The Complainant is Sopra Steria Group, of Annecy-le-Vieux, France, represented by Herbert Smith Freehills Paris LLP, France.
The Respondent is Zhao Ke of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou AiMing Network Co., LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2016. On January 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 27, 2016, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. The Complainant submitted its request that English be the language of the proceeding on January 28, 2016. The Respondent did not submit any comments within the specified due date.
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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2016.
The Center appointed Sok Ling Moi as the sole panelist in this matter on March 8, 2016. 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 company established in France, formerly known as “Spora Group” prior to the merger of Sopra Group (a company founded in 1968) and Steria (a company founded in 1977). The Complainant specialises in consulting and IT services, and delivers a range of human resource solutions for private and public sector organizations. The Complainant operates in France, Benelux, Spain, Italy, United Kingdom and Switzerland.
The Complainant owns several trade mark registrations for SOPRA, STERIA as well as SOPRA STERIA in France and the European Union, including the following:
The Complainant owns several domain names incorporating its trade mark SOPRA or SOPRA STERIA, including the following:
- registered on April 7, 2014;
- registered on April 15, 2014;
- registered on April 15, 2014;
- registered on February 20, 2014; and
- register on November 25, 2014.
The disputed domain name was registered by the Respondent on January 16, 2015, after the Complainant publicly announced the merger between Sopra Group and Steria on April 7, 2014, and long after the first use of the SOPRA trade mark (in 1968) and registration of the STERIA trade mark (in 1989). As at the date of this decision, the disputed domain name resolves and redirects to a parking page containing various commercial links in English. 5. Parties’ Contentions A. Complainant
A.1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
Country
Mark
Registration No.
Registration Date
International Registration designating China
SOPRA
1163226
April 8, 2013
Community (EU)
SOPRA
009199886
December 6, 2010
France
SOPRA
3964387
November 28, 2012
France
STERIA
1563115
December 1, 1989
France
SOPRA STERIA
4125228
October 13, 2014
Community (EU)
SOPRA STERIA
013623889
May 15, 2015
The disputed domain name reproduces, and creates confusion with, the Complainant’s trade mark and trade names. The addition of the letters “hr” increases the confusion as it refers directly to one of the Complainant’s service offering.
A.2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent does not own any French, Chinese, Community or International trade mark for SOPRASTERIA.
The Respondent is not a licensee of the Complainant, and the Complainant has never authorized or otherwise given permission to the Respondent to register the disputed domain name.
The Respondent is not commonly known by the disputed domain name.
The Respondent is not able to justify legitimate use of the disputed domain name in connection with a bona fide offering of goods or services. In fact, the Respondent is using the disputed domain name to redirect users to a parking web page which contains commercial listings and advertising links, and offering the disputed domain name for sale.
A.3. The disputed domain name was registered and is being used in bad faith:
The Respondent has clearly registered the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of out-of-pocket expenses directly related to the disputed domain name. In pre-Complaint correspondence with the Complainant’s lawyers, the Respondent had offered to transfer the disputed domain name along with another domain name which also incorporates and reproduces the Complainant’s trade marks.
The Respondent has not used the disputed domain name in a legitimate way, and contributes to establish bad faith registration and use on the part of the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. Notwithstanding, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the disputed domain name resolves to a website with contents (with commercial links) in English;
(c) the Respondent was corresponding with the Complainant’s lawyer in English, offering to sell the disputed domain name to the Complainant;
(d) the Respondent has registered several other domain names comprising Latin characters, e.g., , , , , , and , based on a reverse WhoIs search conducted independently by the Panel using the Respondent’s email address (domainstore@[...].com).
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present his case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the SOPRA STERIA mark by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s trade mark SOPRA STERIA in its entirety. The inclusion of the extra letters “hr” is not sufficient to distinguish the disputed domain name from the Complainant’s trade mark. In fact, given that the Complainant offers human resource services under its trade marks, the term “hr” may increase the confusion and lead Internet users to believe the disputed domain name is part of the portfolio of domain names owned and controlled by the Complainant.
The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the SOPRA STERIA trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “Sopra”, “Steria” and/or “Soprasteria”.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name resolves and redirects to an active website which appears to be a parking page with commercial links to miscellaneous goods and services by third parties. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. The Panel further notes that there is a notice on the website at the disputed domain name offering the disputed domain name for sale. Such use of the disputed domain name is neither legitimate nor fair.
The Respondent has failed to file a formal Response, and is in any event not able to successfully rebut the Complainant’s prima facie case.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites 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 the Respondent’s websites or location or of a product or service on the Respondent’s website or location.
Given the timing of the Respondent’s registration of the disputed domain name, namely some eight months after the public announcement of the merger between Sopra Group and Steria, it is reasonable to believe that the Respondent had knowledge of the Complainant’s rights in the SOPRA STERIA mark at the time of its registration of the disputed domain name. Registration of a domain name that is a confusingly similar variant of the Complainant’s long-established trade marks suggests opportunistic bad faith.
The Respondent has failed to provide any evidence of bona fide use of the disputed domain name. The disputed domain name resolves and redirects to an active website which contains commercial links to miscellaneous goods and services by third parties. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. There is a presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s trade marks resulting in misleading diversion.
The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Respondent has also offered to sell the disputed domain name on his website, and when contacted by the Complainant, offered to sell the disputed domain name and another domain name incorporating the Complainant’s trade marks for an excessive price of USD 8,000. This suggests that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case.
Taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: March 22, 2016
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