WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit Gnrale Asset Management v. Dulce de Sanogueira Fontes

Case No. D2007-0059

 

1. The Parties

The Complainant is Socit Gnrale Asset Management of Paris, France, represented by Bird & Bird Solicitors, France.

The Respondent is Dulce de Sanogueira Fontes of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names <sgambank.com> and <sgambanque.com> are registered with NameSecure.com (a VeriSign Co.).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2007, electronically and on January 18, 2007, in hardcopy. On January 17, 2007, the Center transmitted by email to NameSecure.com (a VeriSign Co.) a request for registrar verification in connection with the domain names at issue. On January 17, 2007, Network Solutions, LLC 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 contact and confirming that the current registrar is NameSecure.com. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January22,2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 11, 2007. The Response was filed with the Center on February11, 2007. In addition, the Center received a supplemental submission from the Respondent dated February 15, 2007. On February 15, 2007, the Complainant also filed a supplemental submission with the Center in reply to the Response.

The Center appointed Brigitte Joppich as the sole panelist in this matter on March1,2007. 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 paragraph 7 of Rules.

 

4. Factual Background

The Complainant is a subsidiary of Socit Gnrale, which is one of the leading financial service groups in the Euro zone. The group Socit Gnrale employs 103,000 people worldwide and is doing business in the fields of financial services, global investment management and corporate and investment banking. The Complainant, Socit Gnrale Asset Management (SGAM), is one of the world’s leading asset managers with EUR 345 billion of assets under management as per the end of September 2006.

The Complainant is the owner of the French trademark registration no. 033263510 SGAM filed on December 17, 2003, and of the International trademark registration no. 834 838 SGAM filed on May 21, 2004, both covering services in International classes 36 and 38 (the SGAM Marks). The Complainant also registered numerous domain names worldwide containing the acronym SGAM, for example <sgam.com>, <sgam.net>, <sgam.co.uk> and <sgam.fr>.

The Respondent registered the domain names <sgambank.com> and <sgambanque.com> on November 24, 2006.

The Parties made contradictory statements with regard to the Respondent’s rights in the marks SGAMBANQUE and SGAMBANK: While the Complainant contends that the Respondent applied for the Community trademarks SGAMBANQUE (no. 005499397 and no. 005495973) on November 23, 2006, and SGAMBANK (no. 005495965 and no. 005499371) on November 24, 2006, the Respondent asserts that it is the owner of such Community trademark registrations. Neither of the parties provided evidence in this regard.

The Panel is of the opinion that it may in principle undertake limited factual research into matters of public record (cf. Socit des Produits Nestl SA v. Telmex Management Services, WIPO Case No.D2002-0070 <nestlefoods.com>), including official trademark databases, if such assistance is needed in reaching a decision. However, the Panel feels that it can cast a decision in this case without knowing whether these trademarks have in fact only been applied for or have already been duly registered (cf. below 6.). As a result, no additional research is necessary.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph4(a) of the Policy are given in the present case:

(i) The domain names are confusingly similar to the SGAM Marks as they fully incorporate the Complainant’s acronym of Socit Gnrale Asset Management with the addition of the generic words “bank” and “banque” and the gTLD “.com”. The Complainant contends that the mere add on of the generic words “bank” and “banque” is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being related to the Complainant.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain names: The Complainant has granted no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainant’s trademark SGAM. The Complainant further contends that the Respondent’s use of the domain names is not to be considered as bona fide as the domain names have been used by the Respondent to supply links towards websites promoting banking services offered by competitors of the Complainant.

(iii) The Complainant finally contends that the domain names were registered and have been used in bad faith. Bad faith registration results from the Respondent’s awareness that SGAM corresponds to a well-known bank. Furthermore, the domain names have been used in bad faith as the Respondent is misleading Internet users and tried to sell the domain names to the Complainant at a price in excess of its out-of-pocket costs directly related to the domain names.

B. Respondent

The Respondent contends that the Complainant has no legitimate position as the Respondent is the rightful owner of the registered Community trademarks SGAMBANK (no. 005499371 and no. 00549595) and SGAMBANQUE (no. 005499397 and no. 00549973).

Furthermore, the Respondent states that the Complainant’s trademark (which one exactly is not specified) is currently opposed by third parties (“SGA Information Management” and “GAM Limited”), thus challenging the legitimacy of the Complaint.

With regard to the three elements specified in paragraph4(a) of the Policy, the Respondent denies that any of them is given in the present case:

(i) The Respondent contends that the disputed domain names are not confusingly similar to the SGAM Marks: SGAM is a prefix, used by a number of well known brands long before the Complainant filed its acronym SGAM. The Complainant has no rights to rely on its trademark which is opposed by third parties.

(ii) The Respondent further contends that it has rights and legitimate interests in the domain names as it is the legal owner of the Community trademarks SGAMBANK and SGAMBANQUE.

(iii) The Respondent finally contends that the domain names have not been registered and used in bad faith: The domain names were not registered in bad faith by the Respondent because of its trademark rights. They have not been used in bad faith either as the websites currently displayed at the domain names are default pages (“under construction”) made available by the Respondent’s provider, beyond the control of the Respondent. The Respondent asserts that it tried to delete the content from the websites but was prevented by its provider from doing so, access to the administrative functions of the domain names having been blocked as a result of the current proceedings.

Finally, the Respondent requests a finding that the Complainant transfer its domain names including “sgambank” and/or “sgambanque” (i.e. <sgambank.net>, <sgambanque.net>, <sgambank.info>, <sgambanque.info>, etc.) to the Respondent.

 

6. Discussion and Findings

The first point to be dealt with is the admissibility of both parties’ supplemental submissions.

The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph12 provides that a Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.

Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 <fieldofdreams.com>; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921 <qnx.info>; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 <goldline.com>).

The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts or legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have submitted the Reply solely to reciprocate the arguments presented in the Response. Such a reply is not justified under the Rules. Neither is the supplemental submission by the Respondent admissible in the absence of any of such circumstances.

The Panel is able to decide this case on the facts submitted in the Complaint and the Response. Therefore, the Panel elects not to accept either of the supplemental submissions and has not relied on them in reaching this decision.

A. Identical or Confusingly Similar

The Respondent states that the Complainant’s marks are opposed by third parties but does not provide any evidence in support of this contention. In contrast, the Complainant provides evidence of its French and of its International trademark SGAM, both registered and in force. Even if another trademark application or registration of the Complainant was indeed opposed by third parties, there would be sufficient evidence of the Complainant’s exclusive rights in the acronym SGAM for the purposes of these UDRP proceedings in the view of the Panel.

The disputed domain names fully incorporate the Complainant’s SGAM Marks. The mere addition of the generic word “bank” respectively “banque” (which is “bank” in French) following the trademark does not eliminate the similarity between the SGAM Marks and the domain names, as “bank” and “banque” are common or generic English respectively French words. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829 <drgrandel-online.com>; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 <4microsoft2000.com>; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 <quixtarmortgage.com>).

Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000 1525 - <magnumpiering.com> et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 <rollerblade.net>; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374 <moor-huhn.com>).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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; or

(ii) 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

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

Relying on its allegedly registered Community trademarks SGAMBANK and SGAMBANQUE, the Respondent claims that it has rights or legitimate interests in the disputed domain names. However, in the Panel’s opinion, not even a trademark registration automatically confers rights or legitimate interests in the domain name on the Respondent. To establish cognizable rights, the overall circumstances should rather demonstrate that a registration was obtained in good faith for the purposes of making a bona fide use of the mark in the jurisdiction where the mark is registered and not obtained merely to circumvent the application of the Policy (cf. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847 <madonna.com>; Overture Services, Inc. v. Overture Search, WIPO Case No. DAU2004-0002 <overture.com.au>; BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 < medicineassist.com>). In the Panel’s view, the relevant criteria in this context are inter alia whether the trademark application was filed well before the disputed domain name was registered and whether the Respondent has provided evidence of any business activity or demonstrable preparations of such activity (in addition to the trademark application).

In the present case, the Respondent has neither provided evidence of its alleged trademark rights nor any other evidence in support of a bona fide offering of goods and services under the disputed domain names. Furthermore, the fact that the applications for the domain names and the trademarks were all filed within two days raises the suspicion that the trademarks were only meant to cover or protect the domain name registrations. The Panel therefore finds that the Respondent failed to demonstrate rights or legitimate interests under paragraph 4(c)(i) of the Policy.

Furthermore, nothing on the record suggests that the Respondent is commonly known by the domain names or is making a legitimate non-commercial or fair use thereof.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the domain name in bad faith, including

(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 who 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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.

The Complainant showed that it is well known in Europe. It is therefore inconceivable that the Respondent registered the domain names without knowledge of the Complainant and the SGAM Marks. This assumption is supported by the fact that the disputed domain names are identical with the SGAM Marks except for the addition of “bank” and “banque” describing the Complainant’s business. The Panel therefore concludes that the Respondent registered the domain names <sgambank.com> and <sgambanque.com> with full knowledge of the SGAM Marks and thus in bad faith.

The Complainant provided e-mail correspondence between the parties revealing that the Respondent offered the disputed domain names and its trademarks to the Complainant at a price of GBP 400,000 on January 1, 2007, which is an amount well in excess of the Respondent’s out-of-pocket costs. All circumstances of this case the Respondent applying for trademarks immediately before registering the domain names in bad faith, asserting registered trademark rights that are under dispute and not supported by any evidence, and asking an enormous price for the domain names and such trademarks - indicate in the view of the Panel the Respondent’s intention to extort money from the Complainant in the first place. It is therefore most likely that the domain names were registered primarily for the purpose of selling them to the Complainant, i.e. in bad faith under paragraph 4(b)(i) of the Policy.

Bad faith is further evidenced by the Respondent’s use of the domain names. By fully incorporating the SGAM Marks into the domain names the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Oral, Biotherm, Lancme Parfums et Beaut & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 with further references).

The Respondent’s argument that the content of the websites available under the disputed domain names is beyond its control is, in the Panel’s view, not able to justify the Respondent’s conduct. Firstly, such websites providing links to direct competitors of the Complainant were available before the filing of the Complaint - if the Respondent wanted to delete the content from such sites it could easily have done so from the date of the registration of the domain names in November 2006 until the day the domain names were blocked by the provider on January 17, 2007. Secondly, according to the print outs of the websites supplied by the Complainant (Annex VIII) the content in question is in fact provided by googlesyndication.com and not by the Respondent’s registrar and provider NameSecure.com.

As a result, the Panel finds that the Respondent registered and used the domain names in bad faith under the Policy and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

 

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 names, <sgambank.com> and <sgambanque.com> be transferred to the Complainant.


Brigitte Joppich
Sole Panelist

Dated: March 16, 2007