The Complainants are Sopra Group of Annecy-le-Vieux, France and STERIA of Velizy-Villacoublay, France, represented by Cabinet Herbert Smith Freehills Paris LLP, France.
The Respondent is JSP of Anyang, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with HANGANG Systems Inc. dba D (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2014. On April 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 25, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
On April 28, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On April 29, 2014, the Respondent requested Korean to be the language of the proceeding, and April 30, 2014, the Complainants requested English to be the language of the proceeding.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2014.
Given the submissions and circumstances of this case, the Center decided to: (1) accept the Complaint as filed in English; (2) accept a Response in either English or Korean; and (3) appoint a Panel familiar with both English and Korean.
While the Respondent submitted numerous emails to the Center between May 6, 2014 and May 28, 2014, the Respondent did not submit a formal response. The Respondent’s emails concerned the language of proceeding. Specifically, the Respondent wanted Korean to be the language of the proceeding. For reasons that are more specifically discussed herein below, the Panel issued a Panel Order on June 30, 2014 requesting (1) the Complainants to submit the Complaint translated into Korean by July 10, 2014; and (2) the Respondent to submit its response by July 21, 2014. The Complainants complied with the Panel Order but the Respondent did not submit any response or any other communications to the Center, whether formal or informal.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 10, 2014. 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 Complainants are SOPRA GROUP, a limited company registered at the Trade and Companies Register of Annecy, France, and STERIA, a limited company registered at the Trade and Companies Register of Versailles, France. The Complainants publicly announced a merger on April 7, 2014.
SOPRA GROUP was founded in 1968, specializes in consulting and IT services, and operates in France, Benelux, Spain, Italy, United Kingdom of Great Britain and Northern Ireland, Switzerland, and India. SOPRA GROUP owns several international trademarks for the word SOPRA, as well as domain names that include the words SOPRA and SOPRA GROUP.
STERIA was founded in 1977, specializes in IT solutions, and is located in many countries in Europe and Asia. STERIA owns several international trademarks for the word STERIA, as well as domain names that include the word STERIA.
The Respondent registered the Disputed Domain Name on April 7, 2014, the day the merger was announced. 5. Parties’ Contentions A. Complainants
The Complainants contend that the Disputed Domain Name is identical or confusingly similar to the trademarks and domain names in which the Complainants have individual rights. Specifically, the Complainants contend that the Disputed Domain Name contains the SOPRA and STERIA trademarks in their entirety, as well as the combination of the SOPRA and STERIA marks that will result from the merger between the two companies.
The Complainants contend that the Respondent has no legitimate interests or rights in the Disputed Domain Name because the Respondent has no connection or affiliation with the Complainant, or the services provided by the Complainants under the SOPRA and STERIA trademarks. The Complainants contend that the Respondent is not commonly known by the Disputed Domain Name. The Complainants contend that there is no justification for any bona fide offering of goods or services by the Respondent in connection with the Disputed Domain Name.
The Complainants contend that the Respondent has registered and is using the Disputed Domain Name in bad faith and with full knowledge of the SOPRA and STERIA trademarks. The Complainants contend that it is clear from the timing of the registration that the Respondent registered the Disputed Domain Name for the purpose of selling or otherwise transferring it to the Complainants or to the entity which will result from the merger for valuable consideration in excess of any documented out-of-pocket costs directly related to the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainants. Those requirements are that: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. 6.1 Language of the Proceeding
The Panel has noted communications from the Complainants and the Respondent regarding the language of the proceeding.
According to the Rules the language of the registration agreement should be the language of the proceeding, unless there is an agreement between the parties for a different language to be the language of the proceeding or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the complainant and the respondent to the effect that the proceedings should be in the language other than that of the registration agreement, translate the complaint into the language of the registration agreement, or submit a request for the proceeding to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceeding.
In this case, the Panel finds that English should be the language of the proceeding for the following reasons:
- In response to the Respondent’s various email communications to the Center seeking Korean as the language of the proceeding, and most particularly, in view of the relative absence of clear indications in the record that the Respondent is able to communicate in English, the Panel Order was issued requesting the Complainant to provide a Korean translation of the Complaint, providing the Respondent with time to respond.
- The Complainant duly complied with the Panel Order; the Respondent, however, did not file any response, nor did he communicate in any other way with the Center despite being notified of the Korean translation of the Complaint.
- Further, it is noted for the record that the disputed domain name consists entirely of ASCII characters. It contains the two words “SOPRA” and “STERIA”, both being of Latin-based words and the Complainants’ trademarks. The disputed domain name does not contain any other (i.e. Korean) characters.
Based on the foregoing, the Panel finds that it is appropriate to issue the Decision in English. 6.2 Discussion A. Identical or Confusingly Similar
This element consists of two parts: First, do the Complainants have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel finds that the Disputed Domain Name is in its relevant distinguishing part consists entirely of the Complainants’ trademarks SOPRA and STERIA.
First, it is uncontroverted that the Complainants have established rights in the SOPRA and STERIA trademarks based on both longstanding use as well as their international trademark registrations. Second, the Disputed Domain Name consists of the SOPRA and STERIA trademarks in its entirety. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). Third, the addition of the generic Top-Level Domain suffix, such as “com” after a domain name, is technically required. It is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the Panel finds that the Complainants have satisfied their burden of proof under paragraph 4(a)(i) of the Policy that the Disputed Domain Name is identical or confusingly similar to the trademarks in which the Complainants have rights. B. Rights or Legitimate Interests
There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainants’ assertions, the Panel will need to consider whether the Respondent’s use of the Disputed Domain Name would indicate the Respondent’s rights or legitimate interests in the Disputed Domain Name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) The respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainants’ contentions, the Respondent in this proceeding has not attempted to demonstrate its rights and legitimate interests.
First, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. Moreover, there is no evidence that the Respondent was authorized or licensed to use the SOPRA and/or STERIA trademarks within the Disputed Domain Name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490).
Second, there is no evidence that before any notice of the dispute with the Complainants, the Respondent was using or making demonstrable use of the Disputed Domain Name for a bona fide offering of goods and services. According to the documents submitted by the Complainants, the Disputed Domain Name simply redirects users to a static page on the Registrar DOREGI. This, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case.
Third, the Panel notes that the Respondent registered the Disputed Domain Name on April 7, 2014 – the same day the merger was announced to the public. It is the Panel’s view, on the present facts, that the Respondent most likely registered the Disputed Domain Name with full awareness of the pending merger and the Complainants’ trademarks.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainants have established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As already mentioned, the Respondent did not file any Response to the Complaint other than its objection to the language of the proceedings in English, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainants’ assertions are established as facts, and whether the conclusions asserted by the Complainants can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Complainants have asserted with supporting evidence that the Disputed Domain Name was registered on April 7, 2014, the same day the merger of SOPRA GROUP and STERIA was announced to the public. In Syed Hussain, supra, it was determined that evidence of the acquisition of a domain name primarily for the purpose of selling it may be found in the fact that the domain name was registered on the same day as the announcement of the merger. Thus, the Panel finds that the Respondent’s registration of the Disputed Domain Name constitutes an opportunistic act by the Respondent with a view to making a profit (see also, Pharmacia & Upjohn AB v. M Inc.,WIPO Case No. D2000-0446 (found that an opportunistic combination of two well-known trademarks made shortly after the announcement of a merger by someone having no connection with either side of the merging companies amounts to registration and use in bad faith)).
It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith in contravention of paragraph 4(b)(i) (see adidas-Saloman AG v. Vincent Stipo,WIPO Case No. D2001-0372). Here, the circumstances suggest that the Respondent acquired the Disputed Domain Name in bad faith primarily for the purposes of selling the Disputed Domain Name to the Complainant likely for an excessive fee upon completion of the merger.
Finally, bad faith can be inferred based on the fame of the Complainants’ marks, such that the Respondent was aware or should have been aware of the Complainants’ mark and claims of rights thereto. The Panel finds it highly doubtful that the Respondent would have registered the Disputed Domain Name without having knowledge of the Complainants and/or their merger. The Panel reasonably finds that since the SOPRA and STERIA trademarks were widely known, especially in the relevant community, it is very unlikely that the Respondent, at the time of registration of the Disputed Domain Name, was not aware of the Complainants’ SOPRA and STERIA trademarks and their merger, given the Disputed Domain Name was registered on the same day as the merger announcement.
For the above reasons, the Panel finds that the Complainants have shown that the Disputed Domain Name has been registered and is being used in bad faith by the Respondent. 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 be transferred to the Complainant SOPRA GROUP.
Andrew J. Park
Sole Panelist
Date: August 3, 2014
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