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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Saperion AG v. Lucky Panjaito/Saperion Group

Case No. D2008-0693

 

1. The Parties

Complainant is Saperion AG of Berlin, Germany, represented by Wцhlermann Lorenz & Partner.

Respondent is Lucky Panjaito/Saperion Group of Jakarta, Indonesia.

 

2. The Domain Name and Registrar

The disputed domain name, <saperiongroup.com> is registered with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 2, 2008. On May 5, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 6, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing contact information, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 13, 2008.

On May 11, 2008, the Center received an e-mail communication from “Lucky P” advising the Center, among other things, that:

- He had been offered an opportunity “a few years back [] to promote and market the [Saperion Company’s] product in my country.”

- Acknowledging that he had had registered and maintained the domain name to “help[] the Saperion brand.”

- Indicating that he had no objection to releasing the domain name, but requesting reimbursement for the “effort, time & capital” spent in promoting [the Saperion Company’s] product.

The Center forwarded the message to the Complainant inquiring whether the proceedings should be suspended in order to facilitate a settlement. Complainant requested that the proceedings be suspended. However, following the suspension, Complainant requested that the proceedings be reinstated. The proceedings resumed on June 24, 2008 and, in accordance with the Rules, paragraph 5(a), the due date for Response became July 5, 2008.

Respondent did not submit any formal response to the Complaint. Accordingly, the Center notified Respondent’s default on July 10, 2008.

The Center appointed Debra J. Stanek as the sole panelist in this matter on July 15, 2008. 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 software development company incorporated in Berlin Germany. Complainant owns a German trademark registration for the mark SAPERION, which was registered in 1998, as well as registrations elsewhere for the mark SAPERION (some of which include design elements), in the European Community, Singapore and the United States of America (“United States”), registered from 2000 through 2003. Complainant also controls a group of other entities, including subsidiaries in the United States, United Kingdom of Great Britain and Northern Ireland, Singapore, and Switzerland, each of which include the name “Saperion” and which constitute the “Saperion Group.”

Respondent registered the disputed domain name in 2005. The disputed domain name leads to a home page that, according to the Complaint, displays a prior version of Complainant’s SAPERION mark and lists Complainant’s customers; it also contains a link to Complainant’s website.

 

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant is the registered owner of numerous SAPERION trademarks, which it uses for software and software services.

The disputed domain name includes the SAPERION mark and adds the term “group”. The addition of that term clearly refers to a group of businesses that are closely related to or affiliated with “Saperion.” Indeed, Complainant is the owner of a group of “Saperion” companies. Therefore, the domain name <saperiongroup.com> is confusingly similar to Complainant’s SAPERION mark.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

Complainant asserts that Respondent is using the disputed domain name to create the impression that it is a close affiliate of Complainant and to divert potential customer by representing Respondent as a contact for Complainant.

That this is the case is evidenced by the fact that Respondent’s “saperiongroup.com” website displays a prior version of Complainant’s SAPERION mark along with a list of Complainant’s well-known customers.

B. Respondent

Respondent did not reply to Complainant’s contentions (except for the communication mentioned above).

 

6. Discussion and Findings

In order to prevail, Complainant must prove that:

(i) The disputed domain name is identical or confusingly similar to Complainant’s mark.

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name.

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

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).

Although Respondent has not answered the Complaint (except for the communication noted above), a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing each of the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).

A. Identical or Confusingly Similar

Complainant has established its rights in the mark SAPERION by virtue of the evidence of its several registrations for the mark.

Complainant has also established that the disputed domain name is identical or confusingly similar to its mark. Excluding the top-level domain, the disputed domain name consists of Complainant’s SAPERION mark in its entirety, followed by the term “group”. Here, the Panel finds that the addition of the generic term “group” reinforces the trademark function of the SAPERION mark, as consumers are likely to understand that the disputed domain name is connected to Complainant’s companies and services. Therefore, the disputed domain name is confusingly similar to the SAPERION mark.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

Paragraph 4(c) of the Policy sets out the following examples which can provide evidence of a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

While the Panel is concerned that Complainant’s argument and evidence is quite thin,¹ it has – barely – made a prima facie showing as to the examples set out in Paragraph 4(c)(i)-(iii) of the Policy.

As an initial matter, while the Complaint does not expressly indicate that Complainant has not authorized Respondent’s use of the domain name, the Panel finds that fairly implied. Elsewhere in the Complaint, Complainant asserts that Respondent’s use of the domain name was without Complainant’s knowledge.

Under the particular circumstances presented here, including the fact that the website associated with the disputed domain name uses Complainant’s SAPERION mark (and links to Complainant’s website) in a manner that unequivocally refers to Complainant, it does not appear that Respondent is or could have been making or preparing to make a legitimate use of the name “saperion”. See Policy, paragraph 4(c)(i). The “Whois” printout, does identify the Registrant “organization” as “Saperion Group”; however, under these circumstances, the Panel does not credit that as establishing that the disputed domain name is the legitimate name of Respondent’s organization. See Policy, paragraph 4(c)(ii).

Apart from Complainant’s conclusory assertion that “Respondent has no rights or legitimate interests in respect of the domain name”, Complainant has provided no argument and little evidence regarding whether Respondent’s use is noncommercial or otherwise “fair.” Nonetheless, under the circumstances of presented here, solely for purposes of evaluating Complainant’s prima facie case, the Panel finds that this use of the domain name is not a bona fide noncommercial use or a fair use. See Policy, paragraph 4(c)(iii).

The Panel draws adverse inferences from Respondent’s failure to respond to the Complaint. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).

(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).

As to the third element, Complainant argues that Respondent is using the domain name to divert potential customers of Complainant’s services to Respondent by suggesting Respondent is an authorized contact for Complainant.

The Panel agrees. Complainant’s rights in the SAPERION clearly predate Respondent’s registration and use of the domain name. Further, Respondent’s use of “saperion” is clearly intended to refer to Complainant to and to associate Respondent with Complainant. As a consequence of those facts, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that it is unlikely that Respondent registered the <saperiongroup.com> domain name – to which it had no legitimate claim – without intending to benefit from it. The “saperiongroup.com” web page makes it clear that Respondent was intending to attract Internet users seeking Complainant or other companies affiliated with Complainant.

Under these circumstances, along with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the domain named in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <saperiongroup.com> be transferred to Complainant.

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Debra J. Stanek
Sole Panelist

Dated: July 29, 2008

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¹ Complainant’s sole argument is the bare assertion that Respondent lacks legitimate rights or interests in the domain name. Complainant’s only evidence relating to Respondent’s registration and use of the domain name consists of a copy of “Whois” search results for <saperiongroup.com> and a printout of the home page of the “saperiongroup.com” website.