Sopra Steria Group v William Labege

WIPO Case No. D2023-5031

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sopra Steria Group v. William Labege

Case No. D2023-5031

1. The Parties

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

The Respondent is William Labege, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <soprastevia.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2023. On December 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 (Anonymous / On behalf of soprastevia.com owner, Identity Protection Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 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 December 20, 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 December 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2024.

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The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 29, 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 was established in 2014 as a result of the merger of Sopra Group SA and Groupe Steria SCA, two companies that were founded respectively in 1968 and 1969. The Complainant is a consulting, information technology services, and software publishing company.

The Complainant is the owner of registered trademarks in the mark SOPRA STERIA, amongst which:

United Kingdom Trademark No. UK00913623889 for

International Classes 9, 16, 35, 36, 38, 41, 42, and 45; , registered on May 15, 2015, in

European Union Trademark No. 013623889 for	, registered on May 15, 2015, in
International Classes 9, 16, 35, 36, 38, 41, 42, and 45;
International Trademark No. 1290669 for

International Classes 9, 16, 35, 36, 38, 41, 42, and 45. , registered on September 24, 2015, in

The Complainant also owns domain names incorporating the mark SOPRA STERIA, such as
<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 September 26, 2023, well after the Complainant secured rights in the mark SOPRA STERIA. It does not resolve to any active website.

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 has rights in the mark SOPRA STERIA and that the disputed domain name is confusingly similar to this mark. The Respondent has replaced the letter “r” with the letter “v” in the disputed domain name. Both letters look similar and will be pronounced in a similar way when reading the disputed domain name. According to the Complainant, this is a blatant case of typo-squatting and, in cases like this, prior UDRP panels have consistently found that a domain name is confusingly similar to a complainant’s mark. With respect to the generic Top-Level Domain (gTLD) “.com”, the Complainant points out that this ought to be disregarded in the determination of confusing similarity.

Furthermore, the Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not known to the Complainant and is not part of its workforce. To the best of the Complainant’s knowledge, the Respondent does not own any trademark in nor is known as “Sopra Stevia” and the Complainant has not granted any license to the Respondent to use

the mark SOPRA STERIA, nor has it authorized it to register or use the disputed domain name. In addition,
the Complainant adds, the Respondent cannot justify 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. In fact, the
disputed domain name resolves to an inactive website.

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As to the assessment of the Respondent’s bad faith at the time of registration, the Complainant contends name to an error page does not prevent a finding of bad faith. Finally, the Complainant argues that the Respondent has taken active steps to conceal his identity through use of a privacy service, which confirms its bad faith.

that because the disputed domain name is almost identical to the Complainant’s existing domain names, its
intention must have been to divert traffic from the Complainant’s websites and to mislead recipients of emails
sent from the disputed domain name into thinking that these emails are sent by the Complainant. According
to the Complainant, there is, therefore, a high risk that the disputed domain name is being used or will be
used in the future for fraudulent purposes, such as phishing emails. Furthermore, the Complainant contends
that the Respondent knew that by registering the disputed domain name it would infringe the Complainant’s
trademarks. The Complainant points out that the disputed domain name reproduces a trademark that is not
generic and the disputed domain name can therefore not have been chosen by chance. As to bad faith use,
relying on the passive use doctrine set down in the Telstra Corporation Limited v. Nuclear Marshmallows,

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 registered trademarks that the Complainant relies on are figurative, however these show “rights in a prima facie satisfy the requirement that a complainant shows “rights in a mark” so long as the textual elements are not overtaken. WIPO Overview 3.0, section 1.10.

mark” since the dominant portion of these trademarks are the words “sopra steria”. It is a consensus view of
The Panel finds the mark SOPRA STERIA is recognizable 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.

The Panel agrees that the disputed domain name is virtually identical to the Complainant’s abovementioned registered trademarks since the only difference is the replacement of the letter “r” with the letter “v”. The SOPRA STERIA mark is therefore clearly recognizable in a side-by-side comparison with the disputed domain name. Accordingly, the Panel agrees with the Complainant that this is a clear case of “typo squatting” since the disputed domain name is a slight misspelling of the Complainant’s registered trademark. WIPO Overview 3.0, section 1.9.

Finally, as for the applicable gTLD “.com”, the Panel holds that this can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

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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 finds that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. The Complainant has shown that the disputed domain name currently resolves to an error page. This kind of use of the disputed domain name does not represent a bona fide offering of goods or

services and does not support rights or legitimate interests in the disputed domain name.

In addition, the Complainant confirmed that the Respondent is not affiliated with the Complainant in any way composition of the disputed domain name, comprising the Complainant’s trademark and replacing the letter “r” with “v” indicates an awareness of the Complainant and carries a risk of Internet user confusion (that seemingly being the Respondent’s aim).
nor has the Complainant licensed, authorized, or permitted the Respondent to register domain names
incorporating the Complainant’s trademarks. The Panel has taken note of the Complainant’s confirmation in
this regard and has not seen any evidence that would suggest the contrary. In the absence of any license or
permission from the Complainant to use its trademarks, no actual or contemplated bona fide or legitimate
use of the disputed domain name could reasonably be claimed (see, e.g., Sportswear Company S.PA. v.

Tang Hong, WIPO Case No. D2014-1875; and LEGO Juris A/S v. DomainPark Ltd, David Smith,

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.

The disputed domain name is a clear case of typo squatting. As mentioned under the first element, the
disputed domain name only differs one letter from the Complainant’s SOPRA STERIA mark: the letter “r”
has been replaced by the letter “v”, meaning registration of the disputed domain name has clearly been done
with an intention to confuse Internet users seeking for or expecting the Complainant. These circumstances,
in combination with the Respondent’s clear absence of rights or legitimate interests in the disputed domain
name, are strong indicators of bad faith.

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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 Panel believes that the Respondent knew at the time of registration that the disputed domain name included the Complainant’s SOPRA STERIA mark. As demonstrated by the Complainant, its trademarks SOPRA STERIA were registered many years before the registration of the disputed domain name in several countries including the United Kingdom, the country of residence of the Respondent according to the WhoIs records. The Respondent’s knowledge of the Complainant and its trademarks and therefore its registration in bad faith of the disputed domain name may be inferred from these circumstances. WIPO Overview 3.0, section 3.2.2.

Furthermore, 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain name 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 use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s SOPRA STERIA trademark, the Respondent’s failure to participate in this proceeding, 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.

Moreover, in view of the confusing similarity of the disputed domain name with the Complainant’s trademark SOPRA STERIA, the Respondent’s retention of control of the disputed domain name represents an implied and ongoing threat to the Complainant, which further supports a finding of bad faith. WIPO Overview 3.0,

section 3.4.

Finally, the fact that, as shown by the Complainant, the Respondent has concealed its identity only further supports a finding of bad faith in these circumstances.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes 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 <soprastevia.com> be transferred to the Complainant.

/Benoit Van Asbroeck/
Benoit Van Asbroeck
Sole Panelist
Date: February 12, 2024