Sopra Steria Group v sopra steria

WIPO Case No. D2023-1371

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sopra Steria Group v. sopra steria

Case No. D2023-1371

1. The Parties

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

The Respondent is sopra steria, India.

2. The Domain Name and Registrar

The disputed domain name <soprasteria.link> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2023. On March 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2023, 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 (Organization: Not Applicable) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 24, 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 the Respondent of the Complaint, and the proceedings commenced on April 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2023.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 12, 2023. 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.

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4. Factual Background

The Complainant in this proceeding is Sopra Steria Group, a société anonyme incorporated in France.

The Complainant, Sopra Steria Group, was established in 2014 upon the merger of Sopra Group SA and

Groupe Steria SA, two companies that were founded respectively in 1968 and 1969.

As per the Complaint, the Complainant is a leading international player in consulting and information
technology services, as well as in software publishing. It operates in many countries and most notably in
Asia (Hong Kong, China, Singapore, India), Europe (France, Benelux, Spain, Italy, United Kingdom, and

Switzerland) and North Africa.

The Complainant owns several trademarks corresponding and/or including the SOPRA STERIA sign.

The Complainant is, inter alia, the owner of:

- French trademark registration number 4125228 for the SOPRA STERIA (device) trademark registered
on April 3, 2015;

- European Union Trademark registration number 013623889 for the SOPRA STERIA (device)
trademark, registered on May 15, 2015;

- International registration number 1290669 for the SOPRA STERIA (device) trademark, registered on
September 24, 2015.

The name “Sopra Steria” is also part of the registered company name of the Complainant. In addition, the
Complainant is the holder of the domain names <soprasteria.com> (registered on April 7, 2014),
<soprasteria.eu> (registered on April 15, 2014), <soprasteria.fr> (registered on April 15, 2014) and

<soprasteria.org> (registered on April 15, 2014).

The disputed domain name was registered on July 28, 2022.

The disputed domain name does not direct to any active website. In the past (at least on March 28, 2023), it resolved to a Registrar parking page.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions
A. Complainant

The Complainant claims that the disputed domain name is identical to the above-cited SOPRA STERIA trademark.

The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with
respect to the disputed domain name. No license or authorization of any other kind has been given by the
Complainant to the Respondent to use the SOPRA STERIA trademark.

Moreover, the Complainant claims that the Respondent has misappropriated the identity of the Complainant by falsely stating that its name was “sopra steria” and using the fake email address incorporating “soprasteria” when registering the disputed domain name, and that this demonstrates the Respondent’s bad faith and evidences a severe risk that the disputed domain name will be used for fraudulent purposes, for instance to extort money from fraud victims.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the
Policy require that the Complainant must demonstrate to the Panel that:

(i)        the disputed 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 disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the SOPRA STERIA trademark.

The disputed domain name, which is practically identical to the Complainant’s trademark, differs from the latter solely by the absence of a space between “sopra” and “steria”.

Therefore, the Panel finds the disputed domain name to be identical or confusingly similar to the SOPRA

STERIA trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Panel also notes that the composition of the disputed domain name incorporating the Complainant’s trademark without any addition under the Top-Level Domain “link” associated with the Complainant’s activity carries a high risk of implied affiliation. In addition, although the listed name for the Respondent is “sopra steria”, the Respondent does not appear to be commonly known by this name. Indeed, according to the Complainant, the Respondent, when reserving the disputed domain name, falsely stated that its name was “sopra steria”. A limited search on the web (conducted by this Panel in accordance with the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules), confirmed that there is no such entity at the address provided by the Respondent. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the SOPRA STERIA trademark when it registered the disputed domain name.

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In fact, the Complainant’s SOPRA STERIA trademark is a fanciful name with no apparent meaning aside from referring to the Complainant’s name and trademark, and it has been registered for several years before the registration of the disputed domain name.

In addition, it appears that prior to registering the disputed domain name, the Respondent created a Gmail address that includes the Complainant’s SOPRA STERIA trademark and when registering the disputed domain name, the Respondent stated that its name was “sopra steria”.

Hence, the registration of the disputed domain name does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainant’s mark and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name.

In addition, the fact that the Respondent deliberately chose to conceal its identity by stating that its name is
“opra steria” is another factor supporting the finding of bad faith.

Inference of bad faith can also be found in the failure to respond to the Complainant’s cease and desist letter and to the allegations made by the Complainant in this proceeding.

In these circumstances, the passive holding of the disputed domain name would not prevent a finding of bad
faith. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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, <soprasteria.link>, be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: June 26, 2023