WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAP SE v. Anil Kumar Shetty, Zoreza Global Business Pvt. Ltd.
Case No. D2020-2985
1. The Parties
Complainant is SAP SE, Germany, represented by RNA IP Attorneys, India.
Respondent is Anil Kumar Shetty, Zoreza Global Business Pvt. Ltd., India.
2. The Domain Name and Registrar
The disputed domain name <sapprep.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 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 Respondent of the Complaint, and the proceedings commenced on November 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2020. Respondent sent emails to the Center email on December 29, 2020, and then on January 8, 12, and 23, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 12, 2021. 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
Complainant is a company organized under the laws of Germany. Founded in 1972, Complainant has evolved from a small, regional enterprise into a market leader in enterprise application software, business analytics and mobile solutions. The primary aim of Complainant has been to develop application software products for real time business processing efforts.
Complainant is recognized as a global market leader in providing collaborative, inter-enterprise business solutions for all types of industries and for every major market. Complainant employs 101,450 people of more than 145 nationalities as of September 30, 2020. It serves more than 440,000 customers in more than 180 countries worldwide to operate profitably, adapt continuously, and grow sustainably. In India, Complainant has over 3,000 customers. Complainant’s customers include 92% of the Forbes Global 2000 companies.
Complainant provides end-to-end software application solutions to its customers. One such application solution is SAP Business Suite, which is used for business-critical processes. With more than 48 years of experience, Complainant’s market-leading SAP ERP software serves large as well as small and midsize enterprises in more than 25 different industrial sectors. The software products of Complainant such as Business Suite are not available off-the-shelf, or through e-stores or through other general, commercial retail channels. Complainant’s Business Suite software products in India are not available with any computer hardware vendors, such as an original equipment manufacturer (OEM) product or as a gift.
Many of Complainant’s software titles require trained software professionals to load, execute, access, employ, utilize, store and display integrated end-to-end solutions derived from such software products. At each stage of utilization of many of Complainant’s software titles by its clients, professionals are required. Towards this end, Complainant has created education and training programs to meet these needs, and enters into contractual arrangements with third party software specialists (known as “Education Partners”) the world over, to provide education and training for provision and execution of the these functions. In India, for providing education-training services for its software products, Complainant has partnerships with specific entities to provide this training.
Any company/entity intending to provide training and education courses to third parties, or any entity intending to use SAP software, must have a license agreement in writing to use the software. A company or individual end user intending to use SAP software has to agree to an agreement called “End User License Agreement” (EULA). Only on obtaining a license does that entity becomes legally authorized to provide access to Complainant’s software for training purposes. No individual or company can provide access to Complainant’s software to third parties for any purpose including training, nor can it become eligible or authorized to act as ‘Education Partner’ of Complainant, if it does not have a valid license agreement from Complainant that expressly authorizes the use of SAP software and documentation for education and/or training and/or other specific purposes. This licensing policy helps Complainant reduce chances of illegal and unauthorized use of its software. It also contributes to protecting the reputation and goodwill attached to Complainant’s software products, which being highly specialized require knowledge and understanding of their features.
Complainant’s software products licensed for a particular purpose cannot be used for any other purpose. For example, training packages are expressly prohibited from being implemented as commercial industry solutions and vice versa. Complainant implements these procedures strictly and consequently maintains a detailed software license database that contains all relevant details of all SAP partners and the particular nature of the license.
Complainant markets, sells and distributes its products and services under the brand/ trade name SAP. Complainant actively uses its name internationally, with a dedicated website at “www.sap.com”. Complainant coined, adopted and commenced use of the trademark SAP in 1972. Since its adoption, the trademark SAP forms an integral part of Complainant’s trade and business. Complainant has continuously used the trademark SAP and SAP formative marks for its products and services. Complainant is the registered proprietor of the SAP trademarks and various SAP formative marks in over 75 countries.
Complainant has earned goodwill and reputation worldwide for its products and services under the SAP trademark and SAP formative marks. Due to the widespread use of Complainant’s software, applications, solutions and platforms globally and long-standing goodwill in the trade and business, the SAP trademarks and SAP formative marks have become highly distinctive of Complainant’s goods/services and are exclusively associated with the products and services of Complainant.
Complainant spends extensively on advertising and promoting its trademark/trade name SAP worldwide. Its sales and marketing expense was Euro 7.693 Billion in 2019. In the fiscal year 2019, Complainant’s total annual revenue was approximately Euro 27.63 Billion. It is noteworthy that the brand/trade name SAP ranks 18th on the list of Best Global brands (2020), which is issued by the agency, Interbrand. Interbrand has continuously ranked SAP as one of the top 50 most valued brands since 2001. It is further noted that as per Interbrand Best Global Brands, 2020, the brand/trade name SAP is valued at more than USD 28 Billion.
In India, Complainant commenced its business in 1992 and applied for registration of the SAP trademark in the same year. Complainant is the registered proprietor of SAP trademark in various classes, including registration nos. 989935, 576754, 576755 in class 9, registration nos. 890059, 578462 in class 16, and registration nos. 1238968, 1238969 in classes 41 and 42. Besides these registrations, Complainant has secured and applied for registration of its SAP trademark in several other classes. Complainant is listed on both the Frankfurt Stock Exchange and the New York Stock Exchange under the ticker symbol, SAP.
Complainant uses the Internet to render and advertise its products and services. Complainant owns the domain name <sap.com>, which is accessible throughout the world. Complainant registered this domain name on January 18, 1995. In India, Complainant registered the domain name <sap.in> on February 16, 2005. The details and/or information about Complainant’s business activities in various jurisdictions around the world are provided on its website located at “www.sap.com”. Online searches for Complainant’s name/mark SAP on popular search engines such as Google, Yahoo and Bing show only its products and services amongst the top most hits or results. Complainant has extensive presence over the social networking websites inter alia Facebook and Twitter.
Respondent registered the Domain Name on February 26, 2020 and it resolves to a website purporting to offer education and training programs for SAP related products and services.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
Complainant has submitted evidence to show it has used the SAP and SAP formative marks for many years prior to February 26, 2020, when the Domain Name was registered. Complainant owns the domain name <sap.com> dating back to 1995. Complainant obtained trademark registrations for SAP and SAP formative marks many years prior to the registration date for the Domain Name. Each of Complainant’s registrations remains valid and in full force. Thus, Complainant has rights in the SAP and SAP formative marks that predate registration of the Domain Name.
Complainant states that by virtue of the continuous and extensive use, widespread advertisement, promotional activities and global presence of the company through its subsidiaries, the trademark SAP has become a renowned name for consumers and trade alike, worldwide. Complainant claims the SAP trademark has attained the status of a well-known mark across the globe and hence is equally protected across all the classes of goods and services as listed in the Nice Classification of Goods and Services. Complainant adds that the SAP mark has a high degree of inherent distinctiveness denoting the products and services of Complainant only; has been used extensively over a long period and spanning a wide geographical area, including in India; has been given tremendous publicity and attained immense popularity; and is well recognized by members of the trade and public. Therefore, Complainant contends the mark is entitled to protection against its misappropriation for goods or services whether similar or different in nature to those of Complainant.
Complainant further contends that owing to its immense popularity, goodwill and huge consumer base in India, Complainant is the owner and user of the name and/or mark SAP and SAP formative marks including variations thereof, since 1972. Further, due to its extensive worldwide registrations and use over a substantial period, Complainant’s SAP and SAP formative marks have acquired the status of well-known marks globally as well as in India.
Complainant submits that it has not licensed or otherwise permitted Respondent to use the SAP trademark, or any other trademark incorporating the SAP mark.
Complainant explains that because the Domain Name incorporates Complainant’s famous SAP mark in its entirety and is nearly identical/confusingly similar to the mark, use of the Domain Name by Respondent will cause confusion. In registering the Domain Name, Respondent merely added to Complainant’s famous SAP mark the descriptive word “prep”, which is commonly used as a short form for the words “prepare” and/or “preparation”. Complainant asserts that such an addition does not alter the fact that Complainant’s famous SAP mark is the dominant portion of the Domain Name. It does not change the overall impression of the Domain Name as one being connected with Complainant, especially in light of the fact that it conveys the impression that the website provides SAP certification exam materials. Complainant claims that Respondent has used the mark SAP in its entirety to attract Internet users and consumers for commercial gain by abusing the goodwill and reputation associated with Complainant’s SAP mark.
(ii) Rights or Legitimate Interests
Complainant states that Respondent registered the Domain Name in the year 2020, several decades after Complainant invested millions of dollars in popularizing and seeking registration of the SAP mark and domain name <sap.com>. Moreover, by the time Respondent registered the Domain Name, Complainant had generated hundreds of millions of dollars in revenue under the SAP mark/name, and the SAP mark had already attained the status of a well-known mark. Therefore, Complainant contends that Respondent was well aware of Complainant’s prior rights in the SAP mark at the time of registration of the Domain Name. Complainant put Respondent on notice of its prior and exclusive rights in the SAP mark on October 19, 2020. However, Respondent continued to use the Domain Name to offer unauthorized SAP certification exams for various modules.
Complainant submits there is no credible legitimate reason for Respondent to have chosen the Domain Name. Respondent’s purpose in choosing it name was plainly to use the fame of Complainant’s SAP mark to generate web-traffic and to confuse Internet users who might be looking for Complainant and its famous suite of products and services. Respondent is not and has never been known by the SAP mark or name or by any similar name.
Complainant states that the Doman Name is being used by Respondent to illegally provide SAP certification exams. Respondent has adopted the nearly identical or deceptively similar Domain Name comprising the SAP mark for offering the same nature of services in order to attract Internet users to Respondent’s website, while creating a likelihood of confusion with Complainant’s SAP mark as to the sponsorship, affiliation, or endorsement of the site. Such use by Respondent is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Name.
Complainant submits that Respondent’s registration and use of the Domain Name seeks to take advantage of the goodwill accumulated by Complainant, thus making it clear that Respondent fraudulently registered the Domain Name with dishonest intention. Complainant submits that when Respondent registered the Domain Name, Respondent was aware of Complainant's activities, its SAP mark and its domain name <sap.com>. These facts establish a prima facie case that Respondent has no right or legitimate interest in the Domain Name and that pursuant to the Policy, the burden shifts to Respondent to show it does have a right or legitimate interests.
Complainant concludes that Respondent has no right to use the Complainant’s well-known SAP mark as a part of its domain name as Complainant has not authorized any such use. Unlicensed, unauthorized use of the Domain Name incorporating Complainant’s trademark is a strong evidence that Respondent has no rights or legitimate interests.
(iii) Registered and Used in Bad Faith
Complainant contends that the evidence submitted overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name in bad faith. The fame and prior use of Complainant’s SAP mark/logo makes it extremely unlikely that Respondent created the Domain Name independently. Further, Respondent’s choice of the Domain Name is allegedly based on nature of Complainant’s business of offering SAP certification exam materials. Given the prominence and well-known stature of Complainant’s SAP products and services, it is incomprehensible that Respondent was unaware of Complainant’s SAP mark at the time of registering the Domain Name in February 2020.
Extracts from Respondent’s website at “www.sapprep.com” clearly demonstrates the illegal activities where Respondent is offering unauthorized SAP certification exam materials to interested students or customers and using Complainant’s registered SAP trademark. Therefore, the Domain Name was registered in bad faith to take on infringing activities.
Complainant contends that even constructive knowledge of a famous/well known mark is sufficient. Despite prior knowledge, Respondent has registered the Domain Name, which is identical and/or deceptively and confusingly similar to Complainant’s SAP mark. This conduct evidences the bad faith registration and use. In doing so, Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website, by misleading them and creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the site.
Respondent’s choice of the Domain Name is not accidental and has been made to derive unfair monetary advantage by offering illegal SAP training courses. In support of this submission, Complainant contends that:
(i) Respondent’s choice of Domain Name is fraudulent and made with complete knowledge that the registration was unauthorized;
(ii) the SAP mark exclusively refers to Complainant and the suite of products/services provided by Complainant. Thus, the adoption of the SAP mark as part of the Domain Name by Respondent cannot be a coincidence and is designed to align Respondent’s business and services with Complainant, which reflects bad faith;
(iii) the Domain Name is identical or deceptively and confusingly similar to Complainant’s distinctive SAP mark. Respondent has wrongfully registered the Domain Name to make illegitimate gains by providing access to infringing SAP materials for valuable consideration to buyers; and
(iv) there are no honest business activities carried out by Respondent through the nearly identical or deceptively similar Domain Name. Registration and use of the Domain Name is intended to divert Internet traffic by using Complainant’s well-known SAP trademark. Thus, the registration of the Domain Name by Respondent is in bad faith.
Accordingly, Complainant submits that the Domain Name was registered and has been used in bad faith.
B. Respondent
Respondent did not submit a Response in reply to Complainant’s contentions. Respondent did send two emails to the Center. The first email dated January 21, 2021 stated in relevant part:
“Now we are incorporated Disclaimer in our website, so one can claim anything [sic].
We have not used any patent, logo, content what so ever. Please check “www.sapdumps.com” and other websites. I don't have any SAP content. We are just providing probable questions and answers thats all. This is nothing to with any company or their intellectual rights.
Request you to close the false case.
Respondent’s second email dated January 23, 2021 similarly stated in relevant part:
Request you to close the case.
We don't use anyones domain, logo, monogram, content, patent what so ever [sic]. All the domains are belongs to respective owners like SAP, Amazon, Microsoft, Adobe etc, We have mentioned this in our website very clearly as Disclaimer.”
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its globally well-known SAP trademark, based on its trademark registrations and use of the mark around the world, including in India where Respondent is located. See e.g., Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted,
WIPO Case No. D2013-2099 (finding that complainant has rights in its well-known mark ACCENTURE).
Further, the Panel determines that the Domain Name is confusingly similar to the SAP mark, as the Domain Name incorporates the mark in its entirety, while merely adding the phrase “prep,” which is a commonly used abbreviation for the words “preparation” or “prepare”. The addition of this abbreviation to Complainant’s SAP mark does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also SAP AG v. Domain Admin, WIPO Case No. D2006-1526 (domain name <sapeducation.com> found to be confusingly similar to Complainant’s SAP trademark); SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,
WIPO Case No. D2015-0565 (the addition of the suffix “teq” did not distinguish the domain name <sapteq.com> from Complainant’s SAP trademark).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its SAP trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used to resolve to a website that purports to offer training and education services affiliated with Complainant’s SAP products and services. Respondent’s unauthorized use of the Domain Name in this manner does not give rise to any rights or legitimate interests in it.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known SAP mark, and intentionally targeted that mark, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive SAP trademark in its entirety, along with the abbreviation “prep”. Given the fame of the SAP trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its SAP mark when registering the Domain Name. See SAP AG v. Peifang Huang,
WIPO Case No. D2014-0928 (finding the respondent was more likely than not aware of the complainant and had the complainant’s mark in mind when registering the domain name <sapcloud.com>); Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org,
WIPO Case No. D2013-2098 (finding that it was unlikely the respondent was unaware of complainant and its ACCENTURE mark at the time the domain name was registered, as complainant demonstrated that its mark was well-known globally and vested with significant goodwill).
This point is further confirmed by Respondent’s use of the Domain Name in connection with a website purporting to offer services (e.g., education and training programs) similar to those offered by Complainant and/or Complainant’s authorized Education Partners. As Complainant has indicated, Respondent is not authorized to offer these education services or any form of certification. Respondent’s email messages indicating that Respondent has purportedly added a disclaimer to its website does not change this analysis. The Panel finds that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the SAP trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. See SAP AG v. Peifang Huang,
WIPO Case No. D2014-0928 (panel finds that the domain name was registered and used in order to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with the SAP mark).
In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
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 Domain Name, <sapprep.com>, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: February 11, 2021
