WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Socotec S.A v. Socotec International Romania SRL

Case No. DRO2018-0007

1. The Parties

The Complainant is Socotec S.A. of Saint Quentin en Yvelines, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Socotec International Romania SRL of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <socotec.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On May 31, 2018, the Center sent a communication in both Romanian and English to the Parties regarding the language of the proceeding. On June 1, 2018, the Complainant submitted an amended Complaint requesting English to be the language of proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in English and Romanian of the Complaint, and the proceedings commenced on June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2018.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on July 11, 2018. 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 Socotec S.A., a French company with headquarters in Saint-Quentin-en Yvelines, France.

The Complainant was established in 1953 out of the Bureau Sécuritas, France’s first building inspection body set up in 1929.

The Complainant has built its reputation over 60 years as an independent third party assisting companies in the areas of quality, health and safety and the environment.

The Complainant is in France a market leader in construction and has also positioned itself as a European leader in IT services for the construction and infrastructure sectors.

Socotec Group has diversified its skills and business activities in the markets for construction, real estate, infrastructure, energy, industry, local authorities, services, healthcare and retail and has a consolidated revenue of EUR 650 million with operations in 25 countries.

The Complainant employs more than 6,500 individuals worldwide with more than 4,500 of those employees spread across 200 locations in France.

The Complainant is the owner of SOCOTEC trademark registrations across various jurisdictions including French trademark registration no. 1613632, registered on January 20, 1988 for classes 6, 9, 19, 35, 36, 37 and 42, and international trademark registration no. 595125, registered on December 22, 1992 for classes 6, 9, 19, 35, 36, 37 and 42.

The Complainant also registered a number of domain names incorporating the term “socotec”; among them being <socotec.com> and <socotec.fr>, registered in 1997 and 1996 respectively, with significant ranking in France and globally.

The Respondent registered the disputed domain name on October 15, 2004. The disputed domain name redirects to the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It is the owner of SOCOTEC trademark registrations across various jurisdictions and internationally;

- The disputed domain name is identical and confusingly similar with the Complainant’s trademark SOCOTEC, as it incorporates the Complainant’s SOCOTEC trademark;

- The Respondent’s use of the disputed domain name contributes further to the confusion with the Complainant and the Complainant’s trademark SOCOTEC as the Respondent uses the disputed domain name to redirect Internet users to the website found at at the Complainant’s primary domain name <socotec.com>;

- The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names;

- The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. Although the WhoIs database indicates that the Respondent is called Socotec International Romania SRL it is the Complainant’s claim that the Respondent has falsely identified itself as, or associated with, the Complainant and this can be inferred more from the contact email address which is “socotecromania@[...]”, whereas the Complainant’s domain names <socotec.fr.> and <socotec.com> are both registered to the email address “[...]@socotec.com”.

- The Complainant’s SOCOTEC trademarks and domain name registrations predate the registration of the disputed domain name by the Respondent;

- By registering a domain name that incorporates in its entirety the Complainant’s famous SOCOTEC trademark, thus resulting in a domain name identical to said trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its own domain names. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business;

- The Respondent has registered the disputed domain name under false details that would imply that Respondent is, or at a minimum associated with, the Complainant as the WhoIs lists the Respondent as “Socotec International Romania SRL” and the Respondent is using the disputed domain name to redirect Internet users to the Complainant’s own website at its primary domain name;

- The Respondent registered the disputed domain name being aware of the Complainant’s brands;

- Furthermore, the Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under Policy, paragraph 4(b)(iii);

- The Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding;

- Finally, on balance of the assertions made, it is more than likely that the Respondent knew of and targeted the Complainant’s trademark and the Respondent should be found to have registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the proceeding

Following the ROTLD’s confirmation as to the language of the Registration Agreement being Romanian and the submission by of the Complaint in a language other than that of the Registration Agreement, the Center notified both Parties (in English and Romanian) on May 31, 2018, of the discrepancy between the language of the Registration Agreement and the language of the Complaint.

Following such notification, the Complainant replied on June 1, 2018, by providing an amended Complaint which in which argumentation was supplemented to include a request that the proceedings be in the English language, grounding its request on the following reasons:

- The Complainant is unable to communicate in Romanian and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;

- Such additional delay, considering the abusive nature of the disputed domain name and its website (the Respondent has registered a confusingly similar domain name and is using the disputed domain name to redirect to the Complainant’s own website) poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products;

- In addition to the abusive nature of the disputed domain name and its website, the Respondent has registered the disputed domain name using fraudulent details designed to give the impression that the Respondent is the Complainant;

- The Respondent has registered the disputed domain name using the fake company name “Socotec International Romania SRL” and the email address “socotecromania@[...]”; see Annex 2. As with the above, delaying the proceeding poses continuing risk to the Complainant and its customers;

- The term “socotec”, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Romanian language;

- The Complainant previously sent a cease-and-desist letter to the Respondent as provided in the Complaint to which the Respondent has not responded, although it was given ample time and opportunity to respond and request that communications continue in Romanian.

- To allow the Respondent to dictate the course of this matter and further burden the Complainant at this juncture would contravene the spirt of the UDRP and disadvantage the Complainant

- Pursuant to Paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain name disputes.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1., and pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, the language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. Further, the Panel notes that for the aim of conducting the proceedings with due expedition, paragraph 10 of the Rules vests the Panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

Considering firstly, that Respondent was notified about these proceedings in English and Romanian, secondly, that the Respondent in this case was given the opportunity to comment on or to oppose (if it wishes, in the language of the Registration Agreement) to the Complainant’s arguments – who requested to have these proceedings in English − but did not present any submission in this respect, and thirdly that the conducting of this proceeding in Romanian would place a supplementary burden on the Complainant and would have the proceeding unduly delayed, the Panel does not consider prejudicial for the Respondent to have English determined as the langauge of the proceeding.

Considering the practice of previous UDRP panels as reflected in WIPO Overview 3.0, sections 4.5.1, 4.5.2. and relevant decisions therein, the Panel determines that English is the language of this proceeding.

6.2 Substantive Matters

A. Identical or Confusingly Similar

According to the Policy the Complainant has to show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Based on the contentions of the Complainant and the evidence presented supporting these contentions, the Panel finds that the Complainant holds rights in the SOCOTEC trademarks.

This Panel also finds that the disputed domain name is identical to the Complainant’s registered SOCOTEC marks because it fully incorporates the trademarks and merely adds the country code Top-Level Domain (“ccTLD”) “.ro”, which is typically disregarded under the first element analysis.

In consideration of all reasons above, the Panel finds that the disputed domain name is identical to the SOCOTEC marks and that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name.

If the Complainant makes that showing, the burden of production shifts to the Respondent, as indicated in the WIPO Overview 3.0, section 2.1.

In this case the name of the Respondent contains the term “socotec”. This raises, in the opinion of Panel, the question whether, so far as disputed domain name incorporates the term “socotec”, the disputed domain name reflects a name by which the Respondent has been “commonly known” as provided for by paragraph 4(c)(ii) of the Policy. The Complainant asserts that the the Respondent is not commonly known by the disputed domain name, as the Respondent has falsely identified itself as, or associated with, the Complainant and this can be inferred more from the contact email address which is “socotecromania@[...]”, whereas the Complainant’s domain names <socotec.fr.> and <socotec.com> are both registered to the email address “[...]@socotec.com”. Moreover, the Complainant contends that it never sponsored or affiliated the Respondent with the Complainant in any way and has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names, and the Respondent has not come forward to show that any business under the name “Socotec International Romania SRL” currently exists. With view to the Complainant’s assertions in this respect and considering also that the disputed domain name redirects to the Complainant’s website, this Panel accepts that the Respondent has not engaged in a substantial business activity under Socotec name and accordingly has not established rights or legitimate interests under this heading.

Therefore, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent.

Accordingly, this Panel finds that the second element of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Under this heading, the Complainant has to show that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant’s initial trademark registration of the SOCOTEC trademarks dates from January 20, 1988, which substantially predates the registration of the disputed domain name.

The registration dates for the two domain names used by the Complainant, <socotec.fr> and <socotec.com>, also predate the registration of the disputed domain name.

The disputed domain name also redirects Internet users to the Complainant’s main website.

The fact that the disputed domain name is identical to the Complainant’s trademark SOCOTEC and that said trademark has been used for a long period of time prior to the registration of the disputed domain name may indicate, on the balace of probabilities, that the Respondent was aware of the Complainant’s trademark at the time of registration and registered the disputed domain name to mislead Internet users into thinking that it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.

Although a cease-and-desist letter was sent to the Respondent by the Complainant, and further the Respondent was notified with the Complaint, the Respondent provided no explanations as to why it registered the disputed domain name.

In addition, redirecting the disputed domain name to the Complainant’s website supports a finding that the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (see section 3.1.4 of the WIPO Overview 3.0).

Accordingly, this Panel finds that the Complainant has demonstrated that the Respondent registered and is using the disputed domain name in bad faith and therefore, the third element of paragraph 4(a) of the Policy is 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 <socotec.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: July 25, 2018