Sopra Steria Group v 于青青 (Yu Qing Qing)

WIPO Case No. D2023-1372

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sopra Steria Group v. 于青青 (Yu Qing Qing)

Case No. D2023-1372

1. The Parties

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

The Respondent is 于青青 (Yu Qing Qing), China.

2. The Domain Name and Registrar

The disputed domain name <soprabanking.xyz> is registered with Xin Net Technology Corporation.

3. Procedural History

The Complaint was filed in English 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 April 4, 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 April 4, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 5, 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 April 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2023.

The Center appointed Rachel Tan as the sole panelist in this matter on May 10, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was established in September 2014 upon the merger of Sopra Group SA and Groupe technology services. It operates in different countries including in Asia, Europe and North Africa. One of the Complainant’s subsidiaries is Sopra Banking Software, which develops and distributes software for the financial services market. This subsidiary offers services to more than 800 banks in 70 countries.

The Complainant is the owner of marks consisting of the element “sopra” or “sopra banking software” in different jurisdictions, including French Trade Mark Registration No. 92416410 for , registered on April 16, 1992, in classes 9, 16, 35, 41 and 42; International Trade Mark Registration No. 1163226 for

SOPRA, registered on April 8, 2013, designating, inter alia, China, in classes 9, 16, 35, 36, 38, 41, and 42; and European Union Trade Mark Registration No. 18271180 for SOPRA BANKING SOFTWARE, registered on December 11, 2020, in classes 9, 16, 35, 38, 41, and 42.

The Complainant is also the owner of the disputed domain names <soprabanking.com>, <soprabanking.fr>,

<soprabanking.co.uk>, and <soprabanking.net>.

The Respondent is 于青青 (Yu Qing Qing), China.

The disputed domain name was registered on August 27, 2022, and resolves to a domain name trading platform offering the disputed domain name for sale for USD 1,450 or lease for USD 242 per month.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is almost identical to its SOPRA mark. The
additional term “banking” in the disputed domain name is a common, generic and descriptive term which
directly refers to the core activity of the Complainant and its subsidiary. Therefore, the additional term
“banking” does not remove the likelihood of confusion between the disputed domain name and its SOPRA
mark. Further, the Complainant also claims that the disputed domain name is almost identical to its SOPRA
BANKING SOFTWARE marks as it reproduces the first two component of the mark only leaving out the final
“software” component.

bona fide offering of goods or services.

The Complainant further alleges that it has not granted any license to the Respondent to use the SOPRA or name. The disputed domain name directs to a page offering the disputed domain name for sale at USD 1,450, which is a value that is far superior to its actual reservation costs. Therefore, the Respondent cannot justify of any use of the disputed domain name in connection with a

The Complainant finally asserts that the disputed domain name is a reproduction of the domain names registered by the Complainant. The disputed domain name is confusingly similar to the SOPRA and SOPRA BANKING SOFTWARE marks, which confirms that the Respondent had prior knowledge of the reputation of the Complainant’s marks. Further, the disputed domain name is used in bad faith as it resolves to a page offering the disputed domain name for sale for a value far superior to its actual reservation costs.

B. Respondent

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

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6. Discussion and Findings

6.1 Language of the Proceeding

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:

(a)	the Complainant and its representatives are established in France and cannot understand, read or write in Chinese;
(b)	the Complainant would need to incur significant costs to translate the Compliant which are higher than the overall costs of this administrative proceeding;
(c)	the disputed domain name is registered in Latin characters rather than Chinese scripts and the resolved website of the disputed domain name was published entirely and exclusively in English with complex and technical terms; and
(d)	English is the most widely used language in international relations.

It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements

should not lead to undue burdens being placed on the parties and undue delay to the proceeding.

The Panel has considered the above circumstances, and finds that English shall be the language of this proceeding. The reasons are set out below:

(a)	the Complainant is a company based in France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b)	the Respondent’s choice of Roman letters for the disputed domain name and English for the resolved website of the disputed domain name indicate that the Respondent is familiar with the English language;
(c)	even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not object to this request;
(d)	the Respondent has failed to participate in the proceeding even though the Center sent the notification in English and Chinese of the Complaint; and
(e)	the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

Accordingly, the Panel will proceed with issuing this Decision in English.

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6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the SOPRA and SOPRA BANKING SOFTWARE marks.

The Panel notes the disputed domain name is comprised of the SOPRA mark in its entirety and the first two
elements of the SOPRA BANKING SOFTWARE mark. The positioning of the SOPRA mark or part of the
SOPRA BANKING SOFTWARE mark at the beginning of the disputed domain name makes either of the
marks instantly recognizable. 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 purposes of UDRP standing. See
section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO

Overview 3.0”).

Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other
words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent
a finding of confusing similarity under the first element of the Policy. Accordingly, the additional word
“banking” does not prevent a finding of confusing similarity between the disputed domain name and the
Complainant’s SOPRA mark. See section 1.8 of the WIPO Overview 3.0.

Lastly, it is permissible for the Panel to disregard the Top-Level Domain (“TLD”) in the disputed domain name, i.e. “.xyz”. It is accepted by UDRP panels that the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new generic TLDs”) and the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment to the first element. See sections 1.11.1 and 1.11.2 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has satisfied the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

In circumstances where the Complainant possesses rights to the SOPRA and SOPRA BANKING SOFTWARE marks whereas the Respondent seems to have no trade mark rights, and considering the facts and arguments set out above, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of a domain name that is identical or confusing similar to the Complainant’s SOPRA and SOPRA BANKING SOFTWARE marks. Further, there is no indication to show that the Respondent is

bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c) of the Policy are present in this case.

commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. The and SOPRA BANKING SOFTWARE marks or register the disputed domain name. Moreover, the Panel notes that the Respondent is offering the disputed domain name for sale or lease. None of these circumstances indicates a

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain
name. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph
4(a) of the Policy.

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C. Registered and Used in Bad Faith

The Complainant’s SOPRA and SOPRA BANKING SOFTWARE marks have been registered worldwide. The disputed domain name was registered after the registration of the Complainant’s SOPRA and SOPRA BANKING SOFTWARE marks. Through extensive use and advertising, the Complainant’s SOPRA and SOPRA BANKING SOFTWARE marks are well known throughout the world. Search results using the key words “sopra” or “sopra banking software” on English and Chinese Internet search engines direct Internet users to the Complainant and its business, which indicates that exclusive connections between the SOPRA and SOPRA BANKING SOFTWARE marks and the Complainant have been established. In addition, the disputed domain name is almost identical to the Complainant’s own domain names as listed in section 4 above. As such, the Respondent either knew or should have known of the Complainant’s SOPRA and SOPRA BANKING SOFTWARE marks when registering the disputed domain name and has exercised “the kind of wilful blindness that numerous panels have held support a finding of bad faith”. See Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.

Section 3.1.4 of the WIPO Overview 3.0 states that “[…] mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name is confusingly similar to the widely-known SOPRA and SOPRA BANKING SOFTWARE marks and was registered by the Respondent who has no relationship with the Complainant, which means that a presumption of bad faith can be created.

In addition, the disputed domain name is being offered for sale for USD 1,450 or lease for USD 242 per month on the resolved website, which is in excess of the normal costs for registering and maintaining a domain name. The absence of circumstances indicating that the Respondent has rights or legitimate

interests in the disputed domain name leads the Panel to conclude that the Respondent’s intent in of bad faith registration and use. See section 3.1.1 of the WIPO Overview 3.0.

registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account
these circumstances, the Panel finds that the Respondent must have known of the Complainant before
registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate
interests, and by registering and using the disputed domain name as discussed above, the Panel is led to

conclude that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 <soprabanking.xyz> be transferred to the Complainant.

/Rachel Tan/
Rachel Tan
Sole Panelist
Date: May 24, 2023