WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc. Case No. D2009-0891 1. The Parties
The Complainant is Société Nationale des Chemins de fer Français - SNCF of Paris, France, represented by Cabinet Sarrut Avocats, France.
The Respondent is Damian Miller / Miller Inc. of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with EuroDNS S.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2009. On July 3, 2009, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the disputed domain name. On July 9, 2009, EuroDNS S.A. 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 verified that 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”).
Upon corresponding information given by the Center on July 10, 2009 concerning the language of the proceeding, the Complainant formally requested the language of the proceeding to be French. Within the time limit of July 17, 2009 that the Center granted in English and in French to the Respondent for expressing its views on the issue of the language of the proceeding, no reply was filed concerning this question.
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 July 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 14, 2009.
The Center appointed François Dessemontet as the sole panelist in this matter on August 27, 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.
The disputed domain name was registered on March 20, 2009. 4. Factual Background
The Complainant in this administrative proceeding is the national French railway company which operates all of France's railway system.
The Complainant is, among others, the owner of the following trademarks (the “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 2001 for the classes 9, 35, 38, 39 and 42;
- The French trademark VOYAGES-SNCF.COM device filed under No. 07 3 475 835 for the classes 9, 16, 35, 39, 41, 42 and 43;
- The International trademark VOYAGES-SNCF.COM device filed under No 958 152 on June 29, 2007 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 trademark SNCF device registered under No. 878 372, on August 23, 2005 for the classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43.
The Trademarks are used in connection with transport and travel agencies services, as well as related goods. The Complainant is also the owner of various domain names including , and . The Complainant also provides travel agency services via a 100% controlled subsidiary which operates the website “www.voyages-”. 5. Parties' Contentions A. Complainant
The Complainant claims that the domain at issue is identical or similar to its trademark VOYAGES-SNCF.COM. The difference between the letters “q” and “a” is irrelevant and does not prevent a risk of confusion with its trademark.
Further, the trademarks of the Complainant are allegedly well known in France and abroad, as several URDP decisions have stated.
Moreover, the Complainant holds several domains including the trademarks at issue, among others since October 14, 1996, since May 16, 2000, since June 23, 2000, since April 13, 2008, and since July 3, 2008.
According to the Complaint, the Respondent has no intellectual property right or other right on SNCF or VOYAGES-SNCF and enjoys no authorization or licence from the Complainant for the use of these marks. The Respondent is not known under the domain name at issue and entertains no relation with the Complainant, nor does it provide services of the Complainant. However, the Respondent offers on its webpage links to competing travel service providers concerning train tickets or trains.
Finally, it is submitted that what the Respondent does is a typical “typosquatting” conduct, as the substitution of one letter “q” for the other one “a” is a way to take advantage of a corresponding mistake of a Internaut while typing the domain name of the Complainant.
For all these reasons the Complainant requests the transfer of the domain name at issue. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complainant requests the Panel to state that the language of the proceeding is French. The Complainant mentions several reasons to this effect. The Respondent has not filed any reply to that request.
However, the language issue being an important question in these proceedings as in all international proceedings, the Panel has to rule on that request and has to examine ex officio whether it is justified. The Panel is not bound by the lack of reply of the Respondent.
In view of the overall circumstances of this case, and noting the Respondent's unwillingness to participate to these proceedings, the Panel is lead to write the decision in English rather than in French, while recognizing the full validity of the prior filings made by the Complainant in that case. The fact that the Respondent is defaulting does not change the outcome of the balance of interests, since the understanding of the decision will be essential for the Respondent in order to decide whether to act at a further stage. B. Identical or Confusingly Similar
The Complainant is the owner of the Trademarks, the key verbal element of which is the term SNCF. The Panel notes that in line with the UDRP precedent, it suffices for the purposes of the first element of the UDRP for the Complainant to demonstrate that it has trademark rights in one jurisdiction. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 1.1 and the cases cited therein.
In this case, the Domain Name differs from the Complainant's trademarks only by the substitution of the third letters of the word, “q” being written instead of “a”. This substitution cannot prevent a finding of confusing similarity between the Trademarks and the Domain Name. See by analogy Société Nationale des Chemins de Fer Français v. Miguel Casajuana, WIPO Case No. D2008-1593 and Red Bull GmbH. v. Grey Design, WIPO Case No. D2001-1035 concerning what is commonly referred to as “typosquatting”. Further, it should be noted that the French computer keyboard (and for example the French keyboard as marketed in Switzerland and Canada) differ in that the letters “q” and “a” are inversed on the left side of the keyboards. In other words, someone used to one of the keyboards may very easily type the domain name instead of . It must be a common mistake for people changing places of access, such as for example French residents coming to Switzerland for a few days or more.
In light of the above, the Panel finds that the Domain Name is confusingly similar to the Complainant's Trademarks. Therefore, the Complainant has established that the condition of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
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 the respondent of the dispute, the 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) the 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) the respondent is making a legitimate noncommercial or fair use of the domain name.
The Complainant asserts and its assertions have not been rebutted that the Respondent has no intellectual property rights or other rights in the domain at issue. It also argues that the Respondent has not been licensed, or otherwise permitted in any way by the Complainant to use the Trademarks, or any other confusingly similar signs. In addition, the Complainant points out that the Respondent's webpage offers links to the Complainant's competitors' websites Such use which diverts Internet users who, via typosquatting, are looking for the Complainant's products / services on the Internet to competing websites for commercial gain is not a legitimate, bona fide use and does not confer legitimate interests in the Domain Name. The Panel also notes that there is no noncommercial or fair use of the Domain Name given that the website contains sponsored links to third parties' commercial websites offering services for train or train tickets that compete with those of the Complainant.
Finally, the Respondent has not been licensed, or permitted by the Complainant to use the Trademarks or any variations therefore including in the Domain Name.
Accordingly, the Panel is satisfied that the Respondent lacks rights or legitimate interests in the Domain Name under the Policy. The Panel thus concludes that the condition of paragraph 4(a)(ii) of the Policy has been established by the Complainant. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 Complainant points to the fact that the webpage of the Respondent is written in French and redirects Internet users to competing sites, as has been already mentioned above. The Panel finds that this use of the widely known trademarks of the Complainant in favour of competing travel agencies or train booking entities is in itself constitutive of bad faith, as it would be considered a case of unfair competition in most legal orders. The record of the case strongly suggests that the Respondent intentionally attempted to attract Internet users to its website through the fame and goodwill of the Trademarks by registering and using the domain name in order to take advantage of typographical errors made by Internet users seeking the Complainant's commercial websites. See Société Nationale des Chemins de Fer Français v. Miguel Casajuana,WIPO Case No. D2008-1593 and Société Nationale des Chemins de Fer Français (SNCF) v. Paco Elmudo,WIPO Case No. D2002-1079. The specificity of the domain name at issue is such that no other reason than to benefit from typographical errors may be thought of for this choice by the Respondent. This is a typical case of “parasitic competition”, infringing on the basic principle that no one can reap where he has not sown, in the present case: benefiting from the widely known SNCF trademark and the VOYAGES-SNCF.COM trademark is profiting from the investment of the French State company for most of the 20th century without any sizeable investment of its own by the Respondent. In view of the circumstances, the Panel is lead to consider that when Respondent chose to register the domain name consisting of a misspelled variation of the Trademarks, it knew and planned that its website would receive Internet traffic due to the use of a misspelled variation of the Trademarks. Its registration thus knowingly traded off the likelihood that consumers will mistakenly infer an affiliation between the Respondent's official websites and the Complainant, diverting customers away from the Complainant's own websites. The Respondent's actions have the potential to disrupt the Complainant's business in a manner that the Respondent could clearly anticipate.
The Respondent's bad faith is further illustrated by the domain name's resolution to a page containing links to websites selling train tickets and train related services that are competing with those offered by the Complainant (or by the Complainant's affiliate company active in the travel business). It is now well-established that such use is evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610; Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857; Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright,WIPO Case No. D2007-0267; Sports Saddle, Inc. v. Johnson Enterprises,WIPO Case No. D2006-0705. Not only does the Respondent's registration divert Internet users to its website based on the goodwill of the Trademarks, but it also threatens to divert actual clients away from the Complainant.
Based on the foregoing, the Panel finds that the Respondent has registered the domain name and is using it in bad faith so that the requirements of paragraph 4(a)(iii) of the Policy are met. 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.
François Dessemontet
Sole Panelist
Dated: August 27, 2009
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