WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Nationale des Chemins de Fer Français v. Domain Park Limited Case No. D2009-0116 1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français of Paris, France represented by Cabinet Santarelli, France.
The Respondent is Domain Park Limited of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 29, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 29, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 17, 2009. The Center verified that the Complaint together with the amendment to the 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 February 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for a Response was March 10, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 11, 2009.
The Center appointed Theda König Horowicz as the sole panelist in this matter on March 19, 2009. 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, Société Nationale des Chemins de Fer Français, is the French State railway company which operates the entire passenger railway system in France.
The Complainant has been the owner of registrations for the trademark SNCF for several years:
- French trademark SNCF device No. 1 314 288 of June 27, 1985, in international classes 6, 7, 12 and 39;
- French trademark SNCF device No. 93 466 498 of April 30, 1993, in international classes 12, 16, 18, 25, 28, 35, 39-45;
- French trademark SNCF device No. 00 3 066 781, in international classes 8, 35, 38 and 41;
- International trademark SNCF device No. 878 372 of August 23, 2005, in international classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43.
These trademarks are used by the Complainant in connection with transport and travel agency services.
Furthermore, the Complainant is the owner of various domain names including SNCF, notably .
The Respondent is Domain Park Limited of Germany which registered the domain name on October 25, 2008.
On November 19, 2008, the Complainant sent via email a cease and desist letter to the Respondent asking for the transfer of the domain name in question.
By email dated December 1, 2008, Domain Park Limited answered that they would be willing to proceed with the said transfer against reimbursement of their registration and administrative fees amounting to USD 500. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its well-known trademark SNCF. In this context, the Complainant underlines that the prefix “cce” which stands for “Comité Central d'Entreprise” is insufficient to avoid the confusion.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of . The Respondent was not licensed, contracted or otherwise authorized to use the trademark SNCF and has used the disputed domain name to link it to websites of the Complainant's competitors.
Finally, the Complainant indicates that the domain name was registered and is being used in bad faith, because it is used for a website providing links to competing third party websites specialized in travel services. In this context, the Complainant notably underlines that:
- some of the wording used on the website is in French;
- the Respondent must have been aware of the existence of the brand SNCF when registering ;
- the domain name is used for a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant;
- the Respondent obtains financial gain every time an Internet user accesses the website and activates the sponsored link;
- the domain name in question is offered for sale on the contested website;
- the Respondent tried to obtain a financial compensation of USD 500.— for the transfer of the domain name to the Complainant;
the Respondent has been listed in other UDRP decisions ordering transfer of the domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the complainant proves, as required by paragraph 4(a) of the Policy, in respect of each of the disputed domain names, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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 Complainant has shown to have rights in the trademark SNCF which is a widely-known abbreviation for its name “Société Nationale des Chemins de Fer Français”.
Furthermore, the domain name obviously incorporates in its entirety the trademark SNCF.
The disputed domain name was constructed by adding the prefix “cce” which stands for “Comité Central d'Entreprise”. Many previous panels held that the use of a generic word or a common term in association with a trademark does not avoid a finding of the disputed domain name being confusingly similar to the trademark (See, i.e., Six Continents Hotels, Inc. v. CredoNIC.com/DOMAIN FOR SALE,WIPO Case No. D2004-0987; Volvo Trademark Holdings AB v. Unasi, Inc.,WIPO Case No. D2005-0556). In this case, the Panel draws a similar conclusion and finds that the addition of the prefix “cce” is insufficient to avoid confusion between the domain name in dispute and the trademark SNCF, which is an abbreviation for a common term reflecting the business practices of the Complainant..
The Complaint therefore satisfies the first requirement of the Policy. B. Rights or Legitimate Interests
Under this heading the complainant must establish at least a prima facie case and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests thereby created. If the respondent fails to do so, a complainant is deemed to have satisfied with the second UDRP requirement (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Complainant indicates that the Respondent was never authorized to make use in any way whatsoever of the trademark “SNCF” and underlines that the Respondent provides links on the contested website to websites of the Complainant's competitors.
In addition, the Panel notes that the Respondent has not provided any evidence showing that it has ever been engaged in any legitimate business under the domain name in dispute or that it is known by the names “sncf” or “ccesncf”.
Under the circumstances, the Complaint meets the second requirement of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the requirement of bad faith is the most difficult to evaluate in this case.
This said, the Panel notes that the Respondent has so far been involved in 18 UDRP proceedings (relating to over 40 domain names) which show that he generally proceeds according to the same line of action, that is:
- the registration of domain names containing popular and/or well-known trademarks owned by third parties,
- the connection of these domain names - without the trademark owner's consent - to a parking webpage where it is mentioned that the domain name is offered for sale,
- the establishing of a parking webpage on which links are given to websites of the trademark owner's competitors, in order to presumably obtain revenue from such linking.
Such is evidence of a pattern of conduct whereby the Respondent has registered and used domain names in bad faith (See for example Hawaii Superferry, Inc. v. Domain Park Limited,WIPO Case No. D2008-1301; Wal-Mart Stores, Inc. v. Hostmaster Hostmaster, Domain Park Limited,WIPO Case No. D2008-1158; Myxer Inc. v. Domain Park Limited,WIPO Case No. D2008-0973).
Furthermore, the Panel agrees with the Complainant that the Respondent knew about the existence of the trademark SNCF when registering the disputed domain name as it used it for a parking webpage providing links to companies having the same type of business as the SNCF that is travel services.
In addition, the Respondent offered the domain name for sale on the contested webpage.
Finally, the Respondent did not take position in this matter and did not challenge the Complainant's contentions.
Considering the above, the Panel concludes that the third requirement of the Policy is also met by the Complainant. 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.
Theda König Horowicz
Sole Panelist
Dated: April 9, 2009
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