The Complainant is Sopra Steria Group of Annecy-le-Vieux, France, represented by Cabinet Herbert Smith Freehills Paris LLP, France.
The Respondent is Azura Abendroth of Heidelberg, Brandenburg, Germany. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2017, 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.
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, and the proceedings commenced on March 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 24, 2017. 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 following facts are undisputed.
The Complainant is a consulting and IT services company established in 1963.
The Complainant is the owner of a number of registrations for the SOPRA STERIA trademark in various jurisdictions, including but not limited to the European Union Trade Mark (figurative mark) SOPRA STERIA, registration number 13623889, registered on May 15, 2015, the European Union Trade Mark (word mark) SOPRA, registration number 3233335, registered on February 3, 2005 and the European Union Trade Mark (word mark) STERIA, registration number 003803061, registered on September 26, 2005 (hereinafter in singular referred to as the “Trademark”).
Furthermore, the Complainant owns and operates websites at several domain names incorporating the Trademark, for instance , , and .
The Domain Name was registered by the Respondent on January 16, 2015. The Domain Name resolves to a parking webpage displaying pay-per-click (“PPC”) links (the “Website”).
The Panel understands from its own research that Sopra Group SA and Groupe Steria SCA merged in 2014 and that at that time the Complainant changed its name from Sopra Group SA to Sopra Steria Group SA. 5. Parties’ Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Domain Name reproduces the Trademark. The reproduction of the Trademark as the dominant part of the Domain Name is confusingly similar to the Trademark.
The Respondent does not have any rights or legitimate interests regarding the Domain Name. The Respondent has neither prior rights nor legitimate interests to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant.
The Complainant has never licensed or otherwise authorized the Respondent to use of its trademarks or to register any domain name including the Trademark. The Respondent is not commonly known by the Domain Name. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name merely directs to a parking page.
The Complainant also refers to the case Oriola Oy and Kronans Droghandel AB v. Yes / v. Mr. Mustonen,WIPO Case No. D2006-0447 in which the panel determined that the registration of a domain name reproducing the trademark of two companies following the public announcement of the merger between those two companies evidenced bad faith. In this light, the registration of the Domain Name following the merger of the companies Sopra Group SA and Groupe Steria SCA demonstrates the Respondent’s bad faith.
The apparent lack of active use of the Domain Name without any active attempt to sell or to contact the trademark holder, does not as such prevent a finding of bad faith.
In addition, the Complainant has brought forward that the reproduction of a trademark in a parking website without authorization for the purpose of attracting visitors for commercial gain constitutes registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the words from the figurative European Union Trade Mark 13623889, that form the dominant part of this trademark, in their entirety, as well as the both European Union Trade Marks SOPRA and STERIA and just adds the word “banking”. The Panel finds that the dominant part of the Domain Name is “soprasteria” and that the element “banking” may even add to the confusing similarity, since the Complainant provides solutions to retail banking asset finance customers.
The addition of “.com” is in this matter irrelevant in the determination of the confusing similarity between the Trademark and the Domain Name, see cases Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903: “[T]he 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 despite the addition of other words to such marks.”
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “Sopra Steria” is the Respondent’s name or that the Respondent is commonly known as “Sopra Steria”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating any of the trademarks.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP panels “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant’s Trademark and activities are well-known throughout the world.
In the Panel’s view there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant and the Trademark.
In the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name. This is emphasized by the fact that the Domain Name is registered following the merger of the companies that Sopra Group SA and Groupe Steria SCA in 2014. This registration and use of the Domain Name is comparable to the situation which led to the decision in Perfetti S.p.A., Van Melle N.V. and Van Melle Nederland B.V. v. MIC,WIPO Case No. D2001-0400.
In addition, the Panel has ascertained that the Respondent has been the respondent in at least two other UDRP cases involving well-known trademarks, Bayerische Motoren Werke AG (BMW) v. Alice Collier, Ye Genrong, Azura Abendroth, Wang Liqun,WIPO Case No. D2015-1781; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Azura Abendroth,WIPO Case No. DTV2015-0003. Therefore the conclusion may be justified that Respondent is engaged in a pattern of registering domain names to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith. In particular, the registration of the Domain Name, incorporating the Complainant’s Trademark, without authorization from the Complainant, and its subsequent use in connection with a parking page displaying PPC links, amounts to an attempt to illegitimately benefit from a likelihood of confusion between the Domain Name and the Complainant’s Trademark, presumably via click-through revenue.
Also the street address of the Respondent as included in the WhoIs information, absent of any plausible explanation from the Respondent, cannot be the address of the Respondent as it is the address of the University Museum in Heidelberg and Heidelberg is not located in the state of Brandenburg, but in Baden‑Württemberg. This all contributes to a finding of bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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.
Willem J. H. Leppink
Sole Panelist
Date: May, 8, 2017
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