA tutorials, certification and trainings.

On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the SAP and SAP HANA trademarks to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an authorized online location offering training for the products of the Complainant, without disclosing the lack of any relationship with or authorization by the Complainant. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.”

In summary, the Panel finds that paragraph 4(a)(ii) set forth in the Policy is present.

C. Registered and Used in Bad Faith

According to paragraph 4(b)(iv) of the Policy, registration or use of a domain name will be considered in bad faith when:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

The disputed domain name is active for a website offering “Real SAP Exams Prep”, “SAP Certified” materials under the title “SAP Exam Dumps” with a clear intention of commercial gain.

The reasoning in SAP SE v. Swarup Choudhuri, WIPO Case No. D2018-1829 is again applicable:

“The Respondent has not denied that the disputed domain name is being used in connection to a website that offers SAP HANA tutorials, certification and trainings without disclosing the lack of authorization from the Complainant. Such use may confuse Internet users that they are offered authorized training services with a quality that is controlled by the Complainant. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s SAP and SAP HANA trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the services offered at the Respondent’s website. Therefore, the Panel finds that the disputed domain name has been used in bad faith”.

As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochki, WIPO Case No. D2017-0334:

“It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327)”.

The use of a privacy service also seems to confirm the bad faith of the Respondent. While there may be circumstances that make the use of a privacy service legitimate, several decisions under the Policy have considered it a circumstance that contributes to bad faith when it is combined with other circumstances. In GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta, WIPO Case No. D2016-2563, the panel found that:

“Although privacy services might be legitimate in certain circumstances, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.”

Thus, the Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent in accordance with paragraph 4(b) of the Policy. In the light of the above, the Panel finds that the Complainant has established registration and use of the disputed domain name in bad faith and concludes that paragraph 4(a)(iii) of the Policy is satisfied.

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 <realsapexams.com> be transferred to the Complainant.

José Ignacio San Martín Santamaría
Sole Panelist
Date: January 21, 2020