Sopra Steria Group v 吴清儒 (Wu Qing Ru)
WIPO Case No. D2023-3720
•16-11-2023
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Sopra Steria Group v. 吴清儒 (Wu Qing Ru)
Case No. D2023-3720
1. The Parties
The Complainant is Sopra Steria Group, France, represented by Herbert Smith Freehills Paris LLP, France.
The Respondent is 吴清儒 (Wu Qing Ru), China.
2. The Domain Name and Registrar
The disputed domain name <soprabanking.info> is registered with Alibaba Cloud Computing Ltd. d/b/a
HiChina ( (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2023. On September 5, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 14, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 15, 2023, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the 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 in English and Chinese of the Complaint, and the proceedings commenced on September 25, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2023.
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The Center appointed Francine Tan as the sole panelist in this matter on November 2, 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.
4. Factual Background
The Complainant is headquartered in Paris, France and operates in many countries, primarily in Asia, Europe, and North Africa. It states that it is a leading international provider of consulting and information technology services as well as software publishing. The Complainant was established in September 2014 upon the merger of Sopra Group SA and Groupe Steria SCA, which had, respectively, been founded in 1968 and 1969.
The Complainant’s subsidiaries include Sopra Banking Software, which develops and distributes software for the financial services market. Incorporated in 2010, it offers its services to more than 800 banks in 70 countries. In 2018, it generated a revenue of 373.7 million euros.
The Complainant is the registered owner of various SOPRA and SOPRA BANKING SOFTWARE trade marks. Its trade mark registrations include the following:
| - | French trade mark registration No. 92416410 for SOPRA., registered on August 28, 1992; | ||
| - | European Union (“EU”) trade mark registration No. 3233335 for SOPRA, registered on February 3, | ||
| 2005; | |||
| - | EU trade mark registration No. 9199886 for SOPRA, registered on December 6, 2010; | ||
| - | International trade mark registration No. 1163226 for SOPRA, registered on April 8, 2013; | ||
| - | |||
| 2014; | |||
| |||
| - |
| ||
| - | EU trade mark registration No. 18271180 for SOPRA BANKING SOFTWARE, registered on |
December 11, 2020;
| - | EU trade mark registration No. 11047636 for | , registered on December 13, |
| 2012; | ||
| - | French trade mark registration No. 4125248 for | , registered on April 3, |
2015; and
| - | EU trade mark registration No. 13623756 for | , registered on May 15, |
| 2015. |
The Complainant has been the registered owner of the following domain names since May 25, 2012:
| - | <soprabanking.com>; <soprabanking.fr>; <soprabanking.co.uk>; and <soprabanking.net>. |
(Collectively, “the Complainant’s Domain Names”.)
The disputed domain name was registered on May 25, 2023. At the time of the filing of the Complaint, the disputed domain name resolved to a parking page where it was listed for sale for USD 950.
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5. Parties’ Contentions
A. Complainant
1. The disputed domain name is identical or confusingly similar to the Complainant’s SOPRA and
SOPRA BANKING SOFTWARE trade marks in which it has rights. The disputed domain name incorporates the Complainant’s SOPRA trade mark in its entirety with the addition of the term “banking”. The added term “banking” directly refers to the core activity of the Complainant and its subsidiary, Sopra Banking Software.
The disputed domain name is also almost identical to the Complainant’s SOPRA BANKING SOFTWARE trade mark with the omission of the term “software”. The omission of this word does not alleviate the likelihood of confusion between the disputed domain name and the SOPRA BANKING SOFTWARE trade marks.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent
is not a licensee of the Complainant. The Complainant has not granted any authorization to the Respondent to use the SOPRA and/or SOPRA BANKING SOFTWARE trade marks in a domain name or otherwise. The disputed domain name resolved to a webpage, where it was being offered for sale for a value far greater
than its registration costs. To the best of the Complainant’s knowledge, there is no third-party entity known by the name “Sopra Banking Software” and there is no justification for the Respondent’s use of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith. The disputed domain name
in an attempt to divert traffic from the Complainant’s websites. The Complainant’s SOPRA and SOPRA
is an identical reproduction of the Complainant’s Domain Names. The disputed domain name was registered was aware of the Complainant’s trade mark rights therein. The Complainant’s SOPRA and SOPRA BANKING SOFTWARE trade marks have been recognized in an earlier UDRP panel decision to be “well known throughout the world”.
B. Respondent
The Respondent did not file a Response in this proceeding.
6. Discussion and Findings
6.1. Preliminary Issues
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English for the following reasons:
(i) The Complainant and its representatives are established in France and cannot understand, read or
write in Chinese.
(ii) Requiring the Complaint to be translated into Chinese would result in the Complainant having to incur substantial expenses, higher than the overall cost of this proceeding. It would also cause undue delay.
The Respondent did not comment on the language of the proceeding.
Paragraph 11(a) of the Rules provides that:
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“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.”
The Panel finds guidance from Section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states, inter alia, the following:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, … (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, … (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”
Having considered the relevant factors and weighed the interests of the respective Parties, the Panel determines that it would be appropriate for English be the language of the proceeding. The Panel is persuaded that the Respondent would not be prejudiced as he appears to be familiar with and/or comfortable
with the English language. The disputed domain name contains the English word “bank” and the Top-Level
Domain “.info”. The Respondent had, moreover, been notified by the Center, in both Chinese and English, of
the commencement of the proceeding, the language of the proceeding, and deadline for filing a Response.
The Respondent could have informed the Center of his inability to communicate in English and/or propose to
submit his Response in Chinese but did not do so. In the absence of any objections by the Respondent, the
Panel does not find it procedurally efficient nor justified to have the Complainant translate the Complaint into
Chinese.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the SOPRA and SOPRA BANKING SOFTWARE trade marks. The disputed domain name wholly incorporates the SOPRA trade mark with the addition of the term “banking”. The disputed domain name is also closely similar to the Complainant’s SOPRA BANKING SOFTWARE trade mark with the omission of the element “software”. UDRP panels have held that in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of paragraph 4(a)(i) of the Policy. UDRP panels have also held that where the relevant trade mark is recognizable within the domain name in dispute, the addition or omission of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. (WIPO Overview 3.0, sections 1.7 and 1.8). The Panel finds in this case that the Complainant’s trade marks are recognizable within the disputed domain name.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights
or legitimate interests in the disputed domain name. The Complainant’s registration of the SOPRA and
SOPRA BANKING SOFTWARE trade marks predates the registration date of the disputed domain name by
many years. The Complainant did not license nor authorize the Respondent to use the SOPRA and/or
SOPRA BANKING SOFTWARE trade marks in a domain name. Neither is there any evidence that the
Respondent is commonly known by the disputed domain name.
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The disputed domain name resolves to a webpage which displays an advertisement for the sale of the dispute domain name for USD 950, a price that likely exceeds the Respondent’s out-of-pocket expenses for registration of the disputed domain name. There is no objective evidence showing that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use purpose.
The Panel also finds that the disputed domain name which incorporates the Complainant’s SOPRA trade mark carries a high risk that the disputed domain name would be perceived by Internet users to be affiliated with the legitimate holder of the trade marks, i.e. the Complainant. This is especially so since the disputed domain name mirrors the Complainant’s Domain Names. Where a domain name consists of a trade mark, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the legitimate trade mark owner.
Having established a prima facie case, the burden of production shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. The Respondent did not file a formal response in the present case to rebut the Complainant’s assertions and evidence. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel is persuaded in the circumstances of this case that the Respondent targeted the Complainant and its well-known SOPRA and/or SOPRA BANKING SOFTWARE trade marks. There is no other reason for the Respondent to have registered the disputed domain name except for the sole purpose of riding off the
reputation and goodwill in the Complainant’s SOPRA and/or SOPRA BANKING SOFTWARE trade marks
and to create confusion with the Complainant’s SOPRA and/or SOPRA BANKING SOFTWARE trade marks
and business:
“If […] circumstances indicate that the respondent’s intent in registering the disputed domain name was in
fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith
on the part of the respondent. While panel assessment remains fact-specific, generally speaking such
circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights,
(ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, (iv)
website content targeting the complainant’s trademark, e.g., through links to the complainant’s competitors,
(v) threats to point or actually pointing the domain name to trademark-abusive content, (vi) threats to “sell to
the highest bidder” or otherwise transfer the domain name to a third party, (vii) failure of a respondent to
present a credible evidence-backed rationale for registering the domain name, […]. Particularly where the
domain name at issue is identical or confusingly similar to a highly distinctive or famous mark, panels have
tended to view with a degree of skepticism a respondent defense that the domain name was merely
registered for legitimate speculation (based for example on any claimed dictionary meaning) as opposed to
targeting a specific brand owner.” (See section 3.1.1 of the WIPO Overview 3.0.)
The Respondent registered the disputed domain name long after the SOPRA and SOPRA BANKING SOFTWARE trade marks and the Complainant’s Domain Names were registered. Given the goodwill and reputation fostered by the Complainant in its business based on these trade marks, as well as the distinctiveness of the Complainant’s SOPRA mark, it is highly unlikely that the Respondent did not know of the Complainant and its trade marks prior to the registration of the disputed domain name. Moreover, the disputed domain name resolves to a webpage which displays an advertisement for the sale of the disputed domain name for USD 950.
Based on the foregoing, the Panel concludes that the disputed domain name was registered and is being used in bad faith. The Panel finds that this is a straightforward case of cybersquatting.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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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 name <soprabanking.info> be transferred to the Complainant.
/Francine Tan/ Francine Tan Sole Panelist Date: November 16, 2023
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