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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sociйtй Gйnйrale v. NA/Frank Agbalajobi

Case No. D2004-0916

 

1. The Parties

The Complainant is Sociйtй Gйnйrale, a company organized under French law having its principal place of business in Paris, France. It is represented by Bird & Bird, Solicitors, of Paris, France.

The Respondent is NA/Frank Agbalajobi of Ouagadougou, Burkina Faso.

 

2. The Domain Name and Registrar

The disputed domain name <socgen-bf.com> is registered with Bizcn.com, Inc. of Xiamen, the People’s Republic of China.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2004. On November 3, 2004, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 4, 2004, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 26, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2004.

The Center appointed Mary Vitoria, QC as the Sole Panelist in this matter on January 4, 2005. 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.

The language of the proceeding is English. Some of the Annexes to the Complaint were in French. The Complainant indicated its willingness to provide the Panel with a translation into English of these Annexes if necessary. The Panel has decided that English translations of the Annexes in question are not necessary for the purposes of the determination of the issues.

 

4. Factual Background

The Complainant is one of the leading financial services groups in the euro zone. It employs 88 000 people worldwide across three core businesses:

- Retail banking and financial services: the Complainant states that it serves over 15 million customers in 32 countries, included Burkina Faso;

- Global investment management: the Complainant states that it ranks among the top tier of euro-zone banks with 284 billion euros of assets under management as of December 31, 2003;

- Corporate and investment banking: the Complainant states that its Corporate and Investment Banking ranks among the European and global leaders in the euro capital markets, derivatives and structured finance.

The Complainant has exhibited at Annex 3 to the Complaint, its Annual Report for 2003, which details the activities of its group.

The Complainant is the owner of the following trademarks:

- The French trademark SOCGEN, filed on September 10, 1996, registered under the No. 96641090 which covers goods and services of International classes 16, 35 and 36.

- The French trademark SOCGEN, filed on June 5, 2000, registered under the No. 01 3 103 862 which covers goods and services of International class 38.

- The Community trademark SOCGEN, filed on March, 4, 1997, registered under the No. 23853 which covers goods and services of International classes 16, 35 and 36.

- The International trademark SOCGEN, filed on December, 5, 2001, registered under the No. 772 893 which covers goods and services of International classes, 16, 35 and 36 and designates the following countries: Germany, Austria, Benelux, Spain, Italy, Portugal, Switzerland, Australia, Denmark, Finland, Greece, Ireland, Japan, Great Britain, Sweden.

- The South African trademark SOCGEN, filed on November 7, 2001, registered under the n°91/9412 and renewed on October 8, 2001, which covers goods and services of International class 36.

The Complainant has exhibited some of the relevant registration certificates at Annex 4 to the Complaint.

The Complainant also owns various domain names comprising the trademark SOCGEN and claims that these have been used by the Complainant since on or about the date of their registration. Some of these registrations are exhibited at Annex 4 to the Complaint. The earliest, which is for <socgen.com>, dates from 1996.

The Complainant asserts that the trademark SOCGEN is the contraction of the full company name Sociйtй Gйnйrale. At Annex 7 to the Complaint, the Complainant exhibits a series of extracts from financial publications which refer to the Complainant as “SOCGEN”.

The Respondent’s domain name consists of the letters “socgen” with an hyphen followed by the letters “bf” to designate Burkina Faso and the gTLD “.com”. The registration occurred on August 20, 2004.

At Annex 8 of the Complaint there is exhibited a print-out of October 1, 2004, of a page from the Complainant’s website, “www.socgen.com”, together with a print-out of some of the pages from the Respondent’s website, “www.socgen-bf.com”.

The Respondent’s site offers banking and financial services on behalf of “Sociйtй Gйnйrale, Bokina Faso”. The site is in English and carries a copyright notice “SOCGEN 2002” and contains frequent references to the Sociйtй Gйnйrale Group and to the abbreviation SOCGEN (in capitals). Both sites make prominent use of the Complainant’s full name Sociйtй Gйnйrale in the form of a logo comprising the word “Sociйtй” printed in black on a red rectangle with the word “Gйnйrale” printed in white on a black rectangle immediately below the red rectangle. The Complainant has stated that the use of this logo and of the references to the Sociйtй Gйnйrale Group and the abbreviation SOCGEN are without its permission.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the addition of the letters “bf” to designate a country and of the gTLD “.com” which is required for registration of the domain names, have no distinguishing capacity in the context of domain name and do not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. Namezero.Com, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271). It says that the only distinctive element of the domain name concerned is “SOCGEN”, which is strictly identical to the Complainant’s trademark, and the use of lower case letter format does not prevent confusion and that, consequently, because of this identity, there is a high risk of confusion, as a consumer may think that this domain directly refers to the Complainant’s services. It alleges that this risk of confusion is strengthened by the fact that the disputed domain name leads to a website reproducing all the features of the Complainant’s website, like trademark, logos, house-style and points out that the Complainant is present in Burkina Faso and runs a website dedicated to Burkina Faso. It concludes by asserting that there is no doubt that the domain name <socgen-bf.com> generates confusion with the Complainant’s trademark SOCGEN.

The Complainant asserts that it has prior rights in the trademark SOCGEN, which precede by many years Respondent’s registration of the domain name and that there is no licence, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s trademark SOCGEN. It claims that the Respondent has made no use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. It also claims that the Complainant is well known throughout France and the world, including Burkina Faso, under the trademark SOCGEN to designate its services on the Internet relating to banking and financial services. The Complainant asserts that there is no doubt that the Respondent is unable to demonstrate a legitimate interest in respect of the disputed domain name and that its registration has been made maliciously to damage the Complainant’s interests and that it registered the domain name with the intention of misleading consumers.

The Complainant asserts that the disputed domain name was registered and used in bad faith on the following grounds:

(a) The Respondent has no prior right and no authorization had been given by the Complainant concerning the SOCGEN trademark.

(b) the notoriety of the Complainant and of its trademark SOCGEN used, for example, on the Internet.

(c) the disputed domain name leads to a website which reproduces the main features of the Complainant’s websites, as if it were an official website.

In support of contention (b) it stated that the Complainant is a well-known bank and the trademark SOCGEN is used in France, in Burkina Faso and all over the world to designate the Complainant and its activities and relied on Annexes 4 and 7 and on the existence of various websites dedicated to the Complainant’s activities, notably in Burkina Faso, which increased its international presence. (Annex 6). It asserted that the notoriety of the Complainant and of the trademark SOCGEN, its presence in Burkina Faso where the Respondent is located demonstrated that the domain name <socgen-bf.com> had been registered knowingly.

In support of contention (c), the Complainant stated that because of the risks regarding confidential data and, for example, access to bank account numbers, the Complainant contacted the website hoster so as to obtain the suspension of the Respondent’s website but that, nevertheless, the risk of confusion was still real, which is why it was important for the Complainant to obtain the transfer of the disputed domain name in order to avoid any resumption of the conduct in dispute by the Respondent. It asserted that there was no doubt that the Respondent knew perfectly well of the Complainant and its activities because of the well-known character of the Complainant and its trademark and because the website run under the domain name <socgen-bf.com> reproduced the Complainant’s websites features (trademark, logos, colors…) (Annexe [8]). It said that the Respondent had obviously registered the domain name for the purpose of luring Internet users to the site by causing confusion in making the consumer believe that it constituted an official website and that by using the domain name the subject of the Complaint, the Respondent was attempting to create a likelihood of confusion with the Complainant’s marks as to the source or affiliation of the Respondent’s website which was linked to the domain name. The Complainant asserted that the Respondent’s use and misappropriation of Complainant’s mark was for purely harmful purposes and that the Internet user, who was a victim of the trickery because the information available on the website was erroneous, would only keep in mind the Complainant’s apparent failure, without knowing the origin of this failure. It said that the linkage to a false website indicated both desire to tarnish the mark and the reputation of the Complainant and a desire to profit from an unjustified use of the domain name. It said that the fact that the website which had been copied concerned a bank was all the more dangerous since the data available or the information required were strictly confidential. It asserted that these facts showed that the domain name <socgen-bf.com> had been registered in bad faith for the purpose of creating a likelihood of confusion with Complainant’s trademark as to the source or affiliation of Respondent’s website.

B. Respondent

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

 

6. Discussion and Findings

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

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The 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 domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.

Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds that:

A. Identical or Confusingly Similar

The domain name <socgen-bf.com> is confusingly similar to the SOCGEN trademark in which the Complainant has rights. The Complainant submitted that the addition of the letters “bf” to designate the country, Burkina Faso, and of the gTLD “.com” which is required for registration of the domain names had no distinguishing capacity in the context of domain name and relied on Telecom Personal, S.A., v. Namezero.Com, Inc, WIPO Case No. D2001-0015, and Nokia Corporation v. Private, WIPO Case No. D2000-1271, in support. It also submitted that the only distinctive element of the domain name concerned was “socgen”, which was identical to the Complainant’s trademark, and that the use of lower case letter format did not prevent confusion. The Panel accepts these submissions and finds for the Complainant. It finds that there is a high risk of confusion between the Respondent’s domain name and the Complainant’s trademark SOCGEN and that this risk of confusion includes the risk that the disputed domain name will be associated with the Complainant.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark SOCGEN or to apply for any domain name including this trademark. It points out that it has prior rights in the trademark SOCGEN which precede for many years the Respondent’s registration of the domain name. There is no evidence that the Respondent uses the domain name for its own legitimate commercial or non-commercial activities, if any, nor is there any evidence of any preparations for such use. The use made by the Respondent of the domain name has been in connection with a website which clearly seeks to mislead people into thinking that they have accessed a website operated by or connected with the Complainant. Such use is not legitimate. The Panel accepts the evidence that the Respondent had no rights or legitimate interests in the domain name <socgen-bf.com>.

C. Registered and Used in Bad Faith

The Complainant submits that bad faith is shown by the following:

(a) The Respondent has no prior right and no authorization given by the Complainant concerning the SOCGEN trademark.

(b) The notoriety of the Complainant and of its trademark SOCGEN used, for example, on the Internet.

(c) The disputed domain name leads to a website which reproduces the main features of the Complainant’s websites, as if it were an official website.

Having considered the evidence submitted with the Complaint, the Panel accepts the evidence of the Complainant that it is a well known bank and that the trademark SOCGEN is used in France and all over the world to designate the Complainant including in the international press. The Complainant argues that as a result of the notoriety of the Complainant and its trademark SOCGEN, the Respondent must have registered the domain name <socgen-bf.com> knowingly. The Panel notes that the Complainant’s website dedicated to Burkina Faso does not refer to the Complainant as SOCGEN but instead as “SGBB” and that “SGBB” appears on the outside of the Complainant’s premises in Ouagadougou, Burkina Faso (Annex 6). The Panel is, therefore, not convinced that the notoriety of the Complainant’s trademark, without more, leads to the conclusion that the Respondent knowingly registered the domain name. However, the overwhelming similarity between the Respondent’s website and that of the Complainant, the frequent references to the Sociйtй Gйnйrale Group throughout the Respondent’s website, the use of an identical logo to that of the Complainant and the frequent use of the trademark SOCGEN (in capitals) throughout the website are unmistakable signs of an attempt by the Respondent to create a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the Respondent’s website which is linked to the domain name. The Panel concludes that the Respondent not only knew of the Complainant’s trademark SOCGEN when it registered the disputed domain name but that it effected such registration in a deliberate attempt to generate or to divert business to itself by causing confusion as to the source or affiliation of the Respondent’s website.

The Panel concludes that the disputed domain name <socgen-bf.com> has been registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <socgen-bf.com> be transferred to the Complainant.


Mary Vitoria, QC
Sole Panelist

Dated: January 10, 2005

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0916.html

 

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