WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG Case No. D2008-1613 1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français, of Paris, France, represented by Cabinet SANTARELLI, of Paris, France.
The Respondent is Sinclare Vabalon, BHG, of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Basic Fusion, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2008 electronically and on October 30, 2008 by hardcopy. On October 23, 2008, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2008, Basic Fusion, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 12, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is the French State railway company which operates the French passengers' railway system.
The Complainant is using the mark TGV for a train and related transport and travel services.
The Complainant owns trademark registrations in respect of TGV covering numerous countries, including French trademark No. 1566899 TGV, applied for on August 17, 1978 in international classes 03, 04, 08, 11, 12, 16, 18, 21, 24, 25, 35, 39, 41 and 42, and International Registration No. 471626 registered on September 23, 1982 in international classes 03, 14 and 18 (the “TGV Marks”). Furthermore, the Complainant is registrant of various domain names including the mark TGV, inter alia .
The disputed domain name was first registered on January 4, 2008, and has been used in connection with a parking website.
The Respondent has previously been involved in many domain name cases where the transfer of a domain name to the respective complainant was ordered (see AirTran Holdings Inc. v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1165; J. Choo Limited v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1091; OSRAM GmbH v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1045; Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG,WIPO Case No. D2008-0886; Nutri/System IPHC, Inc. v. Sinclare Vabalon,WIPO Case No. D2008-0288). 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the Complainant's well-known TGV Marks as it reproduces such marks, and the mere addition of the prefix “e” to the word “tgv” is insufficient to avoid confusion with the Complainant's trade marks as it merely designates the conduct of business over an electronic network.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the TGV Marks or to register for any domain name incorporating the TGV Marks.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent was aware of the existence of the Complainant's TGV Marks as the website to which the disputed domain name resolves is in French and contains a link to the Complainant's official website. With regard to bad faith use, the Complainant contends that the Respondent is using the disputed domain name in bad faith as he maintains an active website with sponsored links to other websites providing services and goods which are similar to those offered by the Complainant's own website. Furthermore, the Complainant contends that the Respondent's use of the disputed domain name disrupts the Complainant's business, that the disputed domain name was registered in order to prevent the Complainant from reflecting its marks in a corresponding domain name and that the Respondent has already been a party to other UDRP decisions and therefore acted in a pattern of registering third parties' marks as domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's highly distinctive and well-known TGV Marks in which the Complainant has rights. It is well established that the mere addition of the letter “e” does not generally hinder a finding of confusing similarity because the prefix “e-” is commonly used to refer to electronic or online transactions and generally has no distinctive quality (see Burberry Limited v. Kang Kyungnam,WIPO Case No. D2006-0186; Nike, Inc. v. Farrukh Zia,WIPO Case No. D2000-0167; General Electric Company v. Online S, Inc.,WIPO Case No. D2000-0343; Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522; Philip Morris USA, Inc. v. Andrey Kulikov,WIPO Case No. D2007-1450; Sanofi-Aventis v. The Counsel Group, LLC,WIPO Case No. D2005-0650).
Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that where the complainant makes a prima facie case to address the requirements of paragraph 4(a)(ii) of the Policy, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will shift to the respondent.
The Complainant has asserted to the Panel's satisfaction that the Respondent has no rights or legitimate interests in the disputed domain name and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions and therefore failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith.
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corporation, NAF Case No. 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101).
The Complainant is well-known internationally and has established business activities for many decades. Given the high distinctiveness of the TGV Marks in connection with rail services, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant's rights in the TGV Marks. This finding is supported by the fact that the Respondent not only registered the disputed domain name but also the domain name , which fully includes the Complainant's acronym SNCF (see Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG,WIPO Case No. D2008-0086).
The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the TGV Marks into the disputed domain name and by using the website under such domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
This finding of bad faith use is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in earlier proceedings where registration and use in bad faith were established. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Brigitte Joppich
Sole Panelist
Dated: December 26, 2008
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