WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Nationale des Chemins de Fer Français v. Miguel Casajuana Case No. D2008-1593 1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français, of Paris, France, represented by Jalenques, Lecasble & Associés, France.
The Respondent is Miguel Casajuana, of Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On the same day, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed Domain Name. On October 23, 2008, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email to the Complainant on October 31, 2008, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on November 5, 2008. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 2, 2008.
The Center appointed Bernhard F. Meyer as the sole panelist in this matter on December 11, 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 in this administrative proceeding is a French state company responsible for the construction, maintenance and management of the French railway system.
The Complainant is, among others, the owner of the following trademarks:
- The French trademark VOYAGES-SNCF.COM device filed under No. 01 3 104 791, on June 11, 2001 for the classes 9, 35, 38, 39 and 42;
- The French trademark VOYAGES-SNCF device filed under No. 01 3 104 790, on June 11, 2001 for the classes 9, 35, 38, 39 and 42;
- The French trademark VOYAGES-SNCF.COM device filed under No. 07 3 475 835, on January 19, 2007 for the classes 9, 16, 35, 38, 39, 41, 42 and 43;
- The International Registration VOYAGES-SNCF.COM device filed under No. 958 152, on June 29, 2007 under the priority of French trademark VOYAGESSNCF.COM device No. 07 3 475 835, for the classes 9, 16, 35, 38, 39, 41, 42 and 43;
- The French trademark SNCF device filed under No. 1 314 288, on June 27, 1985 for the classes 6, 7, 12 and 39, duly renewed;
- The French trademark SNCF device filed under No. 93 466 498, on April 30, 1993 for the classes 12, 16, 18, 25, 28, 35, 39, 40, 41, 42, 43, 44 and 45, duly renewed;
- The French trademark SNCF device filed under No. 00 3 066 781, on November 24, 2000 for the classes 9, 35, 38 and 41;
- The International Registration SNCF device filed under No. 878 372, on August 23, 2005 for the classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43.
The trademarks SNCF are used in connection with transport and travel agencies services, as well as related goods. The trademarks VOYAGES-SNCF / VOYAGES-SNCF.COM are used by a fully owned subsidiary of the company SNCF named V. This company operates the website under the domain name which is an online travel agency.
The Complainant is the registrant of various domain names including “voyages_SNCF”, for instance and .
The Respondent registered the disputed Domain Name on April 13, 2008. 5. Parties' Contentions A. Complainant
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. Firstly, the Complainant contends that the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Domain Name consists of the combination of the words “yoyages” and “SNCF” and the suffix “.com”. The only difference between the Complainant's trademarks VOYAGES-SNCF and VOYAGES-SNCF.COM consists of the substitution of the letter “v” by the letter “y” which does not have any significant effect since these letters are highly similar from a visual point of view. Hence, the Complainant contents that the disputed Domain Name is quasi identical to its trademarks.
2. It further argues that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent has neither been licensed, contracted nor otherwise permitted by the Complainant in any way to use the trademarks SNFC or VOAYGES-SNCF or VOYAGES-SNCF.COM nor has the Complainant acquiesced in any way to such use or registration of the aforementioned trademarks by the Respondent.
3. Finally, the Complainant states the Respondent registered and uses the Domain Name in bad faith.
The disputed Domain Name resolves to a website that provides a search service relating to a number of different topics, including travel topics. Use of the search service results in the display of various sponsored links to third party websites in the French language.
Moreover, the Respondent was aware of the fact that the Complainant is the owner of the trademarks SNFC or VOYAGES-SNCF or VOYAGES-SNCF.COM and the mere substitution of the letter “v” by the very close letter “y” indicates that the Respondent intended to take advantage of possible mistakes by Internet users typing the Complainant's website address.
Offering sponsored links to other websites providing services of goods which are similar to those offered by the Complainant's own website is evidence of bad faith. Furthermore, the Complainant states that the statement in the website to which the Domain Name resolves “get the domain name / the domain name is offered for sale by its holder” proves that the Respondent registered the Domain Name preliminary for the purpose of selling it for valuable consideration in excess of documented out-of-pocket costs.
Finally, the Complainant claims that the disputed Domain Name was registered 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. Therefore, the Panel bases its findings on the facts as submitted by the Complainant, including the appearance of the website at the Domain Name. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in an administrative proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy.
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed Domain Name differs from the Complainant's trademarks VOYAGES-SNCF and VOYAGES-SNCF.COM by one single letter only: “v” is replaced by “y”. From a visual and typographical point of view this change is not significant since the two letters have a very similar appearance. Respondent's registration of the Domain Name, which varies from the Complainant's trademark by only one letter, appears furthermore to be indicative of the practice known as typosquatting (see below Chap. C)
Secondly, the SNCF portion contained in all of Complainant's trademarks and in Respondent's Domain Name is undoubtedly widely known, if not famous, and designates the French railway company. The component “SNCF” is also very distinctive, not only in Complainant's trademarks but also in Respondent's Domain Name. Thus, it is to be expected that many Internet users are confused by the Domain Name, believing at first sight that it will lead to a website of the French railway company while in reality they arrive at a completely unrelated website of the Respondent with links to partially similar offerings as the ones of SNCF. Such confusion should be avoided.
Given the above reasons, the Panel finds that the disputed Domain Name and the Complainant's mark, are confusingly similar. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights or legitimate interests of a respondent in a domain name:
(i) before any notice was given to respondent of the dispute, respondent used, or demonstrably 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; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name.
There is no evidence or indication of Respondent's use, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The landing page to which the Domain Name resolves does not constitute a bona fide offering of goods or services.
It is furthermore not substantiated at the current record that the Respondent is or has been commonly known by the Domain Name, even though a trademark or service mark registration would not be required.
There appear to be no noncommercial or fair use of the Domain Name evident since the concerned website only contains sponsored links to third parties' websites and has no original content.
Finally, there appear to be no indications and, in fact, the Complainant explicitly denies that the Respondent had in any way been licensed, contracted or otherwise permitted by the Complainant to use the trademarks SNFC or VOYAGES-SNCF or VOYAGES-SNCF.COM.
Therefore, the Respondent lacks rights or legitimate interests in the Domain Name under the Policy and the Panel concludes that the prerequisites of paragraph 4(a)(ii) of the Policy have been proven by the Complainant. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
In the Panel's view, it is unlikely that the Respondent was unaware of the Complainant and its trademarks SNFC or VOAYGES-SNCF and VOYAGES-SNCF.COM when he registered the Domain Name. The trademark component SNCF is well known in France and abroad (Société Nationale des Chemins de Fer Français (SNCF) c. Paco Elmudo,WIPO Case No. D2002-1079). That the letter “y” is visually very similar to the letter “v” indicates that the Respondent intended to take advantage of possible mistakes by Internet users typing the Complainant's website address. Therefore, this appears to be a typical typosquatting case where the Respondent has registered and is using the Domain Name in order to take advantage of typographical errors made by Internet users seeking the Complainant's commercial website (Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035).
Furthermore, the notice on the website at the Domain Name states: “Buy this domain. The domain may be for sale by its owner!”, which also gives rise to the likelihood that the Respondent registered it for the purpose of selling the Domain Name for valuable consideration in excess of Respondent's out-of-pocket expenses (Royal Bank of Canada v. N,WIPO Case No. D2004-0642).
As to the use of the Domain Name, a landing page showing sponsored links to products competing with those of the Complainant constitutes an improper use of Complainant's trademark and is evidence of the Respondent's bad faith registration (Micro Electronics, Inc. v. J Lee,WIPO Case No. D2005-0170; Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM),WIPO Case No. D2005-0591).
Based on the foregoing, the Panel finds that the Respondent has registered the Domain Name and is using it in bad faith. The requirements of paragraph 4(a)(iii) of the Policy are fulfilled. 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.
Bernhard F. Meyer
Sole Panelist
Dated: December 22, 2008
Full & Egal Universal Law Academy