WIPO Domain Name Decision: D2005-0817

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Générale v. Richard J.

Case No. D2005-0817

1. The Parties

The Complainant is Société Générale, Paris, France, represented by Bird & Bird Solicitors, France.

The Respondent is Richard J, California, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <logitelsocgen.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2005. On August 1, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On August 1, 2005, eNom 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, billing, and technical contact. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2005.

The Center appointed Alfred Meijboom as the sole Panel in this matter on September 14, 2005. 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 well known French bank. Besides under its full name Société Générale, the Complainant is also designated with the contraction SOCGEN.

The Complainant holds the following trademark registrations:

- the French trademark SOCGEN (96641090), filed on September 10, 1996, in classes 16, 35 and 36 for, inter alia, financial goods and services;

- the French trademark SOCGEN (13103862), filed on June 5, 2000, in class 38;

- the Community trademark SOCGEN (476671), filed on March 4, 1997, in classes 16, 35 and for, inter alia, financial goods and services;

- the International trademark SOCGEN (772893), filed on December 5, 2001, in classes 16, 35 and 36 for, inter alia, financial goods and services;

- the United States trademark SOCGEN (2690994), filed on December 5, 2001, in class 38;

- the French trademark LOGITEL (1248756), filed on October 21, 1983, in classes 9, 16, 28, 35, 36, 38, 40, 41, 42, 43, 44 and 45;

- the French trademark LOGITELNET (13106494), filed on June 19, 2001, in classes 35, 36 and 38.

Furthermore, the Complainant uses, amongst others, the website “www.logitel.socgen.com”.

The Respondent holds the Domain Name <logitelsocgen.com> (the “Domain Name”). The Domain Name was registered on November 11, 2004.

The Domain Name previously led to a French portal website promoting banking services of various financial websites, amongst which “www.societegenerale.fr” of the Complainant and other websites, used by the Complainant’s competitors. At the moment the website displays the announcement “High security alert!!! You are not permitted to download the file “logitelsocgen.com”. URL = http://www.sedoparking.com/logitelsocgen.com”.

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:

(i) the Domain Name is identical or confusingly similar to trademarks or service marks to which the Complainant has rights.

The Complainant contends that the Domain Name consists of a combination of the elements LOGITEL and SOCGEN, which are identical to the Complainant’s trademarks and the gTLD “.com”. Therefore the Complainant believes that there exists a high risk of confusion, as consumers may think the Domain Name directly refers to the Complainant’s services.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant states that it has prior rights in the trademarks mentioned that precede the Respondent’s registration of the Domain Name. According to the Complainant the Respondent was not entitled to register or use the Domain Name on the basis of a license, consent or any other right. Furthermore, the Respondent has not made use in connection with a bona fide offering of goods and services or any preparations in that respect. Therefore the Respondent not seems to have a legitimate interest in the Domain Name.

(iii) the Domain Name was registered and is being used in bad faith.

The Complainant contends that the Respondent’s bad faith can be inferred from the three following elements:

a) the Respondent has no prior rights concerning the Domain Name and no authorization is given by the complainant regarding the use of its trademarks LOGITEL and SOCGEN. Therefore, the Complainant states, the registration of the Domain Name has not been made with bona fide intention;

b) the Complainant and its trademarks LOGITEL and SOCGEN enjoy great notoriety in France and all over the world, including in the United States of America. The combination of the Complainant’s trademarks in the Domain Name demonstrates that the Respondent knows the Complainant, its trademarks and activities and registered the Domain Name knowingly;

c) the Domain Name leads to a French portal website promoting banking services of some of the Complainant’s competitors. This unauthorized use supports the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant holds several trademarks for SOCGEN worldwide, including in the United States of America, where the Respondent has his postal address. Furthermore the Complainant holds two French trademark registrations for LOGITEL and LOGITELNET. The Panel finds that the Complainant has rights in the SOCGEN and LOGITEL trademarks.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights, the gTLD “.com” is disregarded, being a necessary element of Domain Name. The relevant parts of the Domain Name are “logitel” and “socgen”, which are identical to the Complainant’s trademarks LOGITEL and SOCGEN. The combination of the two trademarks in the Domain Name leads the Panel to the conclusion that the Domain Name as a whole is confusingly similar to the Complainant’s LOGITEL and SOCGEN trademarks.

B. Rights or Legitimate Interests

The Complainant contends that it has not authorized the Respondent to use its trademarks or register the Domain Name. There is no evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is composed of the Complainant’s trademarks LOGITEL and SOCGEN. Furthermore, the Domain Name only differs one dot from the Complainant’s website “www.logitel.socgen.com”. As substantiated under B, the Panel has concluded that the Respondent has no rights or legitimate interests in the Domain Name. Considering all this, the Panel finds, in accordance with WIPO Case No. D2002-0625 (ACCOR v. Tigertail Partners), that it is reasonable to conclude that only someone who was familiar with the LOGITEL and SOCGEN trademarks could have registered the Domain Name. Consequently, the Panel concludes that the Domain Name has been registered in bad faith.

The Complainant must also prove that the Domain Name is being used in bad faith.

In assessing this element the Panel takes the following circumstances into account.

From the combination of the Complainant’s trademarks in the Domain Name it can be inferred that the Domain Name must have been registered with the Complainant’s trademarks in mind. Furthermore, there is no indication that the Respondent has any rights or legitimate interests in the Domain Name. Most importantly, the website behind the Domain Name previously redirected to a French portal website promoting banking services of various financial websites, amongst which “www.societegenerale.fr” of the Complainant and other websites, exploited by the Complainant’s competitors. At the moment the website displays the announcement “High security alert!!! You are not permitted to download the file “logitelsocgen.com””.

The Panel finds that using the Domain Name which is confusingly similar to the Complainant’s trademarks to divert the public to competitors of the Complainant constitutes use in bad faith. This is not different now that the website no longer directs to the foresaid banking promotional portal, since the use may be altered at the Respondent’s will at any moment. Taken all circumstances into consideration, the Panel concludes that the Respondent’s holding of the Domain Name sufficiently satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name is being used in bad faith.

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 Name <logitelsocgen.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Date: September 23, 2005