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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société de Négoce et de Participation and Sonepar France Interservices v. Privacy service provided by Withheld for Privacy ehf / David Mark

Case No. D2021-1506

1. The Parties

The Complainants are Société de Négoce et de Participation (“Complainant 1”) and Sonepar France Interservices (“Complainant 2”, together the “Complainants”), France, represented by Dreyfus & associés, France. Complainant 2 is a subsidiary of Complainant 1.

The Respondent is Privacy service provided by Withheld for Privacy ehf / David Mark, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <sonepars.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on May 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on May 21, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on June 20, 2021. 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

Complainant 1 is the owner of the SONEPAR trademark, holding of the Sonepar group and a global market leader in B-to-B distribution of electrical products, solutions and related services with EUR 23 billion sales in 2020. Complainant 2 is part of the Sonepar group and the business services sector industry, with 401 employees and USD 111.73 million sales.

Complainant 1 owns trademark registrations in various jurisdictions, including the French trademark SONEPAR (Reg. No. 3081330, registered on February 7, 2001), the French word mark SONEPAR (Reg. No. 99806224, registered on August 3, 1999) and the International trademark SONEPAR (Reg. No. 736078, registered on February 3, 2000).

The Complainants further hold and operate, among others, the domain names <sonepar.com> and <sonepar.fr> to promote their services.

The disputed domain name was registered on March 16, 2021 and resolved to a fake online sales website reproducing the Complainants’ visuals. In the meantime, the website has been deactivated.

Before initiating the present proceeding, the Complainants made some effort to resolve the matter amicably. The Complainants’ deactivation and contact attempts remained unsuccessful.

5. Parties’ Contentions

A. Complainants

The Complainants allege that they have satisfied all elements of the Policy, paragraph 4.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Based on the facts and evidence introduced by the Complainants, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainants have submitted sufficient evidence to demonstrate their registered rights in the SONEPAR trademark.

The SONEPAR trademark is wholly reproduced in the disputed domain name.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8. The Panel also considers the addition of the letter “s” to be a common, obvious, or intentional misspelling of a trademark (i.e., “typoquatting”). See WIPO Overview 3.0, section 1.9.

Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant 1’s SONEPAR trademark.

The Complainants have thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainants contend that the Respondent is neither affiliated with the Complainants nor making any bona fide use of the disputed domain name.

The Complainants have credibly alleged that the Respondent used the disputed domain name as a fraudulent sales website reproducing the Complainants’ official website. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.

Furthermore, the composition of the disputed domain name, wholly incorporating Complainant 1’s trademark with the addition of the letter “s”, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainants. See WIPO Overview 3.0, section 2.5.1.

Based on the Complainants’ credible contentions, the Panel finds that the Complainants, having made out a prima facie case which remains unrebutted by the Respondent, have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition of the disputed domain name and reputation of Complainant 1’s trademark, it can be inferred that the Respondent was aware of Complainant 1’s trademark when registering the disputed domain name.

The Panel finds that the reproduction of Complainant 1’s trademark along with the letter “s” creates a likelihood of confusion between Complainant 1’s SONEPAR trademark and the disputed domain name.

The evidence and allegations submitted by the Complainants support a finding that the Respondent was engaged in an attempt to pass itself off as the Complainants by creating a likelihood of confusion with the Complainant 1’s trademark as to the source, sponsorship, affiliation, or endorsement of the Complainants’ website and to attract Internet users to its website for its own commercial gain. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466). The fact that the website at the disputed domain name has been deactivated in the meantime does not prevent a finding of bad faith.

Accordingly, the Complainants have also fulfilled paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sonepars.com> be transferred to the Complainants.

Tobias Zuberbühler
Sole Panelist
Date: July 2, 2021

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