WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Établissements Sogal v. Super Privacy Service LTD c/o Dynadot / Chen Hui, Gname

Case No. D2021-2018

1. The Parties

The Complainant is Etablissements Sogal, France, represented by Inlex IP Expertise, France.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Chen Hui, Gname, Singapore.

2. The Domain Name and Registrar

The disputed domain name <sogal1981.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 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 Complainant on June 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 1, 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 July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 9, 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

The Complainant is a French company founded in 1981, who is a manufacturer and retailer of furniture design solutions. It is the owner, amongst others, of the following trademark registrations (Annex 3 to the Amended Complaint):

- French Trademark registration No. 1184618 for SOGAL, filed on June 19, 1981, registered on June 10, 1991 under No. 1671239 and subsequently renewed, in classes 06, 19, and 20; and
- International Trademark registration No. 1052493 for SOGAL, registered on July 13, 2010, in classes 06, 19, 20, and 35.

The disputed domain name <sogal1981.com> was registered on February 16, 2021. Currently the disputed domain name resolves an active webpage selling cans in the Chinese market and which appears to illegally reproduce the website of the unrelated third party company Dongguan Guantong Packaging Products Co.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be part of the CMAI Group which is one of the European leaders of tailor-made interior design solutions, having had a strong partnership with the Chinese group Suofeiya Home Collection, a top leading cabinetry manufacturer in China.

Having used the SOGAL trademark and a series of domain names amongst which <sogal.com> (registered on September 22, 1999) for decades in connection with the manufacture and retailing of furniture and interior design solutions, especially cupboard doors, dressings, and interior layout solutions, the Complainant sustains to have gained recognition in the interior design field and become a well-known trademark in its sector.

The Complainant further asserts that the recently registered disputed domain name is comprised of the reproduction of its trademark and the 1981 numeral which refers to the Complainant’s foundation, being therefore confusingly similar therewith.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Respondent does not own any SOGAL trademark registrations, having the Respondent deliberately chosen the disputed domain name seeking to create an association with the Complainant and to trade off the Complainant’s goodwill;
(ii) there is no business relationship between the Complainant and the Respondent, not having the Complainant ever authorized or licensed the Respondent to use its trademark in any way; and
(iii) the Respondent is not making a bona fide offering of goods or services under the Policy or a legitimate noncommercial or fair use of the disputed domain name since the disputed domain name is being used in connection with a website that reproduces the website of the unrelated third party company Dongguan Guantong Packaging Products Co. (whose official websites appear to be <dggtbz.com> and <guantongbz.com>) so as to give an appearance of legitimate use (Annex 10 to the Amended Complaint).

Lastly, the Complainant asserts that the bad faith of the Respondent is evident given the well-known status of the SOGAL trademark in its sector and choice of the disputed domain which reproduces that mark in connection with the founding year of the Complainant, 1981, not having the Respondent registered the disputed domain name by chance or coincidence. Furthermore, the choice to retain a privacy protection service is a further indicative of the Respondent’s bad faith, who has also been found in bad faith in at least four past UDRP cases. In addition to that, the Complainant argues that the disputed domain name is illegally reproducing the websites of the unrelated third party company Dongguan Guantong Packaging Products Co., Ltd in an attempt to give an appearance of legitimate use, where there is none since there appears to be no link between the Respondent and that company.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the registered SOGAL trademark.

The Panel finds that the disputed domain name reproduces the Complainant’s SOGAL trademark entirely. The addition of the 1981 numeral does not prevent a finding of confusing similarity and is as well linked to the Complainant’s year of foundation. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.12.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that there is no business relationship between the Complainant and the Respondent, not having the Complainant ever authorized or licensed the Respondent to use its trademark in any way.

Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the absence of any rights or legitimate interests in the disputed domain name.

Furthermore, the use made of the disputed domain name in connection with what appears to be a reproduction of a third-party website cannot characterize a bona fide offering of goods or services under the Policy.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

The second element of the Policy has therefore been established.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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 the Respondent’s website or location.

The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:

(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;

(ii) the Respondent appears to have reproduced a third-party website in an attempt to conceal its true intention to profit from the Complainant’s well-known trademark;

(iii) the Respondent has engaged in a pattern of bad faith conduct registering domain names that target third parties’ well-known trademarks, as recognized by past UDRP panels;

(iv) the choice to retain a privacy protection service so as to conceal its identity; and

(v) the indication of what appears to be false contact information.

For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The third element of the Policy has therefore been established.

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 <sogal1981.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: August 23, 2021