ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sopra Steria Group v. Samuel jones Case No. D2024-1687 1. The Parties The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France. The Respondent is Samuel jones, United States of America. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Name SRS AB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2024. On April 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On May 3, 2024, the Complainant requested the suspension of the proceeding. On May 6, 2024, the Center suspended the proceeding until June 5, 2024, pursuant to paragraph 17(a) of the Rules. On request from the Complainant, the suspension period was further extended on June 5 and July 15, 2024. On exceptional request from the Complainant, the suspension period was further extended on August 27 until September 29, 2024. The Complainant filed an amended Complaint on September 17, 2024. The Center reinstituted the proceeding on September 20, 2024, and also sent a request for clarification regarding the amended Complaint on the same day. In response to the request for clarification, the Complainant filed an amended Complaint on September 23, 2024. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2024. The Center appointed Ian Lowe as the sole panelist in this matter on October 24, 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. 4. Factual Background The Complainant was established in 2014 upon the merger of Sopra Group SA and Groupe Steria SCA, that were founded respectively in 1968 and 1969. It is a leading international player in consulting and information technology services, as well as software publishing. It operates in many regions of the world, notably in Asia, Europe, and North Africa. The Complainant is the proprietor of numerous registered trademarks in respect of the mark SOPRA, including France trademark number 92416410 stylized word mark SOPRA registered on August 28, 1992; European Union trademark number 3233335 SOPRA registered on February 3, 2005; and International trademark number 1163226 SOPRA registered on April 8, 2013. The Domain Name was registered on December 8, 2023. It does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its SOPRA trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that: (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 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.
page 3 The Complainant has uncontested rights in the trademark SOPRA (the “Mark”) by virtue of its trademark registrations. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the Complainant’s mark together with an apostrophe and the term “solution”. In the Panel’s view, this addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s mark for the purposes of the first element under the Policy. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. 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. Accordingly, 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 (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. The Respondent has not used the Domain Name for a bona fide offering of goods or services. There is no question of the Respondent being known by the Domain Name or of the Complainant having given permission to the Respondent to register or use the Domain Name. An inactive domain name cannot in the Panel’s view indicate rights or legitimate interests. Having reviewed the available evidence, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 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 Domain Name comprises the entirety of the Complainant’s SOPRA mark together with the term “solution”, which reflects the nature of the Complainant’s business in providing software services. The Panel is therefore satisfied on balance that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. 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. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available evidence, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the Domain Name, and finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 4 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 Domain Name be transferred to the Complainant. /Ian Lowe/ Ian Lowe Sole Panelist Date: November 7, 2024
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