The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Elitebase of Hong Kong, SAR of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the disputed domain names. On December 15, 2010,
GoD, Inc. 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”).
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 December 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2011. The Respondent did not submit any Response. The Respondent by email of December 18, 2010 agreed to release the domain names. Consequently, by e-mail of December 21, 2011, the Center proposed a suspension to both parties, which was declined by the Complainant on the same day. Accordingly, the Center notified the Respondent’s default on January 10, 2011.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 20, 2011. 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 in this administrative proceeding is Société Nationale des Chemins de Fer Français, SNCF, the French State railway company which operates all of France’s passengers railway system. The Complainant is usually known as SNCF and, because it is the only railway company in France and operates the well-known TGV high speed train, is widely recognized in Europe and around the world as an entity engaged in the transportation and travel business. The Complainant’s online services are offered through a portal website under the domain name .
The Complainant employs more than 180,000 people in 120 countries across the globe. The rail network consists of about 32,000 km of route, among which 1,800 km are high-speed lines and 14,500 km electrified. About 14,000 trains are operated daily.
The company name SNCF has been registered in the French commercial register since 1955 and its acronym has been in use since 1937.
Among the trademarks owned by the Complainant (hereinafter referred to as the “trademark SNCF”), there are:
The French trademark SNCF registered under No 05 3 344 303, on March 2, 2005 designating goods and services in international classes 12, 16, 18, 25, 28, 39, 41 and 43;
The French trademark SNCF registered under No 08 3 594 312, on August 14, 2008 designating goods and services in international classes 9, 16, 18, 24, 35, 36, 38 and 39.
The International registration SNCF registered under No 878 372, on August 23, 2005, designating goods and services in international classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43.
The International registration SNCF registered under No 1001673, on September 10, 2008, designating goods and services in international classes 09, 16, 18, 24, 35, 36, 38, 39, 42.
Complainant is the registrant of numerous domain names including SNCF alone or in combination (around 800), for instance , , , .
The disputed domain names resolve to parking websites, in French language, providing links to third party websites relating to travels. The following mention appears within the contested websites: “Want to buy this domain? Our domain buy service can help to get it”.
Respondent has offered the contested domain names to the Complainant for sale at the price of 1500 USD each, further to the cease and desist letter sent by the Complainant.
Lorraine Clavier is in charge of this matter on behalf of Claimant´s representative Santarelli. 5. Parties’ Contentions A. Complainant
Complainant contents the facts described in section 4 hereof. From such facts Complainant alleges that
Complainant has valid registered trademarks for the word SNCF. The trademark SNCF is used in connection with transport services and travel agencies services, as well as related goods;
the contested domain names reproduce in their entirety the trademark of the Complainant SNCF and that as held in previous UDRP decisions, when a domain name wholly incorporates a Complainant’s registered trademark, such as in the present case, this fact is sufficient to establish confusing similarity;
the mere addition of the words “billet pas cher” or ”billets de train” is insufficient to avoid confusion with the Complainant’s trademark particularly since the whole of the trademark’s Complainant SNCF is incorporated in the domain names in dispute; that those terms “billet pas cher” and ”billets de train” are widely used in the travel field and therefore serve a purely descriptive function; that these minor variations do not dispel confusion, but rather accentuate the unauthorized connection with the Complainant;
Complainant's trademark SNCF is well known in France and abroad
Respondent has not been licensed, or otherwise authorised by the Complainant in any way to use the trademark SNCF, or any other confusing signs, or to register any domain name incorporating the trademark SNCF, or any other confusing signs, nor has the Complainant acquiesced in any way to such use or registration of the sign “sncf” by the Respondent;
Respondent, at least to the knowledge of the Complainant, has neither rights on the contested domain names, nor interests to these domain names;
the disputed domain names resolve to third party websites and that as held in other UDRP cases, the use of the disputed domain names to direct visitors to various third party commercial websites does not constitute a legitimate, bona fide use of the domain names under the Policy and does not confer legitimate interests in the domain names;
the websites to which the disputed domain names resolve are written in French and contain words and expressions in French relating to the Complainant’s core business; that they therefore target a French speaking audience and that French internet users are therefore likely to get the idea that the Respondent’s websites are official websites of the Complainant, sponsored by the Complainant or affiliated with the Complainant;
the websites to which the disputed domain names resolve contain links to travel websites that are displayed within the websites, terms such as “horaires des trains” (“train timetables” in English), “billet de train” (“train ticket” in English), “billets avions” (“air plane tickets” in English), which correspond to the core business of the Complainant.
Respondent has offered the contested domain names to the Complainant for sale at the price of 1500 USD each, further to the cease and desist letter sent by the Complainant;
the offer: “Want to buy this domain? Our domain buy service can help to get it.” proves that the Respondent registered the domain names primarily for the purpose of selling them for valuable consideration in excess of documented out-of-pocket costs, within the meaning of paragraph 4.b (i) of the Policy and supports a finding of bad faith use;
Respondent offers the litigious domain names for sale alternatively to the Complainant and to other travel companies as well (for instance the French company Karavel) and that Respondent is therefore using blackmail and puts pressure on the Complainant to purchase the domain names; that these facts prove that the Respondent, by referring to other travel companies, is aware that the Complainant’s trademark SNCF has been reproduced within the contested domain names and is also aware of the value of said domain names;
Respondent was aware of the existence of the Complainant’s trademark SNCF because said trademark is a well-known registered trademark as evidenced above and that several decisions have already considered that the registration of a domain name containing / including a well-known trademark constitutes proof of the bad faith of the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. In its email of December 18, 2010 the Respondent agreed to release the domain names in dispute “to Lorraine Clavier”. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See e.g. Sanofi-aventis v. Igor Peklov,WIPO Case No. D2008-1419 including references to numerous previous cases).
The disputed domain names as key word wholly incorporate the distinctive and well-known key verbal element SNCF of Complainant's well-known trademarks. The fact that the words “billets …. pas cher” and “billets de train” respectively are added to the key word of Complainant's trademarks does not eliminate the confusing similarity between Complainant's trademark and the disputed domain names, as the French words “billets …. pas cher” and “billets de train” respectively “ are purely descriptive components of the disputed domain names. This applies the more since Complainant is a French entity with its core business in France. Accordingly, many French speaking internet users will use the words “billets …. pas cher” and “billets de train” when looking for travel tickets. In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks. This also applies in case (only) the key word of complainant´s trademarks is incorporated; at least in cases like here where the trademarks are dominated by the (well-known) keyword and besides that only show a graphic element of minor distinctiveness.
It is also well established that the specific top level of a domain name such as “.com”, “.org”, or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar
The Panel thus finds that the disputed domain names are confusingly similar to the trademarks in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Respondent has not been licensed, or otherwise authorised by the Complainant in any way to use the or to register any domain name incorporating the keyword SNCF of Complainant or any other confusing signs, nor has the Complainant acquiesced in any way to such use or registration of any domain name incorporating the keyword SNCF by the Respondent. The Panel, in particular because Respondent did not contest such allegation, has no reason to doubt such (negative) allegations by Claimant.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name and that Complainant has established the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent has offered the contested domain names to the Complainant for sale at the price of 1500 USD each, further to the cease and desist letter sent by the Complainant. This and the offer on the resolved website: “Want to buy this domain? Our domain buy service can help to get it.” prove that the Respondent registered the domain names for the purpose of selling them for valuable consideration in excess of documented out-of-pocket costs, within the meaning of §4.b (i) of the Policy and supports a finding of bad faith use; Respondent explicitly stated (Annex 7) that it never intended to use the domains for itself and threatens Complainant (ibidem) by saying that in case Complainant does not purchase the domains they would be sold to other travel companies.
The disputed domain names resolve to third party websites. The use of the disputed domain names to direct visitors to various third party commercial websites does not constitute a legitimate, bona fide use of the domain names under the Policy and does not confer legitimate interests in the domain names. The websites to which the disputed domain names resolve are written in French and contain words and expressions in French relating to Complainant’s core business; that they therefore target a French speaking audience and that French internet users are therefore likely to get the idea that the Respondent’s websites are endorsed or sponsored by Complainant.
There is no doubt that the sign SNCF and the trademarks are well-known, particularly in France and the neighbouring countries. The Panel finds that Respondent on purpose included the keyword of Complainant´s trademarks into the disputed domains in order to attract, for commercial use, Internet users to its websites or the websites the domains resolve to. This is highlighted by the near-identity of the disputed domain names with domain names of Complainant.
Respondent did not demonstrate any of the rights or legitimate interests to the domain names in the meaning of paragraph 4(c) of the Policy. Panel therefore finds that Complainant has established the requirement 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 names and be transferred to the Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Dated: January 31, 2011
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