The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France, represented by Cabinet Santarelli, France.
The Respondents are Tim Vasbinder of Bradford Woods, Pennsylvania, United States of America and c/o TGVINC.NET of Vancouver, Washington State, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with MyDomain, Inc. d/b/a NamesDirect (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2010. On August 20, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day. 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 August 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2010. The Response was filed with the Center on September 10, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 4, 2010. 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.
When the Complaint was filed the entity identified on the Registrar’s Whois database was c/o TGVINC.NET, the name identified correctly as the lead Respondent in the original Complaint. In the original Complaint the Respondent also named the Registrar as a joint respondent, but provides no reason for having done so and the Panel excludes the Registrar from the named parties to this dispute. However, on the Center seeking registrar verification of the details of the registrant of the Domain Name the Registrar identified Tim Vasbinder and by way of an amendment to the Complaint, the Complainant added Mr Vasbinder as a joint respondent.
It appears to the Panel that Mr Vasbinder has been the underlying registrant of the Domain Name at all material times and for the purposes of this dispute the Panel treats Mr Vasbinder as the Respondent. 4. Factual Background
The Complainant is the well-known French state railway company. “TGV” is the name of a train operated by the Complainant and is also a trade mark which the Complainant uses in relation to its travel services.
The Complainant is the proprietor of various trade mark registrations of or including the “TGV” letters, including CTM No. 007305246 filed on October 10, 2008 and registered on May 14, 2009 in classes 35, 38, 39 and 43 for a wide variety of Internet and travel-related services.
The Domain Name was registered on June 17, 2010. At the date of filing of the Complainant it was connected to a Sedo parking page in the French language featuring links to sites offering services ranging from travel services to education services. The travel category is the first mentioned category on the page and features links to travel service sites, some of which compete with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to a trade mark or service mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Response is short and reads as follows:
“I am submitting a short response to the complaint that was filed with the WIPO Arbitration and Mediation Center (Case no. D2010-1402). I purchased the domain (through Mydomain. com) to use as the domain for my company website in June 2010. My company name is T.G. Vasbinder, Inc. and is a registered business in the state of Pennsylvania, USA. T.G. Vasbinder, Inc. is a small forensic photography and videography consulting business that is over thirteen years old. I purchased the domain only because it was available and is a short abbreviation of my registered company name. I can understand some of the concerns of the complainant but I believe that there would be no issues if the complainant had initially purchased all of the domains that were available to tgvinc. As of today the following domains are still available to purchase (as per the M website). “; ; ; ; I did nothing wrong by purchasing the available domain. I have invested money to design my website and other business material. If WIPO rules in favor of the complainant it will be necessary for me to change all of my business material thus incurring additional costs.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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. B. Identical or Confusingly Similar
The Domain Name comprises the initials “TGV” and the abbreviation “Inc” together with the generic “net” domain suffix.
In assessing identity and confusing similarity for this purpose, it is permissible for the panel to ignore the generic domain suffix. Thus, the Panel is left to compare the Complainant’s trade mark “TGV” with the second level of the Domain Name, “tgvinc”.
The Panel is satisfied that Internet users in sufficient numbers will recognize the Domain Name as being a combination of “TVG” and “Inc” and will see the Domain Name as being a domain name of the Complainant or a corporate entity closely associated with the Complainant.
The Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and, pointing to the manner in which the Domain Name has been used (i.e., to connect to a French language website featuring links to inter alia travel services websites offering competing services to those offered by the Complainant), contends that the Respondent, far from having any rights or legitimate interests in respect of the Domain Name, registered the Domain Name with the intention of deriving Pay-Per-Click revenue from the parking page.
The Respondent denies the Complainant’s contention and asserts that he is a photographer in Pennsylvania operating through his company, T. G. Vasbinder Inc., the Domain Name, being in part an acronym for his company name. He says that he has invested money to design his website and that if the Panel orders transfer of the Domain Name, all that investment will be thrown away.
If the Respondent’s story is correct, the Respondent potentially has a complete defence to the Complaint pursuant to paragraph 4(c)(i) of the Policy which reads as follows:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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;”
Why is it that the Respondent is required to demonstrate anything if, as indicated above, it is incumbent upon the Complainant to prove all the elements of paragraph 4(a) of the Policy? The answer to that question is to be found in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. This reads:
Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
With all that in mind, the Panel first has to decide whether the Complainant has made out a prima facie case. In the view of the Panel the Complainant has done so. The fact that the Domain Name was linked to a French language website is a major factor to weigh in the balance given that it is in France that the Complainant’s TGV services are mainly provided.
The Respondent’s response contains no explanation for the link to the French language website and asks the Panel to accept that (a) the Respondent is a photographer who has been trading under the name T.G. Vasbinder Inc. for 13 years and (b) the Respondent has been investing money in the design of his website. What evidence does the Respondent produce to support these claims? None, they are bare assertions.
In the absence of any proper answer to the Complainant’s prima facie case the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Panel has already found that the Domain Name is confusingly similar to the Complainant’s service mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name. On top of that the Complainant has clearly set out the basis of its bad faith claim, namely the French language parking page to which the Domain Name has been connected and which is referred to above, yet the Respondent evidently did not see the need to give any explanation for that connection. Nor does the Respondent deny the allegation that he has been earning Pay-Per-Click revenue through that connection.
The weight of the evidence is heavily against the Respondent.
On the preponderance of the evidence before him the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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.
Tony Willoughby
Sole Panelist
Dated: October 5, 2010
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