The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France represented by Santarelli, France.
The Respondent is Moniker Privacy Services of Florida, United States of America / 3597435 Domain Administrator of Hong Kong, SAR of China / Port Media Sales represented by ESQ PC, United States of America. 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 March 22, 2011. On March 23, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 23, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended the Complaint on March 25, 2011. 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 March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. The alleged Response was filed with the Center on April 17, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on May 3, 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.
On May 11, 2011, after reviewing the case file, the Panel advised the Center pursuant to paragraph 12 of the Rules that he required further submission from the alleged Respondent within 5 working days. No submissions were received by the Panelist from the Respondent by the due date, as advised by the Center.
The Panel notes that the Registrar sent an email communication on May 11, 2011 regarding the Respondent’s identity. 4. Factual Background
The Complainant, Société Nationale des Chemins de Fer Français, is France's national state-owned railway company, also known as SNCF. SNCF operates the country's national rail services, including the TGV, France's high-speed rail network. The Complainant is widely recognized in Europe and around the world for its rail services for passengers and freight.
The Complainant is the owner of the following French and international trademark registrations:
SNCF French National Registration N° 083594312 for goods and services in classes 9, 16, 18, 24, 35, 36, 38 and 39.
SNCF International registration N° 878372 for goods and services in classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43.
TGV French National Registration N° 003049936 for products in class 12 and services in class 39.
TGV Community Trademark N° 007305246 for services in class 35, 38, 39 and 43.
The Complainant is also the owner of a series of domain names which incorporate the trademarks SNCF or TGV such as , , , , , among others. The Complainant’s online services are offered through a portal website under the domain names and .
The Respondent registered the disputed domain name on May 4, 2005.
On April 17, 2011, a response was submitted by Portmedia Inc., represented by Ari Goldberger Esq., of ESQ Law Firm, claiming to be the owner of the disputed domain name and stipulating that the Panel may transfer the disputed domain name to Complainant.
On April 18, 2011, a further submission is received by the Center signed by a Mr. Michael Goetz of Portmedia Inc., declaring that he is the manager of PortMedia Inc. registrant of the disputed domain name in dispute.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules. 5. Discussion and Findings Procedural Matters
Firstly, the Panel considers relevant to analyze the identity of the Respondent.
Initial WhoIs domain name search enquiries named as Respondent Moniker Privacy Services with contact details apparently corresponding to those of the registrar, Moniker Online Services LLC. The Registrar, in response to the Center’s verification request, subsequently provided the registrant name of “Registrant [20758]: Domain Administrator”.
Now such scenarios raise important issues, such as if both the initially listed registrant and the subsequently disclosed registrant should be treated both as respondents or not. To date previous panels in similar cases have treated both disclosed registrants as respondents, and this Panel has proceeded on this basis and will for convenience refer to a single Respondent.
The Panel is satisfied that the dispute resolution service provider, namely the Center, by sending communications to both the original and subsequent addresses and contacts made available through the registrar, exercised extreme care and at the least fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent. The Panel can only conclude that the Respondent was correctly notified of the Complaint and timeframe provided to submit a response.
On April 17, 2011, the Center received a response from a Mr. Ari Goldberger as authorized representative of Mr. Michael Goetz of Portmedia Inc. The Response stated the following: “Respondent denies that it registered the disputed domain name (the “Disputed Domain”) in bad faith. Respondent registered this Disputed Domain when it was deleted and expired and became available for registration. Declaration of Michael Goetz, annexed hereto as Exhibit 1 (hereinafter “Goetz Dec.”). Respondent had no knowledge of Complainant or its trademark when it registered the Disputed Domain, did not register the Disputed Domain with Complainant’s trademark in mind, and never intended to target or profit from Complainant’s trademark. Nevertheless, in the interest of saving the cost involved in defending its rights to the Disputed Domains, Respondent stipulates for the Panel to transfer the Disputed Domains to Complainant.”
Furthermore, certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument.
Annexed as Exhibit 1 is a Declaration made by Michael Goetz declaring to be true and proffered under penalty of law for making false statements that he is the manager of Portmedia Inc registrant of the domain name
Consequently, the Panel is faced on the one hand with the information provided by the Registrar on March 23, 2011 and on May 11, 2011 regarding the identity of the Respondent and on the other hand with a Response sent by PortMedia Inc. alleging to be the true owner of the domain name.
Therefore, on May 11, 2011, the Panel, pursuant to paragraph 12 of the Rules requested further submission from PortMedia Inc so that it could prove ownership of the domain name since from the material submitted there is no evidence that Portmedia Inc or Michael Goetz is the true owner of the disputed domain name. No further submission was received by the Center from the Respondent.
However, the Panel notes that on May 11, 2011, the Registrar confirmed that “this domain name is owned by Port Media Sales”.
In view of the above, the Panel is faced with the dilemma to consider admissible, valid and legitimate the response provided by PortMedia Inc. as Respondent or to consider as Respondent Moniker Privacy Services /3597435 Domain Administrator.
The definition of Respondent in the Rules “means the holder of a domain name registration against which a Complaint is initiated”. The Rules seem to contemplate only the holder of the registration as the respondent.
The practice of naming both the Proxy Service and the beneficial owner of the registration has been followed in many WIPO decisions such as Midwest/GRS Inc. GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services/Forum LLC/Registrant 187640 info@,WIPO Case No. D2006-0478 and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC,WIPO Case No. D2006-0550; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum WIPO Case No. D2006-0881 and WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks,WIPO Case No. Case No. D2006-0975.
However in this particular case, when the Registrant information was finally disclosed, the information provided by the Registrar was that of a 3597435 Domain Administrator. The Registrar confirmed that PortMedia Sales “owned the disputed domain name”.
In view of all the above this Panel considers as parties Société Nationale des Chemins de Fer Français, SNCF v. Moniker Privacy Services / 3597435 Domain Administrator / Port Media Sales and will now proceed to analyze whether the evidence submitted by Complainant satisfies the three elements of the Policy. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 names in question; and
(iii) the domain name has been registered and is being used in bad faith. A Identical or Confusingly Similar.
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
1 The Panel finds that the Complainant has established that it is the owner of the registered trademarks SNCF and TGV based on the evidence provided by the Complainant (annex 5 of the Complaint).
2 The disputed domain name consists precisely of the combination of two of Complainant’s registered trademarks. The juxtaposition of these words in the domain name is a clear reference to the Complainant’s trademarks.
The Panel therefore finds that the disputed domain name is identical and confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant. Paragraph 4(c) of the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the burden of production shifts to the Respondent to prove the contrary.
The Complainant has stated that the disputed domain name features the Complainants trademark.
The Complainant further adds that the domain name is currently connected to a website which resolves to links that contain travel information, train schedules, reservations, train travel prices and train stations in France among other links. The Complainant asserts that the Respondent has never been commonly known by the domain name. The Complainant finally claims that the Respondent has no rights or legitimate interest in the domain name. There is no connection between the Respondent and the Complainant.
Furthermore, the Complainant asserts that no license or authorization of any kind has been given to the Respondent to use either trademark. The Respondent is not an authorized dealer of Complainant’s services and has never had a business relationship with the Complainant.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the domain name.
In the absence of a Response to the Complainant’s allegations this Administrative Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain name. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is a name composed of two acronyms, “SNCF” and “TGV”. Both acronyms are registered trademarks owned by the Complainant; it is difficult to believe that this is a mere coincidence, therefore one can reasonably conclude that the Respondent had knowledge of the existence of these trademarks and that they pertained to a family of trademarks owned by the Complainant, demonstrating bad faith registration.
Notwithstanding the above, if the Respondent did not have knowledge of such registered trademarks, though one can reasonably infer the contrary, it was known to him since the day the Complainant’s counsel contacted the Respondent and informed him of Complainant’s prior rights. Therefore all use after such notification suggests use of the domain name in bad faith especially considering the contents, of the webpage, which refers to comparable services to those protected under the trademarks SNCF and TGV. In other words it features Train Travel information. This is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s marks and wanted to refer to the Complainant.
Moreover, the Complainant sent a cease and desist letter to the Complainant requesting the transfer of the domain name and the cease of use of the trademarks on the website. However, to date the Respondent has not removed such mentions and remains using the trademarks of the Complainant, in circumstances in which the Complainant has clearly stated that they have never given the Respondent a license to use such trademarks nor any other type of written authorization.
In addition, the Panel accessed the Respondent’s website and noted that the webpage offers links to other European trains such as Eurorail, Eurostar and Swiss Train system.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Therefore, in accordance with paragraph 4(b)(iii) of the Policy, the above findings lead to the conclusion that the disputed domain name in has been registered and used in bad faith. 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.
Rodrigo Velasco Santelices
Sole Panelist
Dated: May 27, 2011
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