The Complainant is Société Générale of Paris, France, represented by Cabinet Lavoix, France.
The Respondent is Mr. L.P. of Paris, France.
The disputed domain name <societegenerale.tv> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 12, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same day, 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. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2010.
The Center appointed Alain Bensoussan as the sole panelist in this matter on March 22, 2010. 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.
In accordance with the Rules, paragraph 11, English is the language of this proceeding insofar as it is also the language of the Registration Agreement, namely the agreement between the Registrar Network Solutions, LLC and the disputed domain name’s holder.
The Complainant, founded in 1864 in France, offers banking and financial services.
It is present in 82 countries and overseas.
It offers its retail banking services in 36 countries all around the world, with a total of 3,700 branches and some 63,000 staff.
The Panel has been provided with materials showing information about the Complainant’s business.
The Complainant has evidenced that it owns the following trademarks:
- French trademark SOCIETE GENERALE n°1 386 606 filed on January 18, 1977, duly renewed for goods and services of classes 16, 35, 36 and 41 of the international classification for goods and services of Nice;
- Community trademark SOCIETE GENERALE + design n°004 620 605 filed on September 5, 2005, and registered in classes 9, 16, 35, 36;
- International trademark SOCIETE GENERALE n°430 526 registered on June 1, 1977, duly renewed in classes 16, 35, 36 and 41;
- International trademark SOCIETE GENERALE n°490 051 registered on November 20, 1984, and renewed in classes 16, 35, 36, 41 and 42;
- International trademark SOCIETE GENERALE + design n°882 062 registered on March 2, 2006, and renewed in classes 9, 16, 35 and 36;
- Canadian trademark SOCIETE GENERALE + design n°TMA442 425 filed on November 30, 1989, and registered on May 5, 1995;
- Canadian trademark SOCIETE GENERALE + design n°TMA708 810 filed on September 14, 2005 and registered on March 4, 2008;
- United States trademark SOCIETE GENERALE + design n°1 723 648 filed on November 15, 1989, and renewed in classes 16, 35, 36;
- Australian trademark SOCIETE GENERALE + design n°420 274 filed on December 28, 1984, and registered in class 36;
- Australian trademark SOCIETE GENERALE + design n°520 148 filed on September 27, 1989, and registered in class 36;
- New-Zealand trademark SOCIETE GENERALE + design n°196 391 filed on September 27, 1989, and registered in class 36;
- Brazilian trademark SOCIETE GENERALE + design n°815250983 filed on November 29, 1989, and registered in class 36;
- Brazilian trademark SOCIETE GENERALE + design n°815250975 filed on November 29, 1989, and registered in class 36;
- Brazilian trademark SOCIETE GENERALE + design n°828135665 filed on February 13, 2006, and registered in class 36;
- Mexican trademark SOCIETE GENERALE n°946 413 filed on October 28, 2005 and registered in class 36;
- Mexican trademark SOCIETE GENERALE + design filed on September 28, 2005, and registered in class 36.
It owns as well the following domain names:
- <societegenerale.fr> registered on September 10, 1999;
- <sociétégenerale.com> registered on June 5, 2000;
- <societegenerale.net> registered on April 10, 2001;
- <societegenerale.org> registered on January 26, 2000;
- <societegenerale.info> registered on August 21, 2001;
- <societegenerale.biz> registered on November 19, 2001;
- <societegenerale.es> registered on November 26, 2003;
- <societegenerale.be> registered on December 14, 2000;
- <societegenerale.co.uk> registered on December 5, 2005;
- <societegenerale.hu> registered on March 27, 2005;
- <societegenerale.us> registered on May 16, 2002;
- <societegenerale.hk> registered on January 26, 2004;
- <societegenerale.sg> registered on January 3, 2005;
- <societegenerale.tw> registered on November 1, 2005;
- <societegenerale.in> registered on February 10, 2005.
The disputed domain name <societegenerale.tv> was registered on April 16, 2006 by Mr. L.P. The WhoIs database indicates that the Respondent is domiciled in Paris, France.
The Complainant makes the following contentions:
The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1)) insofar as the disputed domain name reproduces the Complainant’s trademarks in which the verbal element SOCIETE GENERALE is the dominant and distinctive element.
Moreover, the country code top level domain name “.tv” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar, as for the top level of a domain name such as “.com”, “.org” or “.net” (Magnum Piercing , Inc. v. The Musjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2)) insofar as he has not concluded any license agreement with the Respondent and he has not authorized the Respondent to use the mark SOCIETE GENERALE or to apply for any domain name incorporating this mark.
The Complainant further contends that the Respondent is not commonly known under the disputed domain name and has not used it or undertaken any preparations to use it with a bona fide intent to use it since it has been registered. In particular, the domain name is not directed to an active website proposing goods and/or services or evidencing that the Respondent is making a legitimate noncommercial or fair use thereof.
The Complainant provides the Panel with results of a research on the French National Industrial Property Institute which evidences that the Respondent does not own any trademark composed with SOCIETE GENERALE protected in France.
The Complainant contends that the disputed domain name was registered and is being used in bad faith by the Respondent because its trademarks SOCIETE GENERALE enjoy a reputation in France and this reputation cannot be ignored by the Respondent who is domiciled in France.
The Complainant further contends that the bad faith of the Defendant is evidenced by the fact that the disputed domain name is offered for sale on the SEDO website and that the passive holding of the domain name prevents the Complainant from using the disputed domain name for its own commercial purposes and has the effect of disrupting the business of the Complainant.
In accordance with paragraph 4(i) of the Policy, for the reasons described above, the Complainant requests the Panel to issue a decision that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
To obtain the cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
The Panel may draw negative inferences from the Respondent’s default to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Reckitt Benckiser Plc v. Dominio Internationales, WIPO Case No. DTV2009-0001. In the current case, the Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
Nevertheless, the Panel shall not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140.
The Panel shall decide whether the Complainant has supported his contentions with relevant evidences.
The Complainant is the registered owner of trade marks in a substantial number of countries composed with the name SOCIETE GENERALE. Details of the extensive relevant trade mark registrations held by the Complainant worldwide have been provided to the Panel.
Several trademarks are composed of the unique verbal element SOCIETE GENERALE.
Other ones associate a design element to the verbal element SOCIETE GENERALE.
The fact that some trademarks associate to the verbal element SOCIETE GENERALE a design element does not prevent per se the likelihood of confusion insofar the verbal element SOCIETE GENERAL can be considered as attractive as the design element contained in the trademarks. Moreover domain names cannot be composed of design elements. See Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699.
Besides, the country code top level “.tv” 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. See Confédération nationale du credit mutuel v. Reinhard Hermann, WIPO Case No. D2009-0008.
Considering the above, the Panel finds that the disputed domain name <societegenerale.tv> is identical to the verbal trademarks SOCIETE GENERALE and confusingly similar to the trademarks SOCIETE GENERALE + design, in accordance with Policy, paragraph 4(a)(i) and Rules, paragraph 3(b)(ix)(1).
The Panel has been provided with the evidence that the disputed domain name is directed to an inactive webpage.
The Respondent has not evidenced that he would have rights to or legitimate interest in the disputed domain name. In particular he has not evidenced that he would have used or made preparations to use the disputed domain name, or that he would be commonly known by the disputed domain name or that he would have made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert Internet users or to tarnish the marks at issue, according to paragraph 4(c) of the Policy.
The fact that the disputed domain name is currently directed to an inactive webpage and that the Respondent has not proven that it would have been used since it was registered on April 16, 2006 or given any explanations as to this lack of active use may be interpreted in this case as an indication that the Respondent aims to block the disputed domain name from registration by the Complainant.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with Policy, paragraph 4(a)(ii) and 4(c) and Rules, paragraph 3(b)(ix)(2).
The disputed domain name is not active. However, the lack of active use of the dispute domain name is not relevant for preventing the finding of bad faith. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
In such a case, all circumstances must be analyzed. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Several elements can be interpreted as the evidence of the fact that the domain name was registered in bad faith and that the Respondent has acted with bad faith.
The trademark SOCIETE GENERALE has been used extensively for many years in France.
The company Société Générale is a well-known French company which is quoted at the French Stock Exchange.
The Respondent, who is domiciled in France would not likely be ignorant of the existence of the trademark SOCIETE GENERALE.
Moreover, the Panel has been provided with the evidence that the disputed domain name has been put up for sale on the Sedo’s website.
The domain name strictly reproduces the verbal trademarks SOCIETE GENERALE.
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with Policy, paragraph 4(a)(iii) and 4(b) and Rules, paragraph 3(b)(ix)(3.
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.tv> be transferred to the Complainant.
Alain Bensoussan
Sole Panelist
Dated: April 6, 2010