DECISION

 

Sopra Steria Group v. YANJIAFAN XAYJNC / 4PX

Claim Number: FA2311002072791

 

PARTIES

Complainant is Sopra Steria Group ("Complainant"), represented by Alexandra Neri of Herbert Smith Freehills Paris LLP, France. Respondent is YANJIAFAN XAYJNC / 4PX ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <soprahr.us>, registered with Dynadot Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 29, 2023; Forum received payment on November 29, 2023.

 

On November 29, 2023, Dynadot Inc confirmed by e-mail to Forum that the <soprahr.us> domain name (the Domain Name) is registered with Dynadot Inc., and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On November 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 20, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@soprahr.us. Also on November 30, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On December 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant provides consulting and information technology and software publishing services.  It has rights in the SOPRA HR SOFTWARE mark based upon its registration of that mark with the European Union Intellectual Property Office (EUIPO). The <soprahr.us> Domain Name is identical or confusingly similar to Complainant's mark because it fully incorporates Complainant's mark, merely omitting the "SOFTWARE" element and a space, and adding generic term "hr" and the country code top level domain (ccTLD) ".us".

 

Respondent has no legitimate interests in the Domain Name. It does not own a trademark identical to the Domain Name, Complainant has not authorized or licensed Respondent to use the SOPRA HR SOFTWARE mark, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead offers the Domain Name for sale, and Respondent is not commonly known by the Domain Name.

 

Respondent registered or uses the Domain Name in bad faith. Respondent registered it with actual knowledge of Complainant's rights in the SOPRA HR SOFTWARE mark, and offers it for sale at a price that exceeds Respondent's out-of-pocket costs associated with the Domain Name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The SOPRA HR SOFTWARE mark was registered to Complainant with the EUIPO (Reg. No. 013623806) on May 15, 2015 (EUIPO registration certificate included in Complaint Annex 2). Complainant's registration of its mark with the EUIPO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i).  Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). 

 

Respondent's <soprahr.us> Domain Name is identical or confusingly similar to Complainant's mark. It fully incorporates the mark, merely omitting the  "SOFTWARE" element and a space, and adding the generic term "hr" and the ".us" ccTLD. These changes do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i).  The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term ("the") from Complainant's THE PROS CLOSET mark, eliminated spacing between words, and added the ".com" gTLD.), CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, "The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i)."), The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("adding or removing descriptive terms and a gTLD is insufficient to differentiate a disputed domain name from a complainant's mark."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the change described above, Complainant's mark is clearly recognizable within the Domain Name, and the Domain Name is likely to cause confusion.

 

For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SOPRA HR SOFTWARE mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If the respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

(ii)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(iii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iv)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it does not own a trademark identical to the Domain Name, (ii) Complainant has not authorized or licensed it to use the SOPRA HR SOFTWARE mark, (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead offers it for sale, and (iv) it is not commonly known by the Domain Name. These allegations are addressed as follows:

 

To address the Policy ¶ 4(c)(i) factor, Complainant searched the USPTO, French IP Office, EUIPO and WIPO databases for references to soprahr.  This search disclosed only references to Complainant (printouts included in Complaint Annex 7). On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.

 

Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Complaint Annex 8 is a screenshot of the website to which the Domain Name resolves. It is a parking page sponsored by <daaz.com> whose only substantive content consists of a general offer to sell the Domain Name for USD 3,900.00. <daaz.com> is a marketplace for domain names available for purchase and it appears that Respondent is responsible for this posting. A general offer to sell a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that "a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests" in a disputed domain name), Blackstone TM L.L.C. v. Anonymize, Inc., FA 1952698 (Forum July 29, 2021) (where disputed domain resolved to a general for sale page, the Panel held that "[a]bsent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).").¹

 

The WHOIS printout submitted as Complaint Annex 9 and the information furnished to Forum by the registrar list "Yanjiafan Xayjnc / 4PX" as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists "Pablo Palermo" as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name.

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration or use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is offering to sell the Domain Name for USD 3,900.00 (screenshot of the <daaz.com> webpage submitted as Complaint Annex 8), a sum which clearly exceeds the normal costs directly related to the Domain Name, and its conduct thus fits within the circumstances described in Policy ¶ 4(b)(i).

 

Second, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in March 2023 (the WHOIS printout submitted as Complaint Annex 9 shows creation date). Complainant had been using its SOPRA HR SOFTWARE mark in the U.S. at least since the July 2015 filing date shown on the EUIPO registration certificate included in Complaint Annex 2 by then. The SOPRA HR SOFTWARE mark is unique, a coined term that has no meaning apart from its association with Complainant. There is no question that Respondent knew of Complainant and its mark when it registered the Doman Name. This does not fit within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent's bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons set forth above, the Panel finds that Respondent registered or is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <soprahr.us> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

 

Charles A. Kuechenmeister, Panelist

Dated: December 22, 2023