WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� Nationale des Chemins de Fer Fran�ais v. ostrid company, Domains by Proxy, Inc.
Case No. D2008-0627
1. The Parties
The Complainant is Soci�t� Nationale des Chemins de Fer Fran�ais, of France, represented by Cabinet SANTARELLI, France.
The Respondent is ostrid company, the Netherlands, and DomainByP, of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2008. On April 23, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On April 24, 2008, GoD, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In this respect, the Center sent a Complaint Deficiency Notification to the Complainant on May 2, 2008 and another notification on May 6, 2008. The Complainant filed amendments to the Complaint on May 6, 2008. The Center verified that the Complaint together with the amendments to 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 May 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2008.
The Center appointed Johan Sj�beck as the sole panelist in this matter on June 10, 2008. 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 has submitted evidence that it is the owner of the following trademark registrations:
VOYAGES-SNCF.COM, class 9, 35, 38, 39 and 42 with French registration number 013104791, filed June 11, 2001 and registered January 18, 2002.
VOYAGES-SNCF, class 9, 35, 38, 39 and 42 with French registration number 013104790, filed June 11, 2001 and registered November 16, 2001.
VOYAGES-SNCF.COM, class 9, 16, 35, 38, 39, 41, 42 and 43 with French registration number 073475835, filed January 19, 2007 and registered June 29, 2007.
VOYAGES-SNCF.COM, class 9, 16, 35, 38, 39, 41, 42 and 43 with international registration number 958 152 under priority of the French trademark 073475835.
SNCF, class 6, 7, 12 and 39 with French registration number 1314288, filed June 27, 1985 and registered December 13, 1985.
SNCF, class 12, 16, 18, 25, 28, 35, 39, 40, 41, 42, 43, 44 and 45 with French registration number 93466498, filed April 30, 1993 and registered October 15, 1993.
SNCF, class 9, 35, 38 and 41 with French registration number 003066781, filed November 24, 2000 and registered April 27, 2001.
SNCF, class 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43 with international registration number 878372 dated August 23, 2005.
The disputed domain name was registered by the Respondent, ostrid company, on February 21, 2008.
5. Parties’ Contentions
A. Complainant
The disputed domain name consists of three words, “voyage”, “sncf” and “blog” in addition to the standard suffix “.com”. The Complainant is the owner of the trademarks VOYAGES-SNCF, VOYAGES-SNCF.COM and SNCF. The trademarks SNCF are used in connection with transport services and travel agency services and related goods. The trademarks VOYAGES-SNCF and VOYAGES-SNCF.COM are used in connection with an online travel agency, operated by a 100% subsidiary of the Complainant named V since June 2000. The company V has a business volume of more than one and a half billion euros in 2006 and more than nine million visitors.
The Complainant is the registrant of various domain names that include the mark VOYAGES-SNCF, such as “v”, “” and “”.
The Complainant has not licensed, contracted or otherwise permitted the Respondent to use the trademarks SNCF and/or VOYAGES-SNCF and/or VOYAGES-SNCF.COM nor has the Complainant permitted the Respondent to register domain names incorporating any of the trademarks. To the best of the Complainant’s knowledge, the Respondent has no rights or legitimate interest in the disputed domain name.
The disputed domain name resolves to a parked website with sponsored links that relates to travel, transport. The Respondent has been aware of the Complainant’s trademarks when registering and using the disputed domain name due to the fact that the website to which the domain name resolves is in French and it contains a link to the Complainant’s official website. The Respondent takes advantage of the reputation of the Complainant’s trademark when offering sponsored links to other websites providing services similar to those of the Complainant. Every time Internet users access the website and activate any of the sponsored links, the Respondent receives financial remuneration.
Furthermore, the Respondent’s use of the disputed domain name is disrupting the business of the Complainant. It is the opinion of the Complainant that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademarks VOYAGES-SNCF, VOYAGES-SNCF.COM and SNCF which all predate the registration of the disputed domain name .
The disputed domain name contains the trademark VOYAGES-SNCF in its entirety, apart from the letter “s” in the word “voyages” which is not included in the domain name. Furthermore, the disputed domain name incorporates the trademark SNCF in its entirety. The domain name contains an addition of the generic word “blog” and the ability for such a descriptive word to distinguish the disputed domain name from the trademark of the Complainant is limited.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to 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 he 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 he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he 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.
The Complainant has not licensed or otherwise consented to the Respondent’s use of its trademarks in connection with the disputed domain name which is confusingly similar to the trademarks.
Although provided the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name.
From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services.
It has also been shown that the website, to which the disputed domain name resolves, contains a link to the Complainant’s website.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location
The Complainant’s registered trademarks VOYAGES-SNCF, VOYAGES-SNCF.COM and SNCF predate the registration of the disputed domain name and the circumstances in the case before the Panel suggest that the Respondent was aware of the Complainant’s trademarks when registering and using the disputed domain name. The website to which the disputed domain name resolves contains numerous advertising links to websites promoting third party products and services very similar to those offered by the Complainant. It has also been shown that the Respondent’s website contains a link to the Complainant’s website. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of registration and use in bad faith according to previous case law. See e.g., L�Or�al, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451
The submitted evidence in the case before the Panel indicate that the disputed domain name has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the domain name has been registered and 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 be transferred to the Complainant.
Johan Sj�beck
Sole Panelist
Date: June 24, 2008
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