ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sopra Steria Group v. Account Receivable Case No. D2024-1688 1. The Parties The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France. The Respondent is Account Receivable, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2024. On April 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2024, 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 (Registration Private, Domains by Proxy, LLC) 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 6, 2024, the proceedings were suspended until June 5, 2024, upon the Complainant’s request. The suspension was extended to July 6, 2024, and, further, to August 14, 2024. The proceedings were reinstituted on August 27, 2024, and suspended again on August 30, 2024 until September 15, 2024. The Complainant filed an amended Complaint on September 17, 2024, and the proceedings were finally reinstituted on September 17, 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 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2024. The Center appointed James Bridgeman SC as the sole panelist in this matter on October 18, 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 provides consulting, information technology and software publishing services using the SOPRA mark for which it holds an international portfolio of registered trademarks and service marks including the following: - French registered trademark and service mark SOPRA, registration number 92416410 registered on April 16, 1992 for goods and services in classes 9, 16, 35, 41 and 42; - European Union trademark SOPRA, registration number 003233335 registered on February 3, 2005 for goods and services in classes 9, 16, 35, 38, 41 and 42; - European Union trademark SOPRA, registration number 009199886, registered on December 6, 2010 for goods and services in classes 9, 16, 35, 38, 41 and 42; - French registered trademark SOPRA, registration number 3964387 registered on November 28, 2012 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42. The disputed domain name was registered on March 25, 2024. At the time of filing of the Complaint, it did not resolve to any active website. There is no information about the Respondent on record except for that provided in the Complaint as amended and the information provided by the Registrar in response to the request by the Center for details of the registration of the disputed domain name for the purposes of these proceedings. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that it 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, and is a provider of consulting and information technology services, as well as in software publishing, operating in many countries most notably in Asia, Europe, and North Africa. The Complainant alleges that the disputed domain name reproduces the SOPRA trademarks in their entirety, which inevitably creates a likelihood of confusion and adds that the mere addition of the generic term “solution” at the end of the SOPRA mark does not alleviate this confusing similarity. It is further argued that the generic Top Level Domain (“gTLD”) “.com” ought to be disregarded in the determination of confusing similarity because it is well established that such TLD does not generally affect
page 3 the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademarks (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.2: “The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’)”. It is next alleged that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant argues that: - the Registrant of the disputed domain name, who has stated that their identity is “Account Receivable”, is not known to the Complainant and is not part of its workforce; - to the best of the Complainant’s knowledge, no third-party entity is known in the course of business under the disputed domain name or is the registered holder of any trademark for the “sopra solution”; - the Complainant has not granted any license to the Respondent to use the SOPRA trademarks, nor has it authorized it to register or use the disputed domain name; - the Respondent cannot justify of any use of the disputed domain name in connection with a bona fide offering of goods or services, nor of any serious preparations for that purpose; - furthermore, the Complainant submits that the screen capture of the website to which the disputed domain name resolves, a copy of which is exhibited in an annex to the Complaint shows that the disputed domain name resolves to an inactive website; and argues that it is well settled that there is no bona fide offering of goods or services where the domain name at issue resolves to an inactive page as illustrated by the decisions in Compagnie de Saint-Gobain v. Greg William, WAMMCO International, WIPO Case No. D2022-2177; and Accor v. Aleena Javed, Accor, WIPO Case No. D2023-0059. It is next alleged that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the disputed domain name is a confusingly similar reproduction of the domain names owned by the Complainant and made of the trademark “sopra” which include: registered on July 3, 1997; registered on May 23, 2007; registered on September 9, 2006; registered on November 29, 1999; registered on December 7, 2005; and registered on December 18, 2012. The Complainant argues that its SOPRA mark is neither descriptive nor evocative, which confirms that the Respondent knew that by registering the disputed domain name it was infringing the Complainant’s prior rights. This is confirmed by the fact that the term “solution”, which the Respondent added to the term “sopra”, is descriptive of, and is commonly used in, the Complainant’s core activities in the field of IT and software. The Complainant adds that the condition of use in bad faith is satisfied because the Respondent had prior knowledge of the reputation of the Complainant’s trademark, and that such knowledge is established in this case because the disputed domain name reproduces the Complainant’s SOPRA mark that is not generic, and therefore cannot have been chosen by chance. It is further contended that by registering the disputed domain name that is almost identical to the Complainant’s own domain names and the trademarks relied upon by the Complainant, the Respondent is expecting to divert traffic from the Complainant’s websites, which undoubtedly demonstrates Respondent’s bad faith. Finally, the Complainant submits that the disputed domain name resolves to an inactive website and such passive holding of the disputed domain name may be considered as demonstrating bad faith of the Respondent as held in the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
page 4 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, in this case, “solution” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 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 notes the following: - the Complainant has not granted any license to the Respondent to use the SOPRA trademark, nor has it authorized it to register or use the disputed domain name; - the Respondent has not justified any use of the disputed domain name in connection with a bona fide offering of goods or services, nor of any serious preparations for that purpose; - furthermore, the screen capture of the website to which the disputed domain name resolves, a copy of which is exhibited in an annex to the Complaint shows that the disputed domain name resolves to an inactive website.
page 5 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. 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 Complainant’s rights in the SOPRA mark long pre-date the registration of the disputed domain name on March 25, 2024. Given the distinctive nature of the Complainant’s mark and that the Respondent chose to register a domain name that is a combination of the SOPRA mark and the term “solution” which could be taken to be an inferred reference to the Complainant’s consultancy business, on the balance of probabilities the disputed domain name was chosen with the Complainant and its SOPRA mark in mind in order to take predatory advantage of the Complainant’s reputation and goodwill in the mark. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) 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 record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed 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. 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. /James Bridgeman SC/ James Bridgeman SC Sole Panelist Date: October 30, 2024
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