The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France, represented by Cabinet Santarelli, France.
The Respondents are Domains by Proxy, Inc. of Arizona, United States of America and LeaseD of Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2011. On August 24, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, GoD, Inc. 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 August 29, 2011 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 August 31, 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 September 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2011. The Respondent did not submit any timely substantive response. Accordingly, the Center notified the Respondent’s default on September 23, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 7, 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 October 7, 2011, correspondence was received from the Respondent, but it was not intended to be received as a formal response, and it did not contain any facts or argument which could be considered in this decision. 4. Factual Background
The Complainant is the French national railway company which operates all of France’s passenger railway system. The Complainant has operated this railway system under the acronym SNCF since 1937. The Complainant registered the company name SNCF in the French Commercial Register in 1955. The Complainant employs more than 241,000 people in 120 countries across Europe, and generated profits of approximately 17,8 billion Euros in 2009. The Complainant’s rail network consists of about 32,000 km of route, and operates about 14,000 trains daily. Approximately 1 billion passengers are annually transported on the Complainant’s passenger railway system.
The Complainant owns several trademark registrations for SNCF as follows:
French Trademark Registration No. 05 3 344 303 dated March 2, 2005;
French Trademark Registration No. 08 3 594 312 dated August 14, 2008;
International Trademark Registration No. 878 372 dated August 23, 2005;
International Trademark Registration No. 1001673 dated September 10, 2008;
The Complainant owns the domain name and operates a website in association with that domain name that provides transportation and travel information and services.
The Respondent registered the disputed domain name on April 21, 2011, and at the time the Complaint was filed, the disputed domain name reverted to a website that provided links to third party websites that offered transportation and travel services. 5. Parties’ Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s SNCF trademarks, including French Trademark Registration Nos. 05 3 344 303 and 08 3 594 312 and International Trademark Registration Nos. 878 372 and 1001673.
The Complainant contends that the disputed domain name is essentially identical to the trademark SNCF, except for the addition of the common French phrase “ras le bol” which translated into English means “sick of it” or “fed up”. The Complainant contends that the addition of a common phrase, which is critical or derogatory in nature, does not distinguish the disputed domain name from the Complainant’s registered trademark. Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and that the Respondent has no rights in the trademark SNCF either at common law or by way of registration anywhere in the world. The Complainant also submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted the Respondent to register a domain name incorporating its trademark. The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, or making any bona fide offering of goods and/or services. (c) Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent must have been aware of the Complainant’s rights in the SNCF trademark; (ii) the Respondent has registered and is using the disputed domain name which incorporates the Complainant’s trademark in combination with a common critical or derogatory phrase, which does not then revert to a commentary website, but rather reverts Internet users to third party websites offering identical and competitive services of the Complainant’s, thereby denigrating the goodwill and reputation of the Complainant’s registered trademark; (iii) the Respondent is using confusingly similar domain names in connection with click-through sites for the purposes of monetary gain; and (iv) the Respondent is using a confusingly similar domain name with the intention of diverting Internet users to the Respondent’s website and thereby interfering with the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Panel notes that the Respondent submitted two informal communications on August 29 and 31, 2011 asking the Registrar to transfer the disputed domain name to the Complainant. The Respondent submitted two similar informal emails on October 7 and October 9, 2011. As previously stated, it did not contain any facts or arguments which could be considered in this decision. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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 Panel finds that the Complainant does have trademark rights in the mark SNCF by virtue of French Trademark Registration Nos. 05 3 344 303 and 08 3 594 312 and International Trademark Registration Nos. 878 372 and 1001673.
The Panel further finds that the domain name is confusingly similar to the Complainant’s registered trademark SNCF. The addition of a common derogatory or phrase such as “ras le bol” does not serve to distinguish the disputed domain name from the Complainant’s trademark, especially when the disputed domain name is not used in association with a commentary or non-commercial website.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any substantive response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its SNCF trademark and its transportation and travel services have developed a significant reputation in France, and internationally.
The Panel finds no evidence that the Respondent is commonly known by the name SNCF, or that the Respondent was licensed or authorized by the Complainant to use the trademark SNCF, or has any other form of legitimate interest in the SNCF name.
Further, the Respondent is not using the disputed domain name in association with a bona fide offering of goods or services, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name..
The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
The Panel, upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any substantive response contesting the facts contained therein, finds that the Respondent registered and has used the disputed domain name in bad faith.
The Panel is prepared to infer that the Respondent was aware of the Complainant’s trademark rights when the Respondent registered a confusingly similar domain name, and when it began operating a website in connection with that disputed domain name which provides links to other websites operated by direct competitors of the Complainant. The Panel is led to this conclusion by the fact that SNCF is an acronym and has no meaning in the English or French language, other than to denote the Complainant. The Panel finds that the addition of a common derogatory phrase to the Complainant’s trademark does not provide evidence of good faith, because the Respondent is not actually using the disputed domain name in association with a non-commercial or commentary site. The Respondent’s use of the disputed domain name is commercial in nature and therefore, the Panel is prepared to find that the Respondent has registered and is using the disputed domain name in bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(c) of the Policy. 7. Decision
For 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.
Christopher J. Pibus
Sole Panelist
Dated: October 12, 2011
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