WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Générale v. Dli, Dale Miller
Case No. D2002-0457
1. The Parties
The Complainant is Société Générale a company organised under French law having its principal place of business in France. It's address is 29 Boulevard Haussmann, 75009, Paris, France. It is represented by Bird & Bird of 6 rue de Caumartin, 75009, Paris, France.
The Respondent is DLI, Dale Miller of 575 5th Avenue – 11th Floor, New York, NY 10018, United States of America.
2. The Domain Name and Registrar
The domain name the subject of the Complaint is <wwwsocgen.com>. The registrar is Register.com Inc of 575, 8th Avenue – 11th Floor, New York, NY 10018 United States of America.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy (the Policy) was submitted to the WIPO Arbitration and Mediation Center ("the Center") on May 13, 2002. Acknowledgement of receipt of the Complaint was given on May 16, 2002. The Center made an initial request for registrar verification on May 16, 2002. On May 28, 2002, the Registrar responded that the domain name <wwwsocgen.com> was registered through Register.com Inc and that the current registrant was DLI Dale Miller, the Respondent at the address referred to above.
Notification of the Complaint was given to the Respondent by the Center by email on May 29, 2002, with copies also sent by post and fax. No Response having been received from the Respondent the Center sent notification of the Respondent's default by email on June 20, 2002. This was not responded to and on July 9, 2002, an administrative panel consisting of a single member, Mr. Clive Thorne was appointed. Mr. Thorne has filed a statement of acceptance and declaration of impartiality and independence. The Panel understands that the requisite fees have been paid. No interim orders have been made by the Panel. The language of the case is English.
4. Factual Background
The Complainant Société Générale is a bank well known throughout France and the world. The Complainant submits that the mark "SOCGEN" is a "contraction" of the Complainant's full name Société Générale. It gives evidence that the Complainant is the owner of trade marks "SOCGEN", at Annex 3 to the Complaint are set out copies of the Complainant's trade mark certificates for the mark "SOCGEN". These are as follows:-
i) French national trade mark number 96641090 in classes 16, 35 and 36
ii) Community trade mark number 23853 in classes 16, 35 and 36
iii) Madrid Protocol International trade mark number 772893 in classes 16, 35 and 36
The Complainant also gives evidence that it owns the domain name <socgen.com> which was registered on November 19, 1996, and has been used by the Complainant since on or about that date.
At Annex 4 to the Complaint the Complainant exhibits a large number of extracts from financial publications which refer to Société Générale being described as "SOCGEN". The articles exhibited date back to 1999 until early in 2002 and include extracts from "The Economist", "International Herald Tribune", "The Banker", "Operations Management", "The Daily Deal", "American Banker", "Retail Banker" and "The Financial Times". A good example is a copy of an article in The Financial Times for August 12, 2000, which is headed: "SOCGEN TALKS TO BUY TURKISH BANK STAKE".
At Annex 5 to the Complaint the Complainant exhibits a series of articles written in French which refer to the Complainant opening its own website under the name Société Générale.
At Annex 6 to the Complaint is exhibited a report and affidavit dated March 19, 2002, prepared by Messrs SCP, court bailiffs of 11 Bis rue de Milan – 75009 Paris. This gives evidence of a link between the Respondent's domain name <wwwsocgen> and the Complainant's website address which differs in having a dot after the letters "www" but before the name "socgen". The report shows that the internet site corresponding to the address www.socgen.co links with the site www.sexy-malin.com which is of a pornographic nature and appears in the form of a "pop up". On the <sexy-malin.com> site at the bottom of the home page is an inset with a photograph of a female face and the following inscription "Pin-up of the day. Vote for the pin-up of the week".
At the bottom of the home page of the <sexy-malin.com> site is a copyright notice referring to "ANXA LIMITED". Attached to that report are pornographic extracts from the sexy-malin website including a series of pornographic photographs such as a naked "Centaur-like" four legged woman with a horse's tail.
The Respondent, not having filed a Response, has not adduced any evidence to the contrary. Accordingly the Panel is prepared to accept the Complainant's evidence of it's trade mark rights and the evidence of the link with the sexy-malin website.
5. Discussion and findings
In order to succeed in its Complaint and in accordance with Paragraph 4(a) of the Policy the Complainant is required to show that:-
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name;
(iii) The domain name was registered and is being used in bad faith.
The Panel proposes to deal with each of these elements in turn.
(i) The domain name <wwwsocgen.com> is confusingly similar to the SOCGEN trade mark in which the Complainant has rights.
The Complainant submits that the distinction between the Respondent's domain name and the Complainant's trade mark is the addition of the "www" acronym for worldwide web and that the only distinctive element of the domain name is the mark "SOCGEN" which is identical to the Complainant's trade mark. The Panel accepts this submission and finds for the Complainant. It finds that there is an inevitable high risk of confusion between the Respondent's domain name and the Complainant's trade mark "SOCGEN".
(ii) The Respondent has no rights or legitimate interest in respect of the domain name <wwwsocgen.com>.
The Complainant submits that there is no license, consent or other rights by which the Respondent is entitled to register or use the domain name incorporating the mark "SOCGEN". It points out that the Complainant has prior rights in the trade mark "SOCGEN" which precede by many years the Respondent's registration of the domain name. The Panel accepts this evidence and finds that the Respondent has no legitimate interest in respect of the domain name <socgen.com>.
(iii) The domain name should be considered as having been 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 trade mark "SOCGEN".
(b) The notoriety of the Complainant of its trade mark "SOCGEN".
(c) The Respondent's intention to create a likelihood of confusion with the Complainant's trade mark.
Having considered the evidence referred to in (4) above the Panel accepts the evidence of the Complainant that it is a well known bank and that the trade mark "SOCGEN" is used in France and all over the world to designate the Complainant especially in the international press. The Complainant argues that as a result of the notoriety of the Complainant and its trade mark "SOCGEN" the Respondent must have registered the domain name <wwwsocgen.com> knowingly and therefore attempts 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 Respondent relies upon the links to the pornographic website as evidence that the Respondent has diverted consumers and that this has worsened the likelihood of confusion particularly when non of the pornographic pictures have been owned or authorized by the Complainant.
It also points out that the email addresses of the Respondent and the owner of the domain name <sexy-malin.com> are the same and that therefore the Respondent has "obviously registered the domain name for the purpose of luring internet users to the site by causing confusion as the source and content so that it could profit when those internet users clicked through to the link to sexually explicit websites."
The panel accepts these submissions and finds that the Complainant has established that the domain name has been registered and used in bad faith.
It follows that the Complainant has succeeded in each of the elements set out in paragraph 4(a) of the Policy
The Panel finds that the Complainant has succeeded in its case. Accordingly it orders that the domain name <wwwsocgen.com> be transferred to the Complainant from the Respondent.
Clive Duncan Thorne
Dated: July 15, 2002