ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sopra Steria Group v. 任艺伟 (Yi Wei Ren) Case No. DCO2023-0099 1. The Parties Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France. Respondent is 任艺伟 (Yi Wei Ren), China. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2023. On November 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2023, 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 Complainant on December 6, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on December 11, 2023. On December 6, 2023, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the Domain Name is Chinese. On December 7, 2023, Complainant confirmed its request that English be the language of the proceeding. Respondent objected to Complainant’s request on December 8, 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 Respondent in Chinese and English of the Complaint, and the proceedings commenced on January 5, 2024. In accordance with the
page 2 Rules, paragraph 5, the due date for Response was January 25, 2024. Respondent did not submit any formal response. Accordingly, the Center notified the Parties of Commencement of Panel Appointment Process on January 29, 2024. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 13, 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 Complainant was established in September 2014 at the merger of Sopra Group SA and Groupe Steria SCA, companies founded in 1968 and 1969 respectively. Complainant, operating in numerous countries including Asia, Europe and North Africa, provides consulting and information technology services and software publishing. Complainant owns numerous registered trademarks for the SOPRA STERIA and SOPRA STERIA NEXT marks, including: - French registered trademark number 4125228 for SOPRA STERIA word and design mark, registered on April 3, 2015; - European Union registered trademark number 013623889 for SOPRA STERIA word and design mark, registered on May 15, 2015; - International registered trademark number 1290669 for SOPRA STERIA word and design mark, registered on September 24, 2015; - European Union registered trademark number 018071517 for SOPRA STERIA NEXT word and design mark, registered on October 15, 2019; - French registered trademark number 4554278 for SOPRA STERIA NEXT word and design mark, registered on September 13, 2019; and - United Kingdom registered trademark number UK00918071517 for SOPRA STERIA NEXT word and design mark, registered on October 15, 2019. Complainant also owns and operates numerous domain names with the SOPRA STERIA NEXT mark, including: - registered on July 5, 2018; - registered on October 4, 2019; and - registered on July 3, 2019. The Domain Name was registered on July 27, 2023 and at the time of filing of the Complaint, resolved to a webpage that offered the Domain Name for sale at USD 1,288, with an option to lease to own at USD 102 per month. At the time of the Decision, the Domain Name resolves to webpage that offers the Domain Name for sale at USD 800, with an option to lease to own at USD 100 per month.
page 3 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for SOPRA STERIA and SOPRA STERIA NEXT and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known SOPRA STERIA and SOPRA STERIA NEXT products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in registering and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Apart from Respondent’s email dated December 8, 2023 requesting for Chinese to be the language of the proceeding, Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant submitted its Complaint in English. In its email dated December 7, 2023, Complainant confirmed its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. Complainant mainly asserts that Complainant and its representatives are established in France and cannot understand, read or write in Chinese; that the Domain Name is formed by Latin characters and not in Chinese script, and indicates that Respondent is familiar with brands that are not of Chinese origin and is well-versed in English; and that holding the proceeding in Chinese would cause considerable extra expense, disadvantage and burden on Complainant. Respondent requests that Chinese be the language of the proceeding, mainly stating that the language of the Registration Agreement for the Domain Name is Chinese; that he has not agreed with Complainant to conduct the proceeding in English; that he is Chinese, living in China and his native language is Chinese; and that conducting the proceeding in Chinese would provide fairness and promote efficiency. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
page 4 The Panel has duly considered the circumstances of this case and the relevant policy considerations in arriving at this Decision and determination that English be the language of the proceeding. The Panel notes the Domain Name is entirely in Latin terms and does not have any specific meaning in the Chinese language; that the Domain Name includes Complainant’s well-known SOPRA STERIA trademark in its entirety and is identical to Complainant’s well-known SOPRA STERIA NEXT trademark, with the exception of blank spaces between each term. Moreover, the Domain Name resolves to a webpage that provides content in English, and offers the Domain Name for sale in English. This shows a familiarity with a well-known brand that is not of Chinese origin and a level of comfort with the English language. See Groupe Auchan v. Yang Yi, WIPO Case No. D2014-2094. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Respondent shows a level of familiarity with the English language and Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Thus, although in this case apart from the language request, Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the SOPRA STERIA and SOPRA STERIA NEXT trademarks, as noted above. Complainant has also submitted evidence, which supports that the SOPRA STERIA and SOPRA STERIA NEXT trademarks are widely known and a source identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the SOPRA STERIA and SOPRA STERIA NEXT trademarks. With Complainant’s rights in the SOPRA STERIA and SOPRA STERIA NEXT trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.co”), is identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph
page 5 Gross, WIPO Case No. D2010-0842. The Domain Name incorporates Complainant’s SOPRA STERIA and SOPRA STERIA NEXT trademarks in their entirety. Hence, the Domain Name is identical or confusingly similar to Complainant’s SOPRA STERIA and SOPRA STERIA NEXT trademarks. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make 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 relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its SOPRA STERIA and SOPRA STERIA NEXT trademarks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the SOPRA STERIA and SOPRA STERIA NEXT trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the SOPRA STERIA and SOPRA STERIA NEXT trademarks, and there is no evidence showing that Respondent has been commonly known by the Domain Name. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of filing of the Complaint, the Domain Name resolved to a webpage offering the Domain Name for sale at USD 1,288 or lease to own at USD 102 per month. At the time of this Decision, the Domain Name directs to a website offering it for sale at USD 800 or lease to own at USD 100 per month. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances of this case confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to rebut Complainant’s prima facie case. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
page 6 (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The Panel finds that Complainant has provided ample evidence to show that registration and use of the SOPRA STERIA and SOPRA STERIA NEXT trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s SOPRA STERIA and SOPRA STERIA NEXT trademarks and related products and services are widely known and recognized. Therefore, Respondent was likely aware of the SOPRA STERIA and SOPRA STERIA NEXT trademarks when he registered the Domain Name, or knew or should have known that the Domain Name was identical to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the registration of the Domain Name incorporating Complainant’s SOPRA STERIA and SOPRA STERIA NEXT trademarks in their entirety suggests Respondent’s actual knowledge of Complainant’s rights in the SOPRA STERIA and SOPRA STERIA NEXT trademarks at the time of registration of the Domain Name and his effort to opportunistically capitalize on the registration and use of the Domain Name. Moreover, at the time of filing of the Complaint, the Domain Name resolved to a webpage offering the Domain Name for sale at USD 1,288 or lease to own at USD 102 per month. At the time of this Decision, the Domain Name directs to a website offering it for sale at USD 800 or lease to own at USD 100 per month. Such use of the Domain Name demonstrates that Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or to a competitor of Complainant, for possible commercial gain. Finally, the Panel also notes the reputation of the SOPRA STERIA and SOPRA STERIA NEXT trademarks, and the implausibility of any good-faith use to which the Domain Name may be put. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: February 27, 2024
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