Sopra Steria Group v Mei Wang

WIPO Case No. D2024-0606

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sopra Steria Group v. MEI WANG

Case No. D2024-0606

1. The Parties

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

The Respondent is MEI WANG, China.

2. The Domain Names and Registrar

The disputed domain names <sopragroup.xyz>, <soprahr.xyz> and <soprasteria.shop> are registered with

Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2024, in respect of the disputed domain names <sopragroup.xyz> and <soprahr.xyz>. On February 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the mentioned disputed domain names. On February 10, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the mentioned disputed domain names which differed from the named Respondent (Unknown / REDACTED FOR PRIVACY, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On February 16, 2024, the Complainant requested that the disputed domain name <soprasteria.shop> be added to the Complaint. The Complainant filed an amended Complaint on February 20, 2024. On February 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <soprasteria.shop>. On February 22, 2024, the Registrar confirmed that the Respondent is the registrant of that disputed domain name and provided additional contact details.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2024.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 26, 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 operates in the field of consulting and information technology. The Complainant owns trademark registrations for the trademark SOPRA such as:

- French trademark registration No. 92416410 for SOPRA., registered on April 16, 1992;

- European Union trademark registration No. 3233335, registered on February 3, 2005;

- European Union trademark registration No. 9199886, registered on December 6, 2010.

The Complainant owns trademark registrations for the trademark SOPRA HR SOFTWARE such as:

- French trademark registration (figurative) No. 4125243 registered on October 13, 2014;

- European Union trademark registration (figurative) No. 13623806, registered on May 15, 2015

The Complainant owns trademark registrations for the trademark SOPRA STERIA such as:

- French trademark registration (figurative) No. 4125228 registered on October 13, 2014;

- European Union trademark registration (figurative) No. 13623889, registered on May 15, 2015

The disputed domain names <sopragroup.xyz> and <soprahr.xyz> were registered on November 28, 2023.
The disputed domain name <soprasteria.shop> was registered on December 15, 2023.

As per the evidence submitted in the Complaint, the disputed domain names resolved to inactive websites. All three disputed domain names currently redirect to the Dan.com platform where they are offered for sale for USD 1,450.

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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.

- The disputed domain name <sopragroup.xyz> reproduces the Complainant’s trademark in its entirety.

The addition of the generic term “group” does not eliminate confusing similarity. The Complainant’s
trademark remains recognizable as it is well known.
- The disputed domain name <soprahr.xyz> incorporates the Complainant’s trademark in its entirety.
The addition of the letters “hr” does not eliminate confusing similarity. The disputed domain name is highly
similar to the Complainant’s trademark SOPRA HR SOFTWARE. Not reproducing the descriptive term
“software” does not prevent a finding of confusing similarity.

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- The disputed domain name <soprasteria.shop> incorporates the Complainant’s trademark in its

entirety simply without space.

The generic Top-Level Domains (“gTLDs”) “.xyz” and “.shop” should be disregarded.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names resolve to inactive websites.

names. The Respondent is not known to the Complainant nor is it known by the disputed domain names.
The Respondent is not licensed by the Complainant nor authorized by the Complainant to use its trademark.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The disputed domain names are highly similar to domain names owned by the Complainant, which contain “sopra”, “soprahr”, “sopragroup”, and “soprasteria”. They are also confusingly similar to the Complainant’s trademarks. The Respondent must have been aware of the Complainant’s trademarks as they are neither descriptive nor evocative. Prior UDRP panels have acknowledged the distinctive character and reputation of the Complainant’s trademarks. Passive holding can be a sign of bad faith so is the registration of multiple domain names that are confusingly similar to established trademarks.

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 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 SOPRA mark is reproduced within the disputed domain names. Accordingly, the disputed
domain names are confusingly similar to the SOPRA mark for the purposes of the Policy. The disputed
domain name <soprasteria.shop> is also identical to the Complainant’s SOPRA STERIA mark.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “group” and “hr” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names <sopragroup.xyz> and <soprahr.xyz> and the SOPRA 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.

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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 names. 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 names such as those enumerated in the Policy or otherwise. The Panel notes that the composition of the disputed domain names itself carries a risk of implied affiliation.

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 that the Respondent must have been aware of the Complainant’s trademark SOPRA as the disputed domain names were registered three decades after the registration of the Complainant’s trademark and the Complainant’s trademark is fanciful and well known and is reproduced in its entirety.

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 (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this

proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or
WIPO Overview 3.0

use of false contact details (noted to be in breach of its registration agreement). , section disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the

Moreover, the Panel notes that the disputed domain names are currently being offered for sale at a third- party website for USD 1,450. The Panel finds this further supports the finding of the Respondent’s bad faith in this case.

The Panel finds that the Complainant has established the third element of the Policy.

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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 names <sopragroup.xyz>, <soprahr.xyz> and <soprasteria.shop> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: April 3, 2024