WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français (SNCF) v. Queilles Philippe
Case No. D2002-0603
1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français (SNCF), a French state company, of 34 rue du Cdt René Mouchotte, 75014 Paris, France.
The Respondent is QUEILLES Philippe of 158 rue Léo Lagrange, Montauban 82000, France.
2. The Domain Name and Registrar
The domain name on which the Complaint is based is .
The registrar with which the domain name is registered is DomainS, Inc.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2002, by email and on June 27, 2002, in hardcopy.
3.3 On June 28, 2002, the Center requested verification of the registration from the Registrar and this verification was received on July 15, 2002.
3.4 On July 16, 2002, the Center completed its "Formal Requirements Compliance Checklist" and notified the Respondent of the Complaint, together with a copy of the Complaint and attachments by post-courier and by email (without enclosures).
3.5 Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on August 6, 2002.
3.6 On August 14, 2002, having received the necessary acceptance and declaration of impartiality, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of Dominique Menard, with a projected decision deadline of August 28, 2002.
3.7 The Panel finds that, throughout the above administrative stages, there has been compliance with the requirements of the Policy, Rules and Supplemental Rules and that the language of the proceeding is English (paragraph 11(a), Policy).
4. Factual Background
4.1 Having carefully examined the evidence submitted, the Panel accepts the following facts to be established:
4.2 The Complainant is a French state company responsible for the construction, maintenance and management of the French railway system.
4.3 The Complainant's has a monopoly over the construction, maintenance and management of the French railway system.
4.4 According to exhibit 3 of the Complaint, the Complainant has an annual turnover of approximately USD 13.45 billion. It exploits 31,554 km of lines, including 14,220 km of electrified lines, 1,281 km of high speed lines, and 4,514 stops and stations. The Complainant carries 314 million people each year including 80 million by high speed trains.
4.5 The Complainant first filed for its trademark SNCF on October 15, 1965.
4.6 The Complainant's trademark SNCF, under its current form was filed in France on July 21, 1971, and designates goods and services in classes 9, 12, 16, 18, 25,28,35,38, 39, 41 and 42 of the International classification.
4.7 The Complainant's trademark SNCF and trade name SNCF are well known in France.
4.8 On May 26, 2002, the Respondent sent the Complainant an email proposing to sell the disputed domain name to the Complainant for �50,000.00.
4.9 The Respondent has not used the disputed domain name to develop any website.
5. Parties� Contentions
A. Complainant
The Complainant seeks transfer of the disputed domain name to it, and in support of this contention invokes the following legal grounds as the basis for requested relief:
- The Complainant claims that its trademark "SNCF" is identical or, at least confusingly similar to the domain name in dispute, which is composed of the word "sncf".
- The Complainant further claims that the Respondent's offer to sell the disputed domain name clearly indicates that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs related to the domain name.
- The Complainant finally claims that the disputed domain name was registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and that the Complainant, being a state company, has a true legitimate interest in having a .org domain name reflecting its trademark.
B. Respondent
The Respondent has not filed a response to the Complaint.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:
6.1 That the complainant has rights in a trade or service mark with which the Respondent�s domain name is identical or confusingly similar
Having examined the evidence submitted by the Complainant, and in particular exhibits 2 and 3, the panel is satisfied that the Complainant has trade mark rights in the denomination SNCF.
The next question is whether the disputed domain name is identical or confusingly similar to the Complainant�s marks. It is now well accepted that the domain name suffix, in this case .org, is not regarded as a differentiating factor in determining the question of similarity between the disputed domain name and the trade mark:
World Wrestling Federation Entertainment Inc v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000) ( and "world wrestling federation") and InfoS, Inc v. Registrar Administrator Lew Blank, WIPO Case No. D2000-0069 (April 3, 2000) ( and "infospace").
The Panel therefore finds that the Complainant has, pursuant to paragraph 4(a) (i) of the Policy, established that the disputed domain name is identical to the Complainant's trademark SNCF.
6.2 That the Respondent must be shown to have no rights or legitimate interests in the Domain Name
It is unfortunate that the Complainant has not specifically offered any argument regarding paragraph 4 (a) (ii) of the Policy, one of the three elements needed to be proven in order to seek a transfer of the disputed domain name. Indeed, the Complainant in failing to address this element makes it more difficult for the panel to make a finding for a transfer of the disputed domain name.
Fortunately for the Complainant, the Respondent has defaulted and not offered any argument to contest the Complaint.
The panel therefore relies upon paragraph 14(b) of the Rules, to "draw such inferences there from as it considers appropriate". Furthermore, paragraph 5(e) of the Rules provides that if a Respondent does not submit a response, "in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint."
In the absence of exceptional circumstances having been brought to the Panel�s attention, it proceeds to make the findings below and draw inferences on the basis of the material contained in the Complaint.
In particular the panel relies upon the following factors:
- The disputed domain name does not resolve to a website and is not being used.
- There is no evidence that the Complainant has ever consented to or authorised the registration or use of the domain names or that the Respondent has ever been known by such a name (as specified in sub-paragraph 4(c) (ii)).
- There is no evidence suggesting that the Respondent is commonly known by the domain name.
- The panel accepts the Complainant's argument that the Respondent's offer to sell the disputed domain name clearly indicates that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant, for valuable consideration in excess of the domain names registrant's out-of-pocket costs related to the domain names. Whilst this is more relevant to the element of bad faith the Panel states that the registration of a domain name with the purpose of selling it later for an exorbitant amount does not constitute a right and legitimate interest.
The Panel therefore finds that none of the provisions in Paragraph 4(c) of the Policy, or any other element beyond these non exhaustive provisions, provides the Respondent with a right and legitimate interest to the dispute domain name.
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant argued, presumably relying upon paragraph 4(b)(ii), that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and that it has a true and legitimate interest in having a ".org" domain name reflecting its mark.
Paragraph 4(b) (ii) however, also requires that the Respondent has engaged in a "pattern of such conduct". The Complainant has submitted no evidence of such a pattern of conduct from the Respondent and therefore the Panel will not consider this submission.
Nevertheless, the panel accepts the Complainant's argument and evidence contained in Exhibit 4 that the Respondent offered to sell the disputed domain name to the Complainant for a sum of �50,000.00.
It is the Panel's view that such an exorbitant offer establishes bad faith registration for the purposes of the policy and in particular with regard to paragraph 4 (b) (i).
Having established bad faith registration, the panel must now satisfy itself that the domain name has been used in bad faith. The disputed domain name does not currently resolve to an active website however as held in Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and upheld in numerous other UDRP decisions, non use of a domain name can constitute passive bad faith in certain circumstances.
In this particular case, the Panel relies upon the following factors in support of a finding of passive bad faith use of the disputed domain name:
- The SNCF is a well known company in France, and it would be implausible that the Respondent, being domiciled in France had no prior knowledge of the mark SNCF prior to registering the disputed domain name.
- There is no evidence to suggest that the Respondent has contemplated a good faith use of the disputed domain name.
- Whilst the Respondent has not technically used the disputed domain name, it has used it in the sense of attempting to gain valuable consideration in excess of its out-of-pocket costs. See World Wrestling Federation Entertainement, Inc v. Michael Bosman, WIPO Case No. D99-0001 and Barney's Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059, where an offer to sell a disputed domain name that was not being used, was held to constitute bad faith registration and use.
6.4 Conclusions
The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.
7. Decision
The Administrative Panel accordingly directs that the registration of the domain name should be transferred to the Complainant.
Dominique Menard
Sole Panelist
Dated: August 26, 2002
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