Sopra Steria Group v Carolina Rodrigues, Fundacion Comercio Electronico

WIPO Case No. D2023-4968

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sopra Steria Group v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2023-4968

1. The Parties

The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <digitaldesksoprasteria.com> 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 29, 2023. On November 29, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On November 29, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which dif fered f rom the named Respondent (Unknown) and contact information in the

Complaint. The Center sent an email communication to the Complainant on December 5, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on December 7, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on December 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on January 8, 2023.

The Center appointed Luis Miguel Beneyto Garcia-Reyes as the sole panelist in this matter on January 25, compliance with the Rules, paragraph 7.

2024. The Panel f inds that it was properly constituted. The Panel has submitted the Statement of

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4. Factual Background

The Complainant, Sopra Steria Group, is an international entity which develops its activities in the sector of technology services in general, including consulting activities, software publishing, and artificial intelligence.

The Complainant owns, among others, the following registrations:

-French registration nº 4125228 SOPRA STERIA (and device) registered on October 13, 2014, in classes 9,
16, 35, 36, 41, 42, and 45
-European Union registration nº 013623889 SOPRA STERIA (and device) registered on May 15, 2015, in
classes 9, 16, 35, 36, 38, 41, 42, and 45
-United Kingdom registration nº UK00913623889 SOPRA STERIA (and device) registered on May 15, 2015,
in classes 9, 16, 35, 36, 38, 41, 42, and 45

The Complainant is also owner of the domain names <soprasteria.com>, <soprasteria.eu>, <soprasteria.fr>, and <soprasteria.org>, all of them registered in April 2014.

The disputed domain name was registered on August 1, 2023. The website at the disputed domain name resolves to a parking page with pay-per-click links.

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:

The Complainant was established in September 2014 upon a merger between Sopra Group S.A. (founded in 1968) and Groupe Stertia SCA (founded in 1969) and is a leading organization in technology services and sof tware publishing, operating in many countries in Europe, Asia, and North Africa.

The Complainant owns numerous Trademark registrations for SOPRA STERIA including those which details are mentioned in the Factual Background section of the decision.

The disputed domain name incorporates the Complainant’s registered Trademark SOPRA STERIA in its entirety and the addition of the terms “digital desk”, which does not prevent the finding of confusing similarity as they will be considered by the Internet users as referring to the Complainant’s of f icial digital desk.

There is no entity that can be considered as known under the disputed domain name or that owns any Trademark registration for “Digital Desk Sopra Steria”, and the Complainant has not granted a license to use the Trademark nor authorized the Respondent to use or register the disputed domain name, and as a consequence, the Respondent has no rights or legitimate interests in respect to the disputed domain name.

The disputed domain name is highly similar to those owned by the Complainant (<soprasteria.com>,
<soprasteria.eu>, <soprasteria.f r>, and <soprasteria.org) all registered in April 2014, which shows the
Respondent´s intention to divert traf f ic.

The disputed domain name resolves to a page which pay-per-click hyperlinks refer to the Complainant’s trademarks, so the Respondent is taking advantage of the confusing similarity between the Complainant’s Trademark and the disputed domain name in order to generate revenues, so the disputed domain name has been registered and used in bad faith.

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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 f irst 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 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 here, “digital” and “desk” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a f inding 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 f inds the f irst 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 of ten 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.

The disputed domain name resolves to a page comprising pay-per-click links related to Complainant. This does not represent a bona fide offering where such links compete with or capitalize on the reputation of the Complainant’s mark. WIPO Overview 3.0, section 2.9.

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 f inds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel f inds that the Complainant has submitted sufficient evidence to conclude that there is indeed bad faith on the part of the Respondent.

This conclusion is reached if we take into account that the Complainant’s trademark SOPRA STERIA is suf ficiently known in its sector of activity, and that it bears a high degree of distinctiveness. The Respondent, consequently, must have been aware of the Complainant’s trademark, so obviously, the inclusion of the terms “sopra steria” in the disputed domain name cannot be considered to be coincidental.

In addition, it should be noted that the disputed domain name resolves to a website comprising pay-per-click links that compete with or capitalize on the reputation and goodwill of the Complainant’s SOPRA STERIA mark, which demonstrates the Respondent’s intention to take advantage of the Complainant’s mark and, therefore, to obtain an economic benefit. Therefore, the Respondent’s registration and use of the disputed domain name constitutes bad faith pursuant to the paragraph 4(b)(iv) of the Policy.

Consequently, the Panel concludes that the third element of paragraph 4(a) 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 <digitaldesksoprasteria.com> be transferred to the Complainant.

/Luis Miguel Beneyto Garcia-Reyes/
Luis Miguel Beneyto Garcia-Reyes
Sole Panelist
Date: February 8, 2024