The Complainant is SNCF Mobilités of Saint Denis, France, represented by Cabinet Santarelli, France.
The Respondent is Private Registration of Denver, Colorado, United States of America / Domain Admin of Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2016, the Registrar 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 September 30, 2016 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 October 4, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2016.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 11, 2016. 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 is the registered owner of several trademark registrations consisting of the terms “TGVMAX” or “TGV”, in particular EUTM TGV No. 007305246 (filed on October 10, 2008 and registered on May 14, 2009 amongst others for services in class 39, i.e. “railway transport”, the Complainant’s core business) and EUTM TGVMAX No. 015626641 (filed on July 8, 2016 claiming priority of French application No. 164285304 of July 5, 2016, and registered on November 15, 2016 amongst others for services in class 39, i.e. “rail transport”).
The disputed domain name was registered on July 8, 2016. It results from the Complainant’s documented allegations that the disputed domain name resolves to a so called construction website by the Registrar stating “ is coming soon” which permits users to directly accede the Registrar’s commercial website.
On September 7, 2016 the Complainant sent a cease and desist letter to the Respondent under the contact details as registered at that point in time (i.e. Private Registration) asserting its trademark rights and requesting the Respondent, amongst others, to transfer the disputed domain name to the Complainant. However, it results from the Complainant’s unrebutted allegations that it did not receive any substantial response by the Respondent to this request. 5. Parties’ Contentions A. Complainant
The Complainant claims to enjoy a high reputation being the French state railway company which operates the French passenger’s railway system. In particular it ascertains to continuously operate the French high speed railway network under the denomination TGV since 1978, TGV being nowadays a well-known mark in France and worldwide. Complainant also owns the domain name .
The Complainant ascertains that the disputed domain name is an identical reproduction of its trademarks TGVMAX and TGV, since it totally incorporates said trademarks. Furthermore, the addition of the suffix “.com” is not sufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademarks.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent is not known as “TGVMAX” or “TGV”, nor is affiliated with the Complainant or authorized by the Complainant in any way to use its trademarks TGVMAX or TGV. The Complainant does not carry out any activity for, nor has any business with the Respondent. The website in relation with the disputed domain name is basically inactive since its registration. There is therefore no evidence that the Respondent has used, or has made any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant alleges that the disputed domain name is identical to its well-known trademarks. Therefore, the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark. Moreover, the website under the disputed domain name is inactive since its registration. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) The disputed domain name 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 disputed domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
The Panel is satisfied that the Registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of trademarks TGV and TGVMAX. Reference is made in particular to EUTM registration TGV No. 007305246 (filed on October 10, 2008 and registered on May 14, 2009 amongst others for services in class 39, i.e. “railway transport”) that that predates the creation date of the disputed domain name, which is July 8, 2016. In addition, the Complainant is the registered owner of EUTM registration TGVMAX No. 015626641 (filed with priority of July 5, 2016 amongst others for services in class 39, i.e. “rail transport”, the Complainant’s core business).
Many UDRP Panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceedings where the Complainant’s registered trademarks are fully included in the disputed domain name without any adjunction or deletion.
The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the Complainant’s undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No self-generated content, but just a construction site, is displayed on the website to which the disputed domain name resolves. Such use under the circumstances can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see Sanofi v. kiyuni,WIPO Case No. D2016-1190; Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
Furthermore, the Panel does not find any evidence that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that he has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The Panel notes that Complainant’s TGV mark has been deemed a well-known and highly distinctive mark by previous UDRP Panels (see, e.g., Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1613; Société Nationale des Chemins de Fer Français v. Tang Zhiyan,WIPO Case No. D2008-1659; Société Nationale des Chemins de Fer Français (SNCF) v. Peter Hill,WIPO Case No. DCO2010-0024). This Panel joins the view of these previous Panels. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name included the Complainant’s TGV and TGVMAX trademarks when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed TGV mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
Finally, the disputed domain name resolves to a website without content. In this regard, the Panel notes that this does not preclude a finding of bad faith (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: November 25, 2016
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