WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societe Generale v. Kellerbauer
Case No. D2005-0816
1. The Parties
The Complainant is Societe Generale, Paris, France, represented by Bird & Bird Solicitors, France.
The Respondent is Kellerbauer, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name is <societegenerale.com>. It is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2005. On the same day, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 1, 2005, Go Daddy Software 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. The Center verified that 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. On August 24, 2005, the Respondent filed a Response, together with supporting exhibits.
On August 31, 2005, the Complainant filed a letter commenting on the Respondent’s Response, in order to “bring further precisions with respect to the legitimate interest and bad faith of the Respondent in the registration of the contentious domain name”. The decision of the panel as to the admissibility of this submission is set out below (paragraph 6).
The Center appointed Fabrizio La Spada as the Sole Panelist in this matter on September 22, 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.
4. Factual Background
The Complainant is a company based in France operating in the business of banking and financial services, global investment management and corporate and investment banking. According to information available on its website, it is one of the leading financial services groups in the euro zone, has a presence in 80 countries and employs 92’000 people worldwide. The Complainant is present in Canada through an affiliate entity, Société Générale (Canada).
The Complainant is the owner of several trademarks consisting of or containing the words “Société Générale”. In particular, the Complainant is the owner of the following trademarks:
- Word and device trademark “Société Générale”, No. 490050, registered in the International Register on November 20, 1984, in international classes 16, 35, 36, 41 and 42, based in France with designations in several countries.
- Word and device trademark “Société Générale”, No. 1,723,648, registered in the United States of America on October 13, 1992, in international classes 16, 35 and 3.
- Word and device trademark “Société Générale”, No. TMA446,853, registered in Canada on September 1, 1995, (filing date November 6, 1989) for goods and services including, amongst others, banking services.
- Word trademark “SOCIETE GENERALE”, No. 96636680, registered in France on July 30, 1996, in international classes 16, 35, 36, 38 and 41.
The Respondent registered the domain name on June 4, 2000. In June 2004 and until May 2005, the domain name resolved to a website containing several links, including to competitors of the Complainant. On May 25, 2005, the Complainant’s counsel sent a cease and desist letter to the Respondent. There is no evidence on record that the Respondent replied to this letter. After receiving this letter, the Complainant modified its website. At the time these proceedings were filed, the domain name resolved to a web page mentioning that it was “under construction”.
5. Parties’ Contentions
The Complainant considers that the domain name registration has been made maliciously to damage the Complainant’s interests.
It submits that the domain name is identical to its “SOCIETE GENERALE” trademark and, therefore, creates a high risk of confusion with the same.
It also contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant states that there is no license, consent or other right whereby the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s trademark. In addition, according to the Complainant, the Respondent has not used nor made any preparations to use the domain name in connection with a bona fide offering of goods or services. The Complainant also points out that it is a well-known company.
In addition, the Complainant submits that the domain name was registered and used in bad faith. According to the Complainant, bad faith arises out of the three following elements:
- The Respondent has no prior rights and no authorization given by the Complainant. Thus, the registration of the domain name has not been made with a bona fide intention.
- The Complainant is a well-known bank and its trademark is used in France and throughout the world to designate its activities. According to the Complainant, this notoriety, and the fact that the Complainant is present in Canada, demonstrate that the domain name was registered knowingly.
- The domain name was leading to a portal website promoting competing banking services, which, according to the Complainant, indicates an intent to cause damage to the Complainant and to tarnish its trademark. The Complainant also points out that its counsel wrote a letter to the Respondent on May 25, 2005, and that, after receiving this latter, the Respondent modified its website, which is now mentioned as being “under construction”. The Complainant submits that these modifications, made after receiving notice of the dispute, cannot be considered as “demonstrable preparations to use the name”.
On this basis, the Complainant requests that the domain name be transferred.
The Respondent contends that the terms “Société Générale” are generic terms frequently used in many company names in French-speaking countries. It produces a list of 25 companies located in the Ile-de-France region and which contain these words. The Respondent does not dispute the existence of the Complainant’s trademark, but considers that this trademark cannot be used to prevent legitimate commercial activities in other sectors. In addition, the Respondent points out that the Complainant uses the name SOCGEN, which it registered as a trademark, and submits that it is predominantly known by this name. Thus, according to the Respondent, there is evidence for an abandonment by the Complainant of the trademark “Société Générale” in favour of “SOCGEN”.
The Respondent also submits that it registered the domain name with a view to establishing a limited-liability company organized under Swiss law having its principal place of business in Switzerland, under the name “Société générale de développement internet SARL”. The Respondent claims that the actual establishment of the company is imminent and states that it is reasonable for the registration of a domain name to precede, rather than follow, the establishment of a company. The Respondent further explains that the long lapse of time between the registration of the domain name and the establishment of the company can be explained by internal factors, such as the time required for the acquisition of associates, capital, and customers, as well as external factors, namely the bursting of the “.com” bubble. However, the Respondent alleges that a number of activities have already been carried out, such as contacts with prospective clients and the commencement of several projects. The Respondent produced the printout of a web page indicating that it was created by “Société générale de développement internet”, with firstname.lastname@example.org as contact e-mail address. On this basis, the Respondent claims that it demonstrated that it is actively using the domain name in connection with a bona fide offering of services and that it established common-law trademark rights in the domain name.
The Respondent contends that it has not registered nor used the domain name in bad faith. It points out that it never offered the domain name for sale and that it was not aware of the Complainant’s trademark when it registered the domain name. In this respect, it submits that the Complainant is not famous in Canada and did not claim or demonstrate that it carried out visible activities in Canada at the time the domain name was registered. The Respondent further alleges that the web page accessible until May 2005 was a standard placeholder and was not intended to attract internet traffic to that web page for commercial gain.
6. Preliminary question
After the Response was received, the Complainant filed an unsolicited submission dated August 31, 2005. While the Rules provide that the Panel may request further submissions (see paragraph 12 of the Rules), they make no provision for a party to file an additional submission without leave of the Panel. The latter has a broad discretion in deciding whether or not to accept unsolicited submissions.
The principles which should be applied by the Panel in exercising such discretion have been considered in many cases under the Policy and Rules (See, e.g. Harrods Ltd v. Brad Shaw, WIPO Case No. D2004-0411 The E.W. Scripps company v. Cynologic Industries, WIPO Case No. D2003-0447; Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792). These principles are based on the purpose of the Policy and Rules of providing an expeditious procedure for determining a certain type of domain name disputes.
As a rule, additional evidence or submissions should only be admitted in exceptional circumstances, such as when additional submissions are necessary to reply to the finding of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission or to rebut arguments by the respondent that the complainant could not reasonably have anticipated. On the other hand, panels have repeatedly stated that further submissions are neither needed nor acceptable where the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its complaint, nor does the response appear to have submitted arguments that the complainant could not reasonably have anticipated, and there being no other exceptional circumstances that would justify the submission of a further submission (The Toronto-Dominion Bank v. Boris Kerpacev, WIPO Case No. D2000-1571).
In the present case, the Panel considers that there are no grounds for admitting the Complainant’s unsolicited submission, which does not address issues raised in the Response that could not reasonably have been anticipated in the Complaint (See, e.g., Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 and Scorpions Musikproductions und Verlagsgesellschaft MBH v. Alberta Hot Rods, WIPO Case No. D2001-0787). The submission dated August 31, 2005, shall therefore be disregarded.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) are the domain names identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided satisfactory evidence, in the form of copies of excerpts of trademark registrars, that it is the owner of trademarks containing or consisting of the name “Société Générale”, registered in a number of countries, including in particular France, the United States of America and Canada.
Concerning the second issue, the panel finds that the domain name is identical to the Complainant’s “ Société Générale “ trademarks. The panel notes in this respect that, when comparing a domain name and a trademark under the Policy, the panel must focus on the second-level domain (in this case “societegenerale”) and disregard the first-level domain (in this case “.com”), which has no distinctive character. In addition, the absence of the space between the words “societe” and “generale” in the domain same does not alter the fact that the latter is identical to the trademark (see Owens Corning Fiberglas Technology, Inv v. Hammerstone, WIPO Case No. D2003-0903).
The respondent submitted that the Complainant’s trademark is generic and, therefore, cannot be used to prevent registration of the domain name by the Respondent. The question whether a trademark, which was registered in several countries, is or has become generic such that the Complainant should not be seen to have rights in respect of the trademark, has been presented to a number of panels (see, e.g., 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223). The existence of a registered trademark is prima facie evidence of the validity of the mark (see, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The panel considers that the Respondent has not provided evidence rebutting this presumption. On the contrary, the Complainant produced several document demonstrating that it has used its name throughout the world for many years. This indicates that the Complainant’s trademark, which also corresponds to the name of the company, has acquired a distinctive character through use. In this respect, the panel notes that all of the companies which were cited by the Respondent have a name which contains distinctive elements in addition to the “société générale” terms (e.g., Société Générale Immobilière, Société Générale de Presse, etc.). Based on the documents on record, the Complainant is the only company called Société Générale.
Finally, the Respondent submitted that there is evidence for an abandonment by the Complainant of the trademark “ Société Générale “ in favour of “SOCGEN”. This assertion is contradicted by the documents produced by the parties. Indeed, while the Complainant has indeed used the terms “SOCGEN”, including in its domain name <socgen.com>, there is evidence of an extensive and continuous use of the terms “société générale”.
Therefore, the panel finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names.
It is notoriously difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fides offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name, for the following reasons.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. In addition, there is no evidence that the Respondent was commonly known by the domain name or that it is making a legitimate non commercial use of the domain name. On the contrary, at least until the Respondent had notice of the dispute, the domain name resolved to a web page containing links to commercial pages, including some of the Complainant’s competitors.
However, the Respondent explained in its Response that it registered the domain name with a view to establishing a Swiss company named “Société générale de développement internet SARL” and doing business under the domain name. It admitted that the company has not yet been formed, but he submitted that a number of activities have already been carried out. It also mentioned that the long lapse of time between the registration of the domain name (in June 2000) and today is in particular due to the time required for the acquisition of associates, capital and customers.
According to Paragraph 4(c)(i) of the Policy, the Respondent may have legitimate interests in the domain name if it shows that, before any notice of the dispute, it made “demonstrable preparations” to use the domain name in connection with a bona fides offering of goods or services. However, in the present case, the Respondent did not produce any evidence indicating that it actually did make preparations to use the domain name. The only document it produced is a printout of a web page, from another website (“www.paysdegex.net”), containing a mention that the site was created by “Société générale de développement internet”, with a contact address at “www.societegenerale.com”. The panel considers that this piece of evidence is insufficient to establish the Respondent’s legitimate interests, for the following reasons:
- There is evidence that the “www.paysdegex.net” website was active before the Respondent had notice of the dispute. However, this website is not operated under the domain name and there is no evidence that it is operated by the Respondent. In addition, there is no evidence that the web page mentioning the “Société générale de développement internet” name and the email@example.com address was created before the Respondent had notice of the dispute.
- The page on the “www.paysdegex.net” website mentions that this site was created by the “Société générale de développement internet”, which, by the Respondent’s own admission, did not exist at the time the Complaint was filed.
- It is undisputed that at the time the Complaint was filed, the Respondent was not offering products or services on its website “www.societegenerale.com”.
- The Respondent explained the long lapse of time between the registration of the domain name and the establishment of the company (which did not occur yet) by the fact that a number of activities had to be carried out. According to the Respondent, these activities include in particular: the acquisition of associates, capital and customers; contacts with prospective clients; and the commencement of several projects. However, the Respondent did not produce evidence demonstrating that this substantial activity took place. The panel may not rely on such unsupported allegations from the Respondent to find that the Respondent had legitimate interests in the domain name, especially where it would have been easy for the Respondent to produce relevant evidence.
For these reasons, the panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).
Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances indicating that:
“(i) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website location.”
In addition, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name (see Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).
The Complainant has produced evidence demonstrating that it is a well-known company, based in France but active throughout the world, including Canada. According to information on the Complainant’s website, produced with the Complaint, the Complainant initially began its activities more than a century ago and has been present in Canada since 1974. The panel has reviewed this evidence and is satisfied that the Complainant is a well-known company and that the terms “Société Générale” alone are, and already were at the time the domain name was registered, widely associated with the Complainant’s name and trademark, including in Canada. In addition, although its registered address is in Canada, the Respondent alleged that it always intended to form a company in Switzerland. Moreover, the only activity that it has claimed is related to a website concerning a French region (“www.paysdegex.net”). On this basis, the panel finds that the Respondent is likely to be familiar with the markets in Switzerland and France, where the “Société Générale” name is particularly well-known in relation with the Complainant. As a consequence, in the panel’s opinion, the Respondent knew or should have known the existence of the trademark.
Finally, the panel notes that before the Respondent had notice of the dispute, its website displayed a number of links, pointing to some of the Complainant’s competitors. The Respondent has claimed in the proceedings that this web page was a standard placeholder provided by the registrar. However, there is no doubt that the Respondent had control over the contents of its website, as demonstrated by the fact that it modified the same upon receipt of the Complainant’s cease and desist letter. The panel agrees with numerous prior panels that have held that using a domain name confusingly similar to a complainant’s mark to link to a website of the complainant’s competitor constitutes bad faith under the Policy (see, e.g., National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537).
For these reasons, the panel considers that the domain was registered and used in bad faith.
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 <societegenerale.com> be transferred to the Complainant.
Fabrizio La Spada
Dated: October 13, 2005