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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	100588
Time of Filing	2013-04-17 11:08:09
Disputed domain name	SGCIBONLINE.COM

Case Administrator
Name	Lada Válková

Complainant
Organization	SOCIETE GENERALE
Authorized Representative
Organization	Nameshield (Enora Millocheau)

Respondent
Name	William Hughes

Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

Identification of rights
The Complainant is the owner of trademark registrations for SGCIB and SG-CIB.

Factual Background
Founded in 1864, Société Générale S.A. is a French multinational banking and financial services company headquartered in Paris. The company is a universal bank split into three main divisions, Retail Banking and Specialized Financial Services, Corporate and Investment Banking (Derivatives, Structured Finance and Euro Capital Markets) and Global Investment Management and Services. Société Générale Corporate & Investment Banking (SGCIB) revolves around three main activities: investment banking, financing and markets. SG CIB is present in the main financial markets with extensive European coverage and representative offices in Central and Eastern Europe, the Middle East and Africa, the Americas and Asia-Pacific. The Complainant is the owner of trademark registrations for SGCIB, including, amongst others, the French Trademark registration No. 3223420 for SGCIB, filed on May 2, 2003, in classes 9, 16, 35, 36 and 38; the French Trademark registration No. 3223419 for SG-CIB, filed on May 2, 2003, in classes 9, 16, 35, 36 and 38; and the International Trademark Registration No. 819196 for SG-CIB, registered on September 30, 2003, in classes 9, 16, 35, 36 and 38. The Complainant is also the owner of domain names containing SGCIB, including <sgcib.com>, registered on February 23, 2000. The disputed domain name <sgcibonline.com> was registered on August 8, 2012 and is not used in connection with an active web site.

Factual Background

Founded in 1864, Société Générale S.A. is a French multinational banking and financial services company headquartered in Paris. The company is a universal bank split into three main divisions, Retail Banking and Specialized Financial Services, Corporate and Investment Banking (Derivatives, Structured Finance and Euro Capital Markets) and Global Investment Management and Services.
Société Générale Corporate & Investment Banking (SGCIB) revolves around three main activities: investment banking, financing and markets.
SG CIB is present in the main financial markets with extensive European coverage and representative offices in Central and Eastern Europe, the Middle East and Africa, the Americas and Asia-Pacific.
The Complainant is the owner of trademark registrations for SGCIB, including, amongst others, the French Trademark registration No. 3223420 for SGCIB, filed on May 2, 2003, in classes 9, 16, 35, 36 and 38; the French Trademark registration No. 3223419 for SG-CIB, filed on May 2, 2003, in classes 9, 16, 35, 36 and 38; and the International Trademark Registration No. 819196 for SG-CIB, registered on September 30, 2003, in classes 9, 16, 35, 36 and 38.
The Complainant is also the owner of domain names containing SGCIB, including <sgcib.com>, registered on February 23, 2000.
The disputed domain name <sgcibonline.com> was registered on August 8, 2012 and is not used in connection with an active web site.


FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT The Complainant contends that the disputed domain name is confusingly similar to the trademark SGCIB, since the addition of the suffix “.COM” and of the word “online” does not change the overall impression that the disputed domain name is connected to the Complainant’s trademark. The Complainant states that the Respondent is not affiliated with nor authorized by the Complainant in any way, and is not related in any way to the Complainant’s business. The Complainant also contends that, according to the WIPO case no. D2003-0455, “Croatia Airlines d.d. v. Modern Empire Internet Ltd.”, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. The Complainant informs the Panel that Respondent does not carry out any activity for, nor has any business with, the Complainant. The Complainant also contends that the Respondent has no legitimate interests in respect of the domain name and that the Respondent is not connected in any way with the Complainant. The Complainant also underlines that the Respondent registered the disputed domain name by hiding its WhoIs information. As to the use of the disputed domain name, the Complainant highlights that the website in connection to the disputed domain name is inactive and states that many panels found that “passive holding” is to be considered evidence of bad faith. NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT

The Complainant contends that the disputed domain name is confusingly similar to the trademark SGCIB, since the addition of the suffix “.COM” and of the word “online” does not change the overall impression that the disputed domain name is connected to the Complainant’s trademark.
The Complainant states that the Respondent is not affiliated with nor authorized by the Complainant in any way, and is not related in any way to the Complainant’s business.
The Complainant also contends that, according to the WIPO case no. D2003-0455, “Croatia Airlines d.d. v. Modern Empire Internet Ltd.”, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Complainant informs the Panel that Respondent does not carry out any activity for, nor has any business with, the Complainant.
The Complainant also contends that the Respondent has no legitimate interests in respect of the domain name and that the Respondent is not connected in any way with the Complainant.
The Complainant also underlines that the Respondent registered the disputed domain name by hiding its WhoIs information.
As to the use of the disputed domain name, the Complainant highlights that the website in connection to the disputed domain name is inactive and states that many panels found that “passive holding” is to be considered evidence of bad faith.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED

Rights
The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).

No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).

Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Principal Reasons for the Decision
1. The disputed domain name includes the registered trademark SGCIB of the Complainant, with the addition of the word "online". According to a number of prior decisions under the UDRP, the addition of a generic term to a trademark is not sufficient to exclude the confusing similarity. In addition, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely a functional component of a domain name. 2. The Complainant has stated that the Respondent is not affiliated with or authorized by the Complainant in any way. There is no evidence of the fact that the Respondent, which hid its contact information through a privacy service, might have been commonly known by the disputed domain name or by a name corresponding to the disputed domain name. According to the evidence on records, the Respondent has simply passively held the disputed domain name and has not submitted any evidence showing that it made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or that it has made a legitimate non-commercial or fair use of the disputed domain name. In the absence of a response, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. 3. In light of the registration and use of the Complainant’s trademark SGCIB since 2003 in connection with the investment services of the Complainant and in view of the fact that the acronym “sgcib” is, according to the Panel’s verifications and in the absence of a contrary explanation of the Respondent, exclusively referable to the Complainant’s trademark, the Panel finds that the Respondent was more likely than not aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The disputed domain name is not used in connection with an active web site, i.e. is passively held. As established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, since the trademark that constitutes the core of the disputed domain name is related to banking and financial services, the Panel finds that the Respondent could not make any legitimate noncommercial use of the domain name and that, on the balance of probabilities, any active use of the domain name would resolve to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site.

Principal Reasons for the Decision

1. The disputed domain name includes the registered trademark SGCIB of the Complainant, with the addition of the word "online". According to a number of prior decisions under the UDRP, the addition of a generic term to a trademark is not sufficient to exclude the confusing similarity. In addition, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely a functional component of a domain name.

2. The Complainant has stated that the Respondent is not affiliated with or authorized by the Complainant in any way. There is no evidence of the fact that the Respondent, which hid its contact information through a privacy service, might have been commonly known by the disputed domain name or by a name corresponding to the disputed domain name. According to the evidence on records, the Respondent has simply passively held the disputed domain name and has not submitted any evidence showing that it made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or that it has made a legitimate non-commercial or fair use of the disputed domain name. In the absence of a response, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.

3. In light of the registration and use of the Complainant’s trademark SGCIB since 2003 in connection with the investment services of the Complainant and in view of the fact that the acronym “sgcib” is, according to the Panel’s verifications and in the absence of a contrary explanation of the Respondent, exclusively referable to the Complainant’s trademark, the Panel finds that the Respondent was more likely than not aware of the Complainant’s trademark at the time of the registration of the disputed domain name.
The disputed domain name is not used in connection with an active web site, i.e. is passively held. As established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Moreover, since the trademark that constitutes the core of the disputed domain name is related to banking and financial services, the Panel finds that the Respondent could not make any legitimate noncommercial use of the domain name and that, on the balance of probabilities, any active use of the domain name would resolve to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site.

Decision
For all the following reasons, the Complaint is	Accepted
and the disputed domain name(s) are to be
SGCIBONLINE.COM	Transferred to SOCIETE GENERALE

Panellists
Name	Luca Barbero
Date of Panel Decision	2013-05-27

Publication of the Decision
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Dispute 100588

Panel Decision