ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sopra Steria Group v. Power Click Case No. D2023-4889 1. The Parties The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France. The Respondent is Power Click, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2023. On November 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 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 December 4, 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 December 5, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2024. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on January 12, 2024. 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 Sopra Steria Group, the Complainant, was established in September 2014 and it is related to consulting and information technology (“IT”) services, software publishing, and operates in several countries. The Complainant is the owner of several trademark rights on SOPRA and SOPRA BANKING SOFTWARE, covering goods and services related to IT, financial and software, as follows: French Trademark SOPRA, no. 92416410, registered on August 28, 1992, in Classes 9, 16, 35, 41 and 42; International Trademark SOPRA, no. 1163226, registered on April 8, 2013, in Classes 9, 16, 35, 36, 38, 41 and 42; European Union Trademark SOPRA BANKING SOFTWARE, no. 18271180, registered on December 11, 2020, in Classes 9, 16, 35, 38, 41 and 42. The Complainant is the owner of many domain names, including , and , registered on May 25, 2012. The Respondent was identified as Power Click from the United States of America. The disputed domain name was registered on February 26, 2023, and resolves to a parking page with pay-per-click (“PPC”) hyperlinks related to the Complainant’s core activities in the field of banking. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. The Complainant argues that the disputed domain name is confusingly similar to the trademarks SOPRA and SOPRA BANKING SOFTWARE and several domain names owned by the Complainant. The disputed domain name resolves to a parking page with PPC hyperlinks related to the Complainant’s core activities in the field of banking, which also offers the disputed domain name for sale. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. That being the case, the Complainant finds that the disputed domain name is used to take unfair advantage of the Complainant’s rights for commercial gain, since Internet users and the Complainant’s clients would inevitably associate the content related to the disputed domain name with the Complainant’s prior trademarks. Moreover, the Complainant stresses that the Respondent is not commonly known by the name “sopra” or “sopra banking”. According to the Complainant, it has prior rights over the trademarks SOPRA and SOPRA BANKING SOFTWARE, and has not authorized the registration and use of the disputed domain name, nor the use of its trade name and trademarks by the Respondent.
page 3 The Respondent is not affiliated to or authorized by the Complainant to use or register the disputed domain name. The Complainant’s intellectual property rights for SOPRA and SOPRA BANKING SOFTWARE trademarks predate the registration of the disputed domain name. The Complainant also argues that the Respondent was aware of the Complainant’s rights and has clearly registered the disputed domain name to target the Complainant’s trademark, and that the registration of the disputed domain name was conducted in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and (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. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the marks are recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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
page 4 relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. 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. In the present case, the Panel notes that at the time the disputed domain name was registered, the Respondent was clearly aware of the SOPRA trademarks as the Complainant’s trademark registrations as well as its domain names predate the registration date of the disputed domain name. The Panel notes that the disputed domain name resolves to a parking page with PPC hyperlinks related to the Complainant’s core activities in the field of banking and that this page also offers the disputed domain name for sale. The composition of the disputed domain name including the term “banking” further increases the level of confusing similarity with the Complainant’s trademarks, services and domain names with the expression “soprabanking”. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The Panel finds that the use of the disputed domain name to host PPC hyperlinks directing visitors to third-party websites, including those conducting business related to the Complainant’s, and offering the disputed domain name for sale, suggests an apparent effort by the Respondent to profit from the unauthorized use of the Complainant’s mark. Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith. The Panel finds that the Complainant has established the third element 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. /Mario Soerensen Garcia/ Mario Soerensen Garcia Sole Panelist Date: January 26, 2024
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