WIPO Domain Name Decision D2023-2397 for soprasteriea.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sopra Steria Group v. Sopra Steria, soprasteria Case No. D2023-2397 1. The Parties The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France. The Respondent is Sopra Steria, soprasteria, India. 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2023. On June 2, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2023 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 14, 2023. The Center verified that the Complaint together with 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 June 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 11, 2023. The Center appointed Peter Burgstaller as the sole panelist in this matter on July 14, 2023. 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. page 2 4. Factual Background The Complainant is engaging in consulting and information technology services. It owns various trademark registrations containing the term SOPRA STERIA or SOPRA or STERIA, inter alia - French trademark SOPRA STERIA (semi-figurative), Registration No. 4125228, registered October 13, 2014, in the international classes 9, 16, 35, 36, 38, 41, 42 and 45; - European Union trademark SOPRA STERIA (figurative), Registration No. 013623889, registered May 15, 2015, in the international classes 9, 16, 35, 36, 38, 41, 42 and 45; - International Registration No 1290669 for SOPRA STERIA (figurative), registered September 25, 2015, with the French basic Registration No. 4125228, designated for Switzerland, Norway, China, Singapore and the Russian Federation; - French trademark SOPRA. (word), Registration No. 92416410, registered April 16, 1992, in the international classes 9, 16, 35, 41, and 42; - European Union trademark SOPRA (word), Registration No. 003233335, registered February 3, 2005, in the international classes 9, 16, 35, 38, 41 and 42, - French trademark STERIA (word), Registration No. 1563115, registered December 1, 1989, in international classes 9, 16, 35, 38, 41 and 42; - International Registration No. 714607 for STERIA (word), registered February 15, 1999, with the French basic Registration No. 1563115, designated for Great Britain; and - International Registration No. 774322 for STERIA (word), registered September 18, 2001, with the French basic Registration No. 1563115, designated for many countries around the world, e.g. China, Norway or Switzerland (Annexes 5.1 and 5.2 to the Complaint) The Complainant operates its main website under the domain name , registered April 7, 2014; it also owns and uses the domain names , registered April 15, 2014, which refers to the website under as well as and (Annex 7 to the Complaint). The disputed domain name was registered on July 23, 2022 (Annex 2 to the Complaint); it did not resolve to a website with substantive content (Annex 6 to the Complaint). 5. Parties' Contentions A. Complainant The Complainant was established in September 2014 upon the merger of Sopra Group SA and Groupe Steria SCA., two companies that were founded respectively in 1968 and 1969. The Complainant is a leading international player in consulting and information technology services, as well as in software publishing. It owns serval trademark registrations around the world, which contain the mark SOPRA STERIA or SOPRA or STERIA since 1989 onwards. The disputed domain name is almost identical to the Complainant's trademarks - the only difference between the SOPRA STERIA trademark of the Complainant and the disputed domain name is the addition of the letter "e". This is a blatant case of typosquatting, where the Respondent deliberately relies on typing page 3 mistakes made by Internet users when inputting a website address into a web browser; this moreover inevitably creates confusion with the Complainant and its registered trademark. The Respondent has no rights or legitimate interests in respect of the domain name: The Respondent does not have any trademark rights to the mark SOPRA STERIA, it is not known under the disputed domain name, it has not used nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services and has not received any license or other authorization from the Complainant to use the disputed domain name featuring the SOPRA STERIA trademark. Finally, the domain name was registered and is being used in bad faith: The disputed domain name replicates the SOPRA STERIA trademark in its entirety and only adds the letter "e" which is blatant case of typosquatting. The Complainant's trademark and domain name registrations for , , and predate the registration of the disputed domain name. The Respondent must have been aware of the Complainant and its SOPRA STERIA trademark when registering the disputed domain name. The Respondent also used the disputed domain name in bad faith: Although, the disputed domain name does not resolve to a website, passive holding is within the concept of the Policy; this is especially true in typosquatting cases. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that (i) the disputed 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 with respect to the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. 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. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at issue, the Complainant submitted evidence, which incontestably and conclusively establishes rights in the SOPRA STERIA mark. The disputed domain name is confusingly similar to the SOPRA STERIA mark in which the Complainant has rights since the Complainant's SOPRA STERIA mark is clearly recognizable in the disputed domain name and is the dominant and distinctive element. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). page 4 This is the case at hand: The addition of the letter "e" in the disputed domain name does not prevent a finding of confusing similarity; in fact the disputed domain name consists of a misspelling of the Complainant's trademark (see section 1.9 of the WIPO Overview 3.0). Finally, it has also long been held that gTLDs are generally disregarded when evaluating the confusing similarity under the first element. Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Furthermore, the nature of the disputed domain name, comprising the Complainant's distinctive mark in its entirety together with an obvious and intentional misspelling of the Complainant's trademark cannot be considered fair as these confuse users seeking or expecting the Complainant (see section 2.5 of the WIPO Overview 3.0). Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith, and - the disputed domain name is being used by the Respondent in bad faith. (i) In the present case the Complainant has rights and is the owner of the distinctive registered trademark SOPRA STERIA, which is registered and used in many jurisdictions around the world long before the registration of the disputed domain name. Moreover, the Complainant registered and is using various domain names containing SOPRA STERIA e.g. or to address its company website. It is inconceivable for this Panel that the Respondent registered or has used the disputed domain name without knowledge of the Complainant's rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant's distinctive trademark SOPRA STERIA entirely together with a common, obvious and intentional misspelling of the Complainants SOPRA STERIA mark. Further, it is well-settled case law that the practice of typosquatting may in itself be evidence of a bad faith registration of a domain name (see, e.g., Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Compagnie Générale des page 5 Etablissements Michelin v. Super Privacy Service LTD c/o Dynadot / Reed Mueller, WIPO Case No. D20211771; Philip Morris Products S.A. v. Rohan Mubbashir Khan; WIPO Case No. D2022-4582). Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a trademark by an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith (see section 3.1.4 WIPO Overview 3.0) (ii) The disputed domain name is also being used in bad faith: Although there is no evidence that the disputed domain name has been actively used or resolved to a website with substantive content, previous UDRP panels have found that bad faith use under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent - the non-use of a domain name (including a blank or "coming soon" or resolving to a parking page or an offer for sale page) would not prevent a finding of bad faith, since also inaction is within the concept of paragraph 4(a)(iii) under the doctrine of passive holding (see especially Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131). This Panel concludes that the disputed domain name is being used in bad faith, putting emphasis on the following: - the Complainant's trademark SOPRA STERIA is distinctive and used in several domain names to address the Complainant's website, e.g. , , or ; - the disputed domain name consists of a common, obvious, or intentional misspelling of the Complainant's trademark SOPRA STERIA which is a typical case of typosquatting which in itself constitutes bad faith; - the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name; - the disputed domain name incorporates the Complainant's trademark in its entirety, and is thus suited to confuse users seeking or expecting the Complainant and it's site; and - there is no conceivable plausible reason for good faith use with regard to the disputed domain name. Taking all these aspects and evidence into consideration and the fact that the Respondent failed to respond to the Complaint supports the finding that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) 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. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: July 26, 2023


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