The registrant of SAP.ai believed that he had a quality LLL .ai domain in his possession; along with 10,000 other domains, this domain investor was never hit with a UDRP before this one.
SAP SE, Germany filed a UDRP at the WIPO, however, asserting rights to the SAP acronym. Founded in 1972, the company’s financial metrics are quite impressive:
The Complainant has a complement of 107,934 employees worldwide as of March 31, 2024, representing 157 nationalities. It reported total revenue of EUR 8.04 billion in its 2023 financial year, of which 41 per cent derives from the Americas, including the United States, where the Respondent is located.
The Respondent attempted to sell the domain for $49,000 dollars initially, which was then lowered to $40,000 dollars. It could have been a quick sale, indeed, as – in general – three letter acronyms are not prone to successful UDRP clawbacks. The Respondent, however, chose not to be represented by an attorney, a critical flaw in our opinion.
The WIPO panelist noted that the Respondent’s ability to query the historic WHOIS which pointed to the Complainant’s prior ownership of the domain indicates that he was targeting the Complainant, primarily, when he acquired the domain at an .ai auction.
Final decision: Transfer the domain SAP.ai to the Complainant.
Copyright © 2024 DomainGang.com · All Rights Reserved.ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
SAP SE v. Nathaniel Hunt Case No. DAI2024-00531. The Parties
The Complainant is SAP SE, Germany, represented by K & G Law LLC, United States of America (“United States”).
The Respondent is Nathaniel Hunt, United States.
2. The Domain Name and Registrar
The disputed domain name sap.ai is registered with Dynadot Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2024. On June 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Dynadot Privacy Service / Registrant ID 1707115_nic_ai) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2024, providing the 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 28, 2024.
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 July 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2024. On July 18, 2024, the due date for Response was extended pursuant to paragraph 5(b) of the Rules to August 1, 2024. On August 1, 2024, the Response was filed with the Center. On August 5 and August 6, 2024, the Parties filed Supplemental Filings.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 5, 2024.
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 European Company headquartered in Germany, founded on April 1, 1972, and listed in Frankfurt, Germany and New York, United States. It is a developer of end-to-end enterprise software applications, analytics, intelligent technologies, experience management, and related training. The Complainant’s customers generate 87 per cent of total global commerce, representing USD 46 trillion.
99 of the 100 largest companies in the world are customers of the Complainant. 80 per cent of the Complainant’s customers are small to medium sized enterprises. The Complainant has a complement of 107,934 employees worldwide as of March 31, 2024, representing 157 nationalities. It reported total revenue of EUR 8.04 billion in its 2023 financial year, of which 41 per cent derives from the Americas, including the United States, where the Respondent is located.The Complainant does business under the SAP mark. Said mark was recently ranked at number 20 in Interbrand’s Best Global Brands of 2023. Also in 2023, the same year in which the disputed domain name was acquired by the Respondent, the Complainant released multiple generative artificial intelligence (“AI”) features in its software and continues to develop AI partnerships and additional scenarios for its software.
The Complainant owns a family of hundreds of SAP registered trademarks with effect in various territories worldwide. The mark is used alone and in combination with devices. For example, the Complainant is the owner of United States Registered Trademark Number 2538716 for the word mark SAP, registered on February 19, 2002, in Classes 9, 41, and 42. The Complainant is also the owner of Anguilla Registered Trademark Number 5967 for the word mark SAP, registered on July 1, 2017, in Classes 9, and 42.
The Complainant is the owner of the domain name sap.com and promotes its business from the associated website.
The Respondent is an individual based in the United States and describes itself as a buyer and seller of generic domain names.
The disputed domain name was registered on February 10, 2015. However, the Respondent notes that it acquired the disputed domain name via an expired domain name auction in June 2023. A historic WhoIs report produced by the Respondent shows that the disputed domain name was originally registered by a third party, and was later acquired by the Complainant on or about August 18, 2017. It was held by the Complainant until about February 22, 2023, after which it reverted to the “.ai” Registry and was then auctioned. Information from the Registry’s public auctions website shows that the auction began on May 26, 2023, and closed on June 5, 2023. There were 20 bids and the successful bid price was USD 1,523.
The first available historic WhoIs entry following said auction is dated July 23, 2023, and shows the Respondent’s name in the registrant name field, and that the nameservers associated with the disputed domain name have been changed to those of a domain name aftermarket website.
The Complainant’s screenshot dated June 14, 2024, shows that the disputed domain name points to a page on said aftermarket website on which the disputed domain name is offered for sale in the sum of
USD 49,000, or “lease to own” in the sum of USD 1,634.On July 15, 2024, the Respondent wrote to the Complainant stating that it could mount a strong defense against the Complainant regarding the Complainant’s prior ownership of the disputed domain name, the fact that AI is “hot”, that the Respondent was not targeting the Complainant, and that USD 49,000 is a normal or even low price for the disputed domain name, which would be comprehensively illustrated for the Panel.
The Respondent indicated that it would settle for a price of USD 40,000.The Respondent produces evidence of the asking prices of three letter “.ai” domain names listed on an aftermarket website. The Respondent states that there are 1,571 three letter domain names listed with a “Buy It Now” price on said site, and that one third of these are priced at or above USD 49,000.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name incorporates its SAP trademark, and that this is sufficient to establish that the disputed domain name is confusingly similar thereto.
The Complainant asserts that the Respondent has no trademark or other legitimate rights in the SAP trademark, including no authorization or license from the Complainant. The Complainant notes that the disputed domain name is offered for sale but adds that offering a domain name for sale does not itself establish rights or legitimate interests. Where a domain name is identical to a complainant’s mark, previous panels have held that such composition carries a high risk of implied affiliation and cannot lead to a finding of rights or legitimate interests in the domain name concerned.
The Complainant contends that the registration of a domain name that is confusingly similar to a famous mark by an entity with no relationship with the mark and/or no plausible explanation for the usage is an indication of registration and use in bad faith. The Respondent’s actions regarding selling the disputed domain name are sufficient to establish bad faith under paragraph 4(b)(i) of the Policy. It is reasonable to infer that the Respondent sought a buyer interested in the disputed domain name for its trademark value. Non-use or “passive holding” of the disputed domain name does not prevent a finding of bad faith. It is highly implausible that the Respondent could put the disputed domain name to any good faith use because the Complainant’s well-known mark has been used internationally for many decades.
B. Respondent
The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Respondent concedes that the disputed domain name is identical or confusingly similar to the Complainant’s trademark while asserting that such mark is generic and non-distinctive.
The Respondent contends that it has rights and legitimate interests in the disputed domain name because it makes a living buying and selling generic domain names, owns approximately 10,000 domain names purchased over the last decade, has never had a UDRP complaint filed against it, and does not target trademark owners.
The Respondent states that it learned in preparing the Response that the Complainant had been the prior owner of the disputed domain name from 2017 to 2023 and let it lapse, after which the Respondent purchased it at an expiring domain name auction in June 2023. The Respondent asserts that there is precedent in a previous case under the Policy that where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, ordinarily the
trademark holder should be denied relief, whether the mark is a common law or registered mark, and whether the mark is “strong” or “weak”. The Respondent submits that regardless of the size of the Complainant’s business it does not have dominion over the letters “s”, “a”, and “p”.
The Respondent asserts that it bought the disputed domain name because it had substantial generic value independent of the Complainant, adding that the value of generic “.ai” domain names has exploded since late 2022, including the value of acronyms and less common English words such as “sap”. The Respondent submits that it was not targeting the Complainant, noting that the Complainant should have renewed the disputed domain name and has since changed its mind. The Respondent states that it is not trying to persuade anyone that it represents the Complainant’s business, adding that the Complainant effectively represented that it no longer wished to own the disputed domain name.
C. Complainant’s Supplemental Filing
In summary, the Complainant contends as follows:
The Complainant is investigating its oversight in failing to renew the disputed domain name. The previous case relied upon by the Respondent notes that in ordinary cases, the existence of a prior registration that has lapsed is entirely irrelevant to the questions of legitimate interests and bad faith, adding that the Complainant’s failure to renew does not mean that the Respondent acquired the disputed domain name in good faith, and that the registration of the disputed domain name was, at best, opportunistic.
The Complainant contends that given the international fame of its brand and the fact that it offers AI innovations for businesses, the value of the disputed domain name derives entirely from its association with the Complainant. The Respondent is not using “sap” in its dictionary sense but is offering the disputed domain name for a high price, originally USD 49,000 and then reduced to USD 40,000 in correspondence between the Parties.
A previous case under the Policy illustrates that it is the obligation of domainers to ascertain whether a domain name (even if bought via an automated drop-catch) infringes on the trademarks of others, and the Respondent did not meet that obligation. Even assuming that the Respondent only learned of the international software giant that is the Complainant after the Complaint was filed, the Respondent demanded a high price for the Complainant to reclaim it, thus demonstrating registration and use in bad faith.
D. Respondent’s Supplemental Filing
In summary, the Respondent contends as follows:
The Respondent rejects the Complainant’s interpretation of the previous case relied upon by the Respondent. The panel in said case makes it clear that the fact that the complainant had dropped the domain name should be taken as a point against its entitlement to recover it via the Policy.
The Complainant misleads the Panel when it states that the value of the disputed domain name derives entirely from its association with the Complainant. The value of short acronyms and words in the “.ai” domain has exploded over the past couple of years. The Respondent rejects the notion that its effort to come to a settlement after the Complaint was filed is evidence of bad faith.
The Respondent asserts that the pricing evidence which it has produced means that the Respondent’s price is normal in the context of three letter “.ai” domain names, if not low when the dictionary value of “sap” is factored in compared to “clunkier” combinations such as afq.ai or aij.ai.
6. Discussion and Findings
A. Preliminary Matter: Parties’ Supplemental Filings
Both of the Parties submitted Supplemental Filings in this matter.
Paragraph 10 of the Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition.
Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.
In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance). WIPO Overview 3.0, section 4.6.
In the present case, the Panel considers it appropriate to admit the Parties’ Supplemental Filings. In each case, these address matters that could not reasonably have been anticipated by the party concerned in its filing in chief. Any submissions from the filing in chief that have been repeated in the corresponding supplemental filing have been ignored in the latter.
B. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel notes that the Respondent has effectively conceded this element of the Policy in the Response. The Panel finds the first element of the Policy has been established.
C. Rights or Legitimate Interests and Registered and Used in Bad FaithDue to the nature of this case, involving an alleged domain name investor, the issue of the Respondent’s rights and legitimate interests and whether the disputed domain name has been registered and is being used in bad faith are best dealt with in combination. The Respondent’s position is that it has acquired the disputed domain name exclusively for its value as a dictionary term or acronym, and that its trading in the same constitutes a legitimate interest. If such a claim is made out, it would follow that the Complainant had failed to prove that the Respondent did not have rights or legitimate interests in the disputed domain name.
Likewise, it would follow that the Complainant had failed to prove that the Respondent had registered and used the disputed domain name in bad faith.Consequently, in the present case these two elements of the Policy turn upon whether it is reasonable to infer that the Respondent, when acquiring the disputed domain name at auction, knew of and intended to trade off the Complainant’s trademark rights in the SAP mark, and/or was willfully blind to the existence of trademark rights in the disputed domain name on the one hand, or whether on the other hand, the Respondent’s acquisition of a domain name consisting of a dictionary term or short acronym was not per se illegitimate or a bad faith activity, despite the fact that it knew or ought to have known of the Complainant and its rights, as the Respondent had no intent to target the Complainant’s rights.
A substantial issue for the Respondent to overcome in this particular case is the fact that the Complainant’s mark is extremely well known, and arguably famous. It is a three letter mark that in the technology world denotes the Complainant almost exclusively (similar in that sense to the third party mark IBM). This distinguishes the present case from the typical situation in which panels under the Policy (including the present Panel) have held that three letter domain names may legitimately be acquired for their inherent value, and that in most of such cases the acquisition will usually be for bona fide purposes. The right to register such domain names is not unlimited and will not be bona fide in circumstances where the registrant has deliberately targeted the complainant’s trademark. Such targeting may be demonstrated by direct evidence or inferred from the distinctiveness and fame of the relevant trademark.
A brief review of the Complainant’s status and history in the factual background section above amply demonstrates the exceptional renown of its SAP mark, which is substantial in the location where the Respondent is located as well as worldwide. The term “sap” can also refer to a dictionary word (with meanings including the vital circulating fluid of a plant), and a pronounceable acronym of three letters which might appeal to a wide variety of non-technology businesses, these being the connotations upon which the Respondent relies. The Panel does not understand the Respondent to be contesting the fact that, in the technology field, there is only one meaning for the letters “SAP” as far as most people are concerned, and that is the Complainant. Instead, the Respondent’s claim is that what it had in mind when registering the disputed domain name is either the dictionary word “sap”, or the acronym of those three letters, and that it had no intention to trade off third-party trademark rights.
The fact that the Complainant is prominent in the technology field is of considerable significance in the present case because the Respondent chose to acquire a domain name featuring an exact representation of the Complainant’s mark in the “.ai” country-code Top-Level Domain (“ccTLD”). This ccTLD denotes Anguilla, United Kingdom, but that is not the reason for the Respondent’s interest in it. The initials of the ccTLD are also the abbreviation for artificial intelligence, or “AI”. The Respondent itself notes that values of “.ai” domain names have “exploded” in recent years “since ChatGPT went viral in late 2022”. The Respondent thereby unequivocally links its registration of the disputed domain name to the technological sense of the initials “AI”, given that ChatGPT is a generative artificial intelligence tool credited with accelerating worldwide public interest in AI technology. It is against that background, therefore, that the Respondent’s intention in acquiring the disputed domain name must be assessed.
The Respondent’s position is that the value explosion of domain names in the “.ai” ccTLD includes acronyms and less-common English words, such as the dictionary word “sap”. However, even on the Respondent’s own account, the term in the disputed domain name, incorporating this particular ccTLD, must be viewed in a technological context. The Panel has therefore asked itself, in that context, what would the disputed domain name sap.ai likely mean to the typical observer, including a typical domainer such as the Respondent?
The Panel infers on the balance of probabilities that it would mean the Complainant and its mark in light of their fame, and in particular the Complainant’s activities in the field of artificial intelligence, which were established no later than 2023.2 In this particular context, the disputed domain name does not mean an unrelated acronym or the dictionary word “sap”, or would only do so to a much lesser extent than the trademark meaning.The circumstances of this case may therefore be contrasted with the recent case of Sonata Software Limited
v. Narendra Ghimire, Deep Vision Architects, WIPO Case No. DAI2023-0051 in which the complainant was also a technology company and the domain name at issue was both a dictionary word and an exact match for the complainant’s mark in the “.ai” ccTLD. As here, the respondent was a domain name investor who had acquired the domain name concerned and immediately placed it for sale on an aftermarket website. The panel found that the respondent was entitled to register and sell the domain name at issue and that there was no evidence of targeting of the complainant’s mark. Crucially, however, the panel found that the complainant’s evidence was insufficient to convince the panel that its mark was well known in the location where the respondent was based, and also found that the complainant had not shown that it was overtly engaged in AI activities when the domain name was acquired. Furthermore, the respondent in that case had denied prior knowledge of the complainant, which denial was accepted by the panel. In the present case, the Respondent does not make such a denial.Even if the Panel had found that the Respondent had been unaware of the Complainant’s prominence in the technology field before it participated in the auction of the disputed domain name, the Panel would have taken the view that as a domain name investor the Respondent had an affirmative obligation to avoid the registration of a trademark-abusive domain name. WIPO Overview 3.0, section 3.2.3.3 It would have been extremely straightforward for the Respondent to have discovered the Complainant’s prominence in this field by way of a basic Internet search, for example using the term “SAP” and “AI”, or to have searched its local trademark register for the mark SAP in the use class relating to technology.4 There is no evidence before the Panel that the Respondent made any such good faith attempts in this case. It is important to remember that the Respondent made a representation to its Registrar in terms of paragraph 2 of the Policy that to its knowledge the registration of the disputed domain name would not infringe upon or otherwise violate the rights of any third party. While this representation falls outside the “Applicable Disputes” section of the Policy in paragraph 4(a), it is nevertheless evidentially relevant on the question of whether any good faith due diligence was done to support the making of such a representation, even if the representation was being made to a third party.
Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. WIPO Overview 3.0, section 3.2.2.
On the other hand, where the complainant’s mark is not inherently distinctive and it also corresponds to a dictionary term or is otherwise inherently attractive as a domain name (e.g., it is a short combination of letters), if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark.
WIPO Overview 3.0, section 3.2.2.In the circumstances of the present case, based upon the fame of the Complainant’s SAP mark and the meaning of the disputed domain name viewed through a technological lens, on the balance of probabilities, the Panel finds that the Respondent registered the disputed domain name in the knowledge of the Complainant and its rights and/or was willfully blind to the same. The Respondent has not credibly claimed that it was unaware of the mark. Given the mark’s exceptional renown in the technology sphere, it would not have been credible for it to have done so. While the disputed domain name also corresponds to a dictionary term and is a short combination of letters, the Respondent has not credibly shown that the Complainant’s mark has a limited reputation or is not known or accessible in the Respondent’s location. The chosen ccTLD is of significance as, aside from its geographical reference, it is typically taken to denote AI, a technology in which the Complainant has been active since at least 2023 when the disputed domain name was acquired by the Respondent.
The Respondent expressly acknowledges that the present high values of “.ai” domain names derive from their association with AI technology. In all of the circumstances of the present case, it is evident to the Panel that when it acquired the disputed domain name the Respondent was targeting this technological meaning of “.ai”. In that particular context, the selection of the three letters “sap” can only realistically mean the Complainant. On the balance of probabilities, the disputed domain name was not therefore registered due to its dictionary or acronym meaning but in order to trade off third party trademark rights. Consequently, in this particular case, the Respondent cannot rely upon the dictionary or acronym meaning in the context of rights and legitimate interests under the Policy.
The Respondent notes in the Response that the disputed domain name was originally registered to the Complainant and allowed to lapse. The Respondent seeks to rely on this fact to justify its registration of the disputed domain name on the basis that the Complainant was “done with it”. In that regard, the Respondent relies on a previous case under the Policy, Corbis Corporation v. Zest, NAF Claim Number FA0107000098441. In that case, the panel found that the fact that the complainant had let the domain name concerned lapse allowed it to infer that the complainant was abandoning any interest in the domain name, such that even if the respondent knew of the complainant’s prior registration and the complainant’s prior use, there was no evidence of bad faith. The panel also held that, “a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name”.
The present Panel does not necessarily agree with this reasoning, noting in particular that the case was decided very early in Policy jurisprudence. “Drop catching” and “domaining” either did not exist or were in their infancy at that time. The “willful blindness” concept (WIPO Overview 3.0, section 3.2.3) had yet to develop. Furthermore, the case did not relate to a famous or well-known trademark as is the situation here. All in all, the Panel prefers the reasoning on this topic that is set out in the more recent case of Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540 in which the panel noted, “Where registration occurs through drop-catching, the registrant is objectively aware that another person held the registration immediately prior. This, in effect, puts the registrant on notice that another person (the immediately prior registrant) may have rights in a trademark to which the domain name is identical or confusingly similar. Where, as in this case, the drop-catching registrant fails to take any steps to determine if such rights exist, then the registrant is taking the risk that such rights do exist”. In today’s world, the Panel does not consider that any reasonable person could take the view (as the Respondent here claims on a hypothetical basis) that the owner of a well-known or famous trademark would be relinquishing its rights in such mark purely by virtue of the lapse of a domain name from its portfolio. Importantly, as the Respondent claims to have been unaware of the fact that the Complainant was the original registrant of the disputed domain name until after the Complaint was filed, this line of reasoning could not have been in its mind when it acquired the disputed domain name.
The Respondent has shown that it is capable of researching the history of a domain name by way of the historic WhoIs search that it has produced. By virtue of the auction of the disputed domain name in this case, the Respondent was objectively aware that another person held the registration immediately prior. The Panel finds that the Respondent should therefore have been aware of the existence of the Complainant’s rights on this secondary basis besides it having a likely awareness of the SAP mark on the balance of probabilities by virtue of the fame of the mark.
The Respondent points to the price of the disputed domain name and seeks to evidence the fact that this is what might be termed a “market price” rather than a price that was set to reflect the Complainant’s ability to pay. The Panel does not regard the question of value to be of any special significance in the present case. It is true that in certain cases, the asking price of the domain name concerned (if the valuation is suitably evidenced) might be supportive of the notion that a particular rights holder is being targeted. But all that a complainant need prove in terms of paragraph 4(b)(i) of the Policy is that the domain name concerned was registered or acquired primarily for the purpose of selling it to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name. Here, the “valuable consideration” exceeds the documented out-of-pocket costs to a considerable degree.
In conclusion, the Panel finds that the fame of the Complainant’s mark in a field which the Respondent intended the ccTLD in the disputed domain name to denote or signify is sufficient to infer knowledge and intent to target the trademark value of the term on the part of the Respondent. To the extent that the Respondent did not have prior knowledge of the Complainant’s mark, as a sophisticated domain name investor it had a positive obligation to ascertain whether its acquisition of the disputed domain name for immediate sale at a substantial profit would be trademark-abusive. Its failure to do so means that it was willfully blind to the trademark value of the term, which cannot give rise to registration and use in good faith. Separately, the fact that the disputed domain name had previously been registered and was being auctioned following lapse should have signaled to the Respondent the potential for the existence of such rights and, in that sense alone, it bears the consequence of its failure to investigate the same.
In all of these circumstances, the Panel finds that the second and third elements of the Policy have been established.
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.ai be transferred to the Complainant.
/Andrew D. S. Lothian/ Andrew D. S. Lothian Sole Panelist
Date: September 19, 20241 The Panel obtained this information from the website at “www.auction.whois.ai”. On the issue of the Panel performing research into publicly available sources, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18.
2 On this subject, the Panel accepts the provisions of the Complainant’s official corporate factsheet, which have not been contested by the Respondent.
3 The Panel again contrasts this case with the circumstances in the case of Sonata Software Limited v. Narendra Ghimire, Deep Vision Architects, supra. The panel in that case stated that it had its doubts about the appropriateness of applying the positive search obligation to purely dictionary word domain names that are not well known as a trademark in a respondent’s jurisdiction. Here, the Panel finds that the Complainant’s mark is well known as a trademark in the Respondent’s jurisdiction and that the positive search obligation is appropriate.
4 In such a search, the Complainant appears to be the only registrant of a technology-related (Class 9) mark SAP on its own; if coupled with other terms the Complainant still holds the overwhelming majority of such marks.
