The Complainant is Société Nationale des Chemins de Fer Français SNCF of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Direct Privacy ID E2D4A of Metairie, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with DirectNIC, LTD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 9, 2012, the Center transmitted by email to DirectNIC, LTD a request for registrar verification in connection with the disputed domain name. On February 9, 2012, DirectNIC, LTD 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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.
The Center appointed Isabel Davies as the sole panelist in this matter on March 9, 2012. 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 contends that it has registered SNCF as an International Trademark, Registration No. 878372 designating classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43, registered on August 23, 2005, and International Trademark, Registration No. 1001673 designating classes 9, 16, 18, 24, 35, 36, 38, 39 and 42, on September 10, 2008. Further it contends that it has registered SNCF as a French Trademark, Registration No. 53344303 designating classes 12, 16, 18, 25, 28, 39, 41 and 43 registered on March 2, 2005 and a French Trademark, Registration No. 83594312 designating classes 9, 16, 18, 24, 35, 36, 38 and 39, on August 14, 2008. The Complainant contends that it has used the trademark SNCF in connection with transport services and travel agencies services as well as related goods.
The Respondent registered the disputed domain name on June 13, 2005.
The Complainant contends that it sent a cease and desist letter to the Respondent on December 2, 2011.
The Complainant contends that the domain name presently resolves to a parking website in French language, providing links to third party websites mainly relating to travel advertisements. 5. Parties’ Contentions A. Complainant (i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark
The Complainant contends that it is a French State railway company and is internationally recognized. It contends that it operates the country’s national rail services and the company SNCF is widely recognized in Europe and around the world as an entity involved in transportation and travel business. It contends that in 2010 its turnover was € 30.5 billion.
It contends that it has valid registered trademarks for the word “sncf” in connection with transport services and travel agencies and related goods.
The Complainant contends that the disputed domain name reproduces in its entirety the trademark SNCF and that when a domain name wholly incorporates a complainant’s registered trademark this fact is sufficient to establish confusing similarity.
It contends that although the word “horaires” is in the first position in the disputed domain name, the word “sncf” is the most distinctive element since the descriptive term “horaires” (which means “schedules” in English) only qualifies the trademark SNCF: it gives a precision on the expected content of the website associated to the disputed domain name by Internet users. It contends that this descriptive word does not serve to differentiate the Respondent’s website from the Complainant’s trademark, especially as it represents a service rendered by the Complainant. It further contends that the word “horaires” is directly linked with the activity field of the Complainant. It contends that use of the word “horaires” in the disputed domain name increases the confusing similarity with the Complainant’s trademark.
The Complainant contends that the addition of the generic top-level domain “.com” does not prevent likelihood of confusion since it is necessary for the registration of the domain name itself.
Further, the Complainant contends that Internet users when looking for schedules of the trains tend to look for SNCF schedules and type in their search engine “horaires SNCF”. It contends that Internet users will be redirected to the disputed domain name instead of having access to the domain name owned by the Complainant.
The Complainant contends that given the fame of the trademark SNCF, the disputed domain name is bound to create a likelihood of confusion as to the origin and the possible affiliation of the disputed domain name to the Complainant. (ii) The Respondent has no rights or legitimate interests in the disputed domain name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
a. The Respondent was certainly aware of the existence of the Complainant’s trademarks when it registered the disputed domain name as SNCF is an important trade mark and a famous company.
b. SNCF is not a generic term but the acronym corresponding to the well-known company Societe Nationale des Chemins de fer Francais.
c. The disputed domain name has not been authorized by the Complainant.
d. The Respondent did not respond to the cease and desist letter from the Complainant providing evidence of a legitimate registration.
e. By diverting traffic to third party websites and by using paid link advertisements, the Respondent is using the Complainant’s trademark for its own commercial purposes; this use therefore demonstrates the Respondent’s lack of legitimate noncommercial interest or fair use of the disputed domain name. (iii) Registered and used in bad faith
The Complainant contends that SNCF does not refer to any common word and therefore it cannot imagine that the Respondent has registered the disputed domain name by chance or coincidence.
The Complainant contends that the disputed domain name resolves to a parking website in French language that provides links to third party websites, mainly relating to travel. It contends that the website to which the disputed domain name resolves contains links to travel websites and that links including “tariff billets de train” and “horaires des trains” correspond to the core business of the Complainant and could let Internet users believe that the website is either maintained by the Complainant or by a third party which is linked with the Complainant.
The Complainant contends that by referring to SNCF within the website, it is very unlikely that the Respondent registered the disputed domain name randomly and this registration was made to attract people looking at for the Complainant’s services in the travel area diverting them to websites that market goods and services offered by the Complainant’s competitors. The Complainant contends that this is evidence of bad faith.
The Complainant contends that the Respondent was more likely to be aware of the existence of the Complainant’s trademark SNCF because the said trademark is well known.
Further it contends that the Respondent presumably makes a financial gain every time Internet users click on a sponsored link on the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(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 disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. The Complainant bears the onus of production of evidence of its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of the trademark rights in SNCF in connection with transport services and travel agencies services as well as related goods and that, as a result of the Complainant’s extensive use, a significant degree of goodwill has been built up in the SNCF mark.
The Complainant submits that the disputed domain name, , is confusingly similar to the Complainant's SNCF trademark.
The generic top-level domain “.com” cannot be taken into consideration when assessing confusing similarity. (Foundation LeCorbusier v. Mercado M.,WIPO Case No. D2004-0723).
Numerous panels have held that the incorporation of a complainant’s trademark in a disputed domain name can be strong evidence of confusing similarity between the disputed domain name and the complainant’s trademark (see Nokia Group v M. Giannattasio Mario, WIPO Case No. D2002-0782). It was decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S.Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for the purposes of the Policy”.
The Panel finds that the addition of the French word “horaires”, which is a generic term, does not add a distinctive element to the disputed domain name and does not render it dissimilar to the trademark of the Complainant.
Moreover, the Panel finds that such an addition increases the likelihood of confusion between the disputed domain name and the Complainant's trademark, because SNCF is a well-known trademark for the French national rail services and “horaires” means time-schedule. Therefore, the addition of the term “horaires” to the Complainant’s trademark just strengthens the connection.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark SNCF in which the Complainant has rights. The addition of the “horaires” element is not sufficient to preclude a finding of confusing similarity with the Complainant's registered trademark.
The Panel finds that the Complainant has met the requirements of paragraph 4(a(i)) of the Policy. B. Rights or Legitimate Interests
Paragraphs 4(c)(i)-(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes inter alia: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark SNCF, nor has the Respondent been authorized to register and use the disputed domain name.
The Complainant contends that the Respondent was aware of the Complainant’s trademarks when it registered the disputed domain name.
The Respondent has not filed any response in this case. Further, the Complainant contends that the Respondent has not responded to a cease and desist letter dated December 2, 2011. The Complainant contends that the disputed domain name is being used to divert traffic to third party websites and for paid link advertisements, for its own commercial purposes. This use therefore demonstrates the Respondent’s lack of legitimate noncommercial interest or fair use of the disputed domain name.
The Panel considers that the Complainant has made a prima facie case of the Respondent's lack of rights to or legitimate interests in the disputed domain name. The Panel notes that the Respondent has elected not to answer this charge by failing to provide a Response or responded to the cease and desist letter dated December 2, 2011 and has not provided evidence of any of the circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the disputed domain name. C. Registered and Used in Bad Faith
The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. These circumstances include the situation where a respondent uses the disputed domain name intentionally to attempt 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 its website and where a domain name is registered primarily for the purpose of disrupting the business of a competitor.
The Panel notes that the Complainant is a well-known French government body and the Panel finds it unlikely that the Respondent was not aware of the existence of the SNCF mark owned and used by the Complainant at the time when it registered the disputed domain name in 2005. Previous panel decisions have stated that “only someone who was familiar with the Complainant's mark and its activity would have registered the disputed domain name inclusive of such mark” (see Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd.,WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A,WIPO Case No. D2004-0131 and Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487).
The website associated with the disputed domain name does not link to any of the Complainant’s websites or allow Internet users to purchase the Complainant’s services despite the disputed domain name being, in the Panel’s view, confusingly similar to the Complainant’s SNCF trademark. Instead it contains links to third party websites offering competing travel services. It is possible that the Respondent is profiting from pay-per-click revenue from the owners of the websites advertised. In this Panel’s view, this will disrupt the Complainant’s business. This indicates that the Respondent is seeking to trade on the goodwill in the SNCF mark and use the likely confusion with SNCF trademark to divert business away from the Complainant whilst attracting Internet users to the Respondent’s website instead for commercial gain. This suggests that registration of the disputed domain name was done in bad faith. (see Société Air France v. Patrick Ory ,WIPO Case No. D2003-0628). Although the Complainant contends that the website associated with the disputed domain name is in French, the Panel can see that the website has both French and English. This may attract a wider range of Internet users to the website.
The Panel considers that Internet users typing in the disputed domain name might click on one of the links on the Respondent’s site without realising that the website is unconnected with the Complainant. Even users who appreciate that the website is not one of the Complainant’s websites might still be tempted to click on a sponsored link allowing the Respondent potentially to profit from their confusion and generate revenue. In this Panel’s view, such use of the disputed domain name is clearly in bad faith.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Isabel Davies
Sole Panelist
Dated: March 21, 2012
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