WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg Case No. D2008-1849 1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is RareNames Inc., d/b/a RareNames WebReg, of Washington, DC, United States of America (“USA”) and Waltham, Massachusetts, USA, represented by NameMedia, Inc., USA. 2. The Domain Names and Registrars
The disputed domain names and are registered with TierraNet Inc., d/b/a DomainDiscover (“DomainDiscover”). The disputed domain name is registered with Annulet Incorporated (“Annulet”). The disputed domain name is registered with DomainA, LLC (“DomainAdministration”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 28, 2008, and in hard copy on December 11, 2008. The Center transmitted its request for registrar verification to the registrars of the disputed domain names on December 2, 2008.
Annulet replied by email the same day, stating that it had received a copy of the complaint, that it was the registrar for the disputed domain name , that the Respondent was the current registrant of this domain name, that it would prefer that the Panel decide whether the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration, that the expiration date for this domain name was January 15, 2009, that the domain name had been placed on registrar-lock and that the registration agreement was in English. Annulet also provided the contact details on its Whois database in respect of the registration and did not dispute that the registrant had submitted in the registration agreement to the jurisdiction of the courts at its location.
DomainDiscover replied by email on December 8, 2008, stating that it had received a copy of the complaint, that it was the registrar for the disputed domain names and , that the Respondent was the current registrant of these domain names, that the UDRP applied to all domain names registered through it, that these domain names had been administratively locked and would remain locked for the duration of the UDRP proceedings, and that the registration agreement was in English and provided that for the adjudication of disputes concerning or arising from the use of the domain name, the customer shall submit to the jurisdiction of the courts at his domicile and in San Diego County, California. Domain Discover also provided the contact details on its Whois database in respect of these domain names.
DomainAdministration replied by email on December 12, 2008, stating that it had received a copy of the complaint, that it was the registrar for the disputed domain name, , that the Respondent was the current registrant of this domain name, that it would prefer that the Panel decide whether the UDRP applies to the registration, that the registration had been renewed to December 10, 2009, that the domain name had been placed on registrar-lock, and that the registration agreement was in English. DomainAdministration also provided the contact details on its Whois database in respect of the registration and did not dispute that the registrant had submitted in the registration agreement to the jurisdiction of the courts at its location. DomainAdministration subsequently confirmed to the Center by email of December 15, 2008, that the UDRP applied to the registration.
The Center verified that the Complaint satisfied the formal requirements of the 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 December 16, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 5, 2009. The Response was filed with the Center by email at 01:19 am (Geneva time) on January 6, 2009 and in hard copy on January 7, 2009. The Panel waives the Respondent's default in view of the insignificance of the delay and admits the Response.
The Center appointed Jonathan Turner as the sole panelist in this matter on January 19, 2009. 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. Having reviewed the file, the Panel is satisfied that the UDRP applies to the disputed domain names and that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant operates all railway passenger services in France on behalf of the French State. It uses the name “TGV” in relation to train services in France and has registered TGV as a mark in France and other countries (including the USA) for various goods and services. It has also registered TGV MEDITERRANEE as a mark in France for various goods and services.
The disputed domain names resolve to websites which display links to other websites, including websites relating to travel and transport, and indications that the domain names are for sale. 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain names are confusingly similar to its registered mark TGV, since they each comprise this mark together with a descriptive indication and the generic top level domain suffix. The Complainant further claims that the disputed domain name is confusingly similar to its registered mark TGV MEDITERRANEE, since “med” is a commonly-used abbreviation of “mediterranée”.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names and that they were registered and are being used in bad faith. In particular, the Complainant alleges that the disputed domain names are directed to web pages containing sponsored links and that the Respondent obtains a financial gain when Internet users access these pages and activate these links. According to the Complainant, this is evidence of registration and use in bad faith in accordance with paragraph 4(c)(iv) [sic] of the UDRP, particularly as the disputed domain names are connected with products or services provided by the Complainant.
The Complainant also draws attention to the indications that the disputed domain names are for sale which (it says) prove that the Respondent registered them primarily for the purpose of sale for valuable consideration in excess of its costs within the meaning of paragraph 4(b)(i) of the UDRP.
The Complainant further alleges that the disputed domain names were registered in order to prevent the Complainant from reflecting its marks in corresponding domain names.
Finally, the Complainant draws attention to findings of bad faith on the part of the Respondent in other decisions under the UDRP.
The Complainant seeks a decision that the disputed domain names be transferred to it. B. Respondent
The Respondent affirms by a sworn affidavit of its Chairman and Chief Executive Office that it registered the disputed domain names on various dates between July 14, 2005 and December 10, 2007 after their former registrations had lapsed following non-renewal by the previous owners; that it has a policy of registering and maintaining only domain names which incorporate common acronyms, words or phrases, descriptive terms and/or words for which the available evidence suggests no third party has exclusive rights; and that it has registered and uses 3,300 such domain names.
The affidavit acknowledges that the Respondent offers some of its domain names (included those disputed in this case) for sale to the public; and states that it quoted prices for the disputed domain names to the Complainant's representative.
The affidavit goes on to say that the Respondent's websites associated with the disputed domain names offer information and links relating to the generic and indistinct nature of the acronym “tgv”; that the Respondent did not register the disputed domain names with the Complainant in mind or for the purposes of sale to the Complainant, disruption of its business, preventing its registration of domain names reflecting its marks or confusing its customers; and that the first notice the Respondent had of any dispute was its receipt of the Complaint, which was not preceded by any correspondence.
The affidavit admits that the Respondent was aware, when it registered the disputed domain names, of the Complainant's US-registered marks in respect of toys and railway-related services, but states that there are no links on the home pages of its websites associated with the disputed domain names which compete with these goods and services. The affidavit also states that the Respondent uses robots.txt files to prevent its domain names and website content being indexed by search engines and appearing in search engine results, and that the Respondent derives revenue from direct navigation by Internet users typing its domain names into the browser address bar.
The Respondent submits that the Complainant's registration of its TGV mark in France does not give it an exclusive right to prevent other parties using these letters in domain names.
The Respondent next contends that it has rights or legitimate interests in the disputed domain names, relying on decisions under the UDRP which (it submits) hold that mere ownership of a domain name comprising a common acronym or combination of an acronym with a generic word or abbreviation in itself establishes its owner's right or legitimate interest. The Respondent also relies on its use of the disputed domain names which it says has been in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the UDRP.
The Respondent denies that the disputed domain names were registered or are being used in bad faith. It states that none of the circumstances identified in paragraph 4(b) of the UDRP is present. It reiterates the points made in the affidavit and adds that there is no reason to believe that anyone would be confused into thinking that the Respondent's website originates or is sponsored or approved by the Complainant.
The Respondent submits that the Complaint should be dismissed. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the disputed domain names are identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. Each of these requirements will be considered in turn below. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the marks TGV and TGV MEDITERRANEE.
The Panel considers that the disputed domain names are confusingly similar to the mark “TGV” since they comprise this mark, together with a descriptive term and the generic top level domain suffix. Furthermore, the mark is an unusual combination of letters; and the descriptive terms are ones whose use by the Complainant would, at the lowest, be unsurprising. Thus “TGVweb” would be an appropriate term for the Complainant to use to identify its online booking system; “TGVcinema” could refer to the film services which are commonly provided on long distant transport; “TGVexpress” would indicate a rapid service; and “TGV-med” would indicate a service to France's Mediterranean coast.
The disputed domain name is also confusingly similar to the mark TGV MEDITERRANEE, since “med” is a common abbreviation of “mediterranée”.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel considers that the mere registration of a domain name composed of a descriptive word does not confer a right or legitimate interest in it within the meaning of paragraph 4(a)(ii) of the UDRP. To hold otherwise would contradict the structure of the UDRP and would unreasonably exclude from its protection the owners of the many trademarks which comprise words that can be used descriptively in other contexts. The Panel's view on this point accords with the consensus view recorded in section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
It follows, a fortiori, that the mere registration of a domain name comprising a common acronym or combination of an acronym with a generic word or abbreviation does not confer a right or legitimate interest in it for this purpose. Furthermore, the Panel does not agree with the Respondent that “tgv” is a common acronym. The Panel considers that it is an unusual combination of letters which is not commonly used except with reference to the Complainant's services.
The Panel further considers that the provision of a website merely containing automatically generated links to other websites does not constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the UDRP. Generally, no real service is provided in these cases and the UDRP would very easily be evaded if this were regarded as a bona fide offering of goods or services.
It is clear from the record that the Respondent is not commonly known by the disputed domain names. Nor is it suggested that it is making legitimate non-commercial or fair use. The Respondent acknowledges that it is using the disputed domain names to derive revenue. Furthermore, in the Panel's view this use is not fair since the Respondent is obtaining at least some of this commercial revenue though confusion of the disputed domain names with the Complainant's TGV mark. C. Registered and Used in Bad Faith
The Panel considers that the letters “tgv” are not a common acronym; on the contrary, they are an unusual combination of letters which denotes the Complainant's services to many people in France or who have visited France. As discussed above, the disputed domain names each consist of this mark together with a descriptive term which Internet users may expect to be used by the Complainant, and the generic top-level domain suffix.
It is not disputed that the Respondent is using the disputed domain names to direct internet users to its web pages containing links from which it obtains revenue in the form of click-through commissions. It is also clear from the evidence that the Respondent registered the disputed domain names with the intention of using them in this way.
In the circumstances, the Panel finds that the Respondent's use of the disputed domain names is such as to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's TGV mark.
Furthermore, the Respondent knew of the Complainant's registration of the mark in the United States when it registered the disputed domain names. Simple enquiries or internet searches would have rapidly established further details of the Complainant's use of the mark. In these circumstances, the Panel considers that the Respondent either knew when it registered the disputed domain that its intended use would be likely to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's mark, or at the very least recklessly closed its eyes to this probability. In this kind of case it is appropriate to apply the principle that a person is taken to intend the natural and probable consequences of his acts, as in Grisoft, s.r.o. v. Original Web Ventures Inc.,WIPO Case No. D2006-1381.
In the Panel's view, the Respondent's registration of the disputed domain names with the intention of using them in this way and its subsequent use of them in this way were in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The third requirement of the Policy is satisfied. 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 names, , , and be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: January 29, 2009
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