ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sopra Steria Group v. Host Master, Transure Enterprise Ltd Case No. D2023-3690 1. The Parties The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France. The Respondent is Host Master, Transure Enterprise Ltd, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Above.com, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2023. On September 5, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 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 September 19, 2023. 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 September 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 20, 2023. page 2 The Center appointed Kateryna Oliinyk as the sole panelist in this matter on October 30, 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. 4. Factual Background The Complainant was established in 2014, upon the merger of Sopra Group SA and Groupe Steria SA, two companies that were founded respectively in 1968 and 1969. As per the Complaint, the Complainant is a leading international player in consulting and information technology services, as well as in software publishing. It operates in many countries and most notably in Asia (China, Singapore, India), Europe (France, Belgium, Netherlands, Luxemburg, Spain, Italy, United Kingdom, and Switzerland) and North Africa. The Complainant owns several trademarks corresponding and/or including the SOPRA STERIA trademark. The Complainant is, inter alia, the owner of the following trademark registrations: - French Trademark Registration No. 4125228 for SOPRA STERIA (device), registered on April 3, 2015, for goods and services in International Classes 9, 16, 35, 36, 38, 41, 42, and 45; - European Union Trademark Registration No. 013623889 for SOPRA STERIA (device), registered on May 15, 2015, for goods and services in International Classes 9, 16, 35, 36, 38, 41, 42, and 45; - International Registration No. 1290669 for SOPRA STERIA (device), registered on September 24, 2015, for goods and services in International Classes 9, 16, 35, 36, 38, 41, 42, and 45. In addition, the Complainant is the holder of the domain names (created on April 7, 2014), (created on April 15, 2014), (created on April 15, 2014) and (registered on April 15, 2014). The disputed domain name was created on April 14, 2023, and leads to a parking page containing pay-perclick ("PPC") links that refer to third parties' services. The Respondent has been named as a responded in not less than 220 UDRP proceedings. Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably through sending a cease-and-desist letter dated May 21, 2023, which remained unanswered. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar The Complainant contends that the disputed domain name and the SOPRA STERIA trademark are confusingly similar. According to the Complainant's contentions, the identical reproduction of the Complainant's SOPRA STERIA trademark is sufficient to conclude to the identity with the disputed domain name. page 3 The Complainant contends that the addition of the term "staff" in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the SOPRA STERIA trademark. The Complainant submits that the term "staff" in the disputed domain name will be regarded by the Internet users as referring to the Complainant's official website dedicated to the recruitment or the Complainant's stuff. No Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant's contentions, the Respondent is not commonly known under the name "sopra steria", nor has the Respondent acquired any trademark or service mark rights. The Complainant asserts that the Respondent is not affiliated with the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use the SOPRA STERIA trademark or to register a domain name incorporating the SOPRA STERIA trademark. The Complainant further indicates that the Respondent has been named as a responded in not less than 220 UDRP proceedings, in which the panels have established that the Respondent has been engaged in the manner of conduct of registering domain names which have been used for the PPC campaigns, and which were resolved in the favour of complainants. The Complainant submits that the use of the disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering or a legitimate noncommercial or fair use of the disputed domain name. Registered and Used in Bad Faith The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Respondent must have been aware of the Complainant's SOPRA STERIA trademark when it registered the disputed domain name. The Complainant contends that the disputed domain name is used with the view of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Considering that the Respondent did not reply to the Complainant's contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its decision on the statements and documents submitted and in accordance with the Policy and the Rules. page 4 Under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate". A. Identical or Confusingly Similar Under the first element, the Complainant must establish that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights. There are two parts to this inquiry: (i) the Complainant must demonstrate that it has rights in a trademark and, if so, (ii) the disputed domain name must be shown to be identical or confusingly similar to the trademark. 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. According to section 1.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the term "trademark or service mark" as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks. Ownership of a nationally or regionally registered trademark serves as a prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 1.2 of the WIPO Overview 3.0. The Complainant submitted evidence that the SOPRA STERIA trademark enjoys protection under national, regional and international trademark registrations. Thus, the Panel finds that the Complainant's rights in the SOPRA STERIA trademark have been established pursuant to the first element of the Policy. The disputed domain name consists of the Complainant's SOPRA STERIA trademark preceded by the term "staff" in the disputed domain name, and followed by the generic Top-Level Domain ("gTLD") ".com". According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term may however bear on assessment of the second and third elements. Under section 1.7 of the WIPO Overview 3.0, while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Finally, for the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD, see section 1.11.1 of the WIPO Overview 3.0. It is the view of the Panel that it is readily apparent that the Complainant's SOPRA STERIA trademark remains recognizable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the SOPRA STERIA trademark in which the Complainant has rights. The first element of paragraph 4(a) of the Policy is therefore satisfied. page 5 B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Based on the case filing, the Panel establishes that there is no evidence that the Respondent is a licensee of, or otherwise affiliated with, the Complainant, and apparently, it has not been authorized by the Complainant to use its SOPRA STERIA trademark. Based on the present case records, the Panel finds that there is no evidence that the Respondent has been commonly known by the disputed domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name, which could demonstrate rights or legitimate interests of the Respondent. See, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642. There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a legitimate noncommercial fair use or a bona fide offering of goods or services. The Panel notes the statements in the WIPO Overview 3.0 on the question of whether "parked" pages comprising PPC links support the Respondent's rights or legitimate interests. Section 2.9 of the WIPO Overview 3.0 stated that: "[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users. Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible - and therefore consistent with respondent rights or legitimate interests under the UDRP - where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant's (or its competitor's) trademark." In the present case, the Respondent's use of the confusingly similar disputed domain name to host a parking page with PPC links referring to the services competing with the Complainant's and offered by third parties does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the disputed domain name as the services advertised on the website to which the disputed domain name resolve do not correspond to any obvious meaning of the phrase comprising the disputed domain name. The Respondent's use of the disputed domain name is not bona fide, but rather evidence of bad faith, seeing as the Respondent presumably receives click-through-revenue by virtue of the misled Internet users drawn to the PPC site because of the confusingly similar disputed domain name. Hence the Respondent's use of the confusingly similar disputed domain name to host a parking page with PPC links does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. page 6 Finally, the Panel has established that the Respondent has been engaged in a pattern of trademark-abusive domain name registrations, that is generally inconsistent with a pattern of bona fide activity and supports the finding that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel considers that the record of this case reflects that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4. Having reviewed the record, the Panel finds the Respondent's registration and use of the disputed domain name constitutes bad faith under the Policy. The disputed domain name was created well after the SOPRA STERIA trademark was first used and registered. The disputed domain name, which wholly incorporates the SOPRA STERIA trademark, resolves to a page offering PPC links for which the Respondent most likely would receive some commercial gain. In these circumstances where the Respondent has offered no plausible explanation for the registration of the disputed domain name, the Panel finds, on the balance of probabilities, that the Respondent was most likely aware of the Complainant at the time of registration and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SOPRA STERIA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Respectively, the Panel finds that the use of a domain name that is identical or confusingly similar to a trademark to obtain click-through-revenue can amount to bad faith use (see, among others, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; and AMADEUS IT GROUP, S.A. v. Contact Privacy Inc. Customer 0151133672, Contact Privacy Inc. Customer 0151133672 / Milen Radumilo, WIPO Case No. D2018-2192). Engagement of the Respondent in a pattern of trademark-abusive domain name registrations is also supports the finding of bad faith registration and use of the disputed domain name. Based on the available record, the Panel finds the third element of the Policy has 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, , be transferred to the Complainant. /Kateryna Oliinyk/ Kateryna Oliinyk Sole Panelist Date: November 12, 2023
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