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Société Générale v. Socieite Generale inc., Mr. Don Kings Jr. [2005] GENDND 2113 (13 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Générale v. Socieite Generale inc., Mr. Don Kings Jr.

Case No. D2005-0998

1. The Parties

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

The Respondent is Socieite Generale inc., Mr. Don Kings Jr. of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <societiegenerale.com> is registered with Direct Information Pvt Ltd. dba Directi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2005. On September 20, 2005, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On September  21, 2005, Direct Information Pvt Ltd. dba Directi.com 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 September 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2005.

The Center appointed Luca Barbero as the sole panelist in this matter on October 31, 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. On November 25, 2005, a procedural order was issued requesting an extension of time to forward the decision in accordance with paragraph 10(c) of the Rules.

4. Factual Background

Complainant is one of the leading financial services groups in the euro zone. The Complainant employs 92 000 people worldwide across three core businesses: Retail banking and Financial services and serves over 16 million customers in 26 countries. The Corporate and Investment Banking arm of the Société Générale Group, is the fourth largest corporate and investment bank in the euro zone by net banking income. It serves corporates, financial institutions and investors in over 45 countries across Europe, the Americas (included United States and Canada) and Asia.

The Complainant is the owner of several trademark registrations consisting of the sign SOCIETE GENERALE such as the French trademark SOCIETE GENERALE filed on July 30, 1996, registered under the n. 96636680 in classes 16, 35, 36, 38 and 41. The International trademark SOCIETE GENERALE, filed on November, 20, 1984, registered under the n. 490050 in classes, 16, 35, 36, 41 and 42 designating the following countries: Austria, Benelux, Switzerland, Germany, Algeria, Egypt, Spain, Hungary, Italy, the Republic of Korea, Lichtenstein, Morocco, Monaco Portugal, Romania, Russia, Sudan, San Marino, Tunisia, Vietnam and Yugoslavia. The United States trademark SOCIETE GENERALE, registered on October 13, 1992 under the n. 1 723 648 in classes 16, 35 and 36, the United Kingdom trademark SOCIETE GENERALE, registered on June 2, 1989 under the n. 1401415 in class 36.

The Respondent registered the domain name <societiegenerale.com> on June 28, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant highlights that the Respondent has intentionally misspelled Complainant’s trademark in order to attract internet users indicating that there is no doubt that the fact to have misspelled the trademark SOCIETE GENERALE generates confusion.

The Complainant informs the Panel that there is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainant’s trademark “SOCIETE GENERALE”.

According to the Complainant the Respondent which claims on the website to be “a true financial institution providing personal and business financial services with a strong emphasis on service, convenience and financial value” does not exist and the website has only been created to mislead internet users.

The Complainant states that the trademark “SOCIETE GENERALE” is well known throughout France and the world for its banking and financial services. The Complainant is also present in United Kingdom where the Respondent is located and has been offering financial products and services to UK corporate and investors from its London office for more than 130 years. It was the first office of the Group opened outside of France and today, it has about 2,000 employees in the UK.

With reference to the circumstances evidencing bad faith the Complainant indicates that the domain name leads to the website of a company which claims to be called “Societie Generale” and offers the same services as the Complainant. The Complainant suggests that it appears that the company “Societie Generale” does not exist.

The Complainant emphasizes that there is no doubt that the Respondent knows the Complainant and its activities as the website published under the domain name reproduces the main Complainant’s websites features, for instance the distinctive colors black and red and because of the well-known character of the Complainant and of its trademark, the Respondent could not have been unaware of the Complainant’s trademark and its reputation when the domain name was registered by him.

Therefore, in view of the Complainant, the Respondent has obviously registered the domain name for the purpose of luring internet users to the site by causing confusion in making the consumer believe that it constitutes an official website and in attempting to create a likelihood of confusion with the Complainant’s marks as to the source or affiliation of the Respondent's website which is linked to the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of Complainant’ submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

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

(iii) that the Domain name has been registered and is being used in bad faith.

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registration consisting of SOCIETE GENERALE such as the French national trademark for SOCIETE GENERALE n. 96636680 in classes 16, 35, 36, 38 and 41, International Trademark SOCIETE GENERALE n. 490050 in classes, 16, 35, 36, 41 and 42, the United States trademark SOCIETE GENERALE n. 1 723 648 in classes 16, 35 and 36, the United Kingdom trademark SOCIETE GENERALE, n. 1401415 in class 36.

The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant as the addition of one single letter is not only insufficient to distinguish the domain name from the well known trademark SOCIETE GENERALE but on the contrary is ingenerating confusion due to the mere typographical error.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

6.2. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance.

The Panel finds that, in absence of any explanation of the Respondent, the mere adoption of “Socieite Generale inc” as alleged company name for the Respondent, can not be considered sufficient evidence of a legitimate interest since the domain name is confusingly similar to the well-know trademark of the Complainant to promote apparently identical business activities. Further, see Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397, the Panel concluded that the respondent had no legitimate rights noting that it was difficult to see how the respondent could not have known about the trademark NIKE. See also, Victoria’s Secret, et al. v. Atchinson Investments Ltd., NAF Case No. 96496 finding the Respondent could not have been unaware that VICTORIA’S SECRET was a famous mark and thus had no legitimate right to register a domain name using the mark.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

6.3. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

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

(ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration the Panel notes that in light of the Complainant’s well-know trademarks and company name with many years in the field of financial services in which the Respondents claims - on the website - to be active, it is very likely the Respondent was well aware of such trademarks also at the time of registration. In Barnes & Noble College Bookstores, Inc. v. Leisure Interactive, WIPO Case No. D2001-1216, the panel concluded, “It is more probable than not that Respondent in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks” and also in Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0028 and Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As to the use in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark via the mere insertion of an additional letter within a well-known registered trademark.

Previous UDRP Panels have also considered “typosquating” as a circumstance evidencing bad faith. For example in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069, the panel stated that the addition of “www” to a domain name is best explained as a deliberate attempt to exploit user’s typographical mistakes when seeking complainant’s website, which has to be understood as bad faith under paragraph 4(a)(iii) of the Policy.

As stated in Automobiles Peugeot SA v. Good Domains, Formerly Domains For Sale Inc., WIPO Case No. D2002-0805, the Respondent’s registration of <wwwpeugeot.com>, a misspelling of complainant’s registered mark is a circumstance evidencing bad faith. See also PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc. NAF Case No. FA0201000104101 transferring the domain name <wwwpncbank.com>, Prada S.A. v. Domains For Sale Inc. WIPO Case No. D2002-0512, transferring the domain name <wwwprada.com>, AltaVista Co. v. Stoneybrook, WIPO Case No. D2000-0886, transfering <wwwalavista.com>, and Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 transferring domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com>.

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is confusingly similar to the Complainant’s trademarks; (b) the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <societiegenerale.com> be transferred to the Complainant.

_________________________________

Luca Barbero

Sole Panelist

Date: December 13, 2005