The Complainant is RAILTEAM B.V., the Netherlands, represented by Scan Avocats AARPI, France.
The Respondent is 1&1 Internet Limited, United Kingdom (“UK”) / George Staines, UK. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, 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 November 26, 2020, 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 November 27, 2021. 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 November 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2020. The Center received email communications from the Respondent on November 30, 2020 and December 15, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on January 20, 2021. 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 a Dutch company founded by eight European railway operators (Deutsche Bahn, SNCF, ÖBB, Eurostar, SBB, SNCB, NS International, and Thalys), whose goal is to promote seamless travel by high-speed rail throughout Europe, in developing a joint network that connects the European metropoles to one another. Founded in July 2007, the RAILTEAM ALLIANCE brings together the Eurostar train linking Paris, Brussels, and London, the TGV, and the state-of-the-art ICE trains. The Complainant’s 6000 km high-speed rail network is the most extensive in the world and includes a cluster of international train stations operating as hubs through which over 25 million people traveled even in 2010. The Complainant is the owner of several trademark registrations for RAILTEAM, including the following, as per trademark certificates submitted as annexes to the Complaint: - French trademark registration No. 3374388 for RAILTEAM (word mark), filed on August 5, 2005, published on September 9, 2005, in international classes 16, 35, and 39; The Complainant is also the owner, amongst others, of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant claims that the Respondent is not commonly known by the name “Railteam”, nor has it ever filed any trademark registrations in that name. Furthermore, the Complainant highlights that it has in no way authorized the Respondent or any third party to register or use its trademark RAILTEAM. The Complainant also contends that the Respondent is in no way affiliated or related to its business and does not carry out any activity for the Complainant, nor has he ever been licensed, contracted or otherwise permitted by the Complainant to use the trademark RAILTEAM or register any domain name incorporating its registered trademark RAILTEAM. With reference to the circumstances evidencing bad faith, the Complainant indicates that the selection of the term RAILTEAM cannot have been made accidentally by the Respondent and that the Respondent was probably well aware of the Complainant’s trademark at the time of registering the disputed domain name especially considering the trademark was registered originally in 2007 and has been used in commerce since 2005, many years before the disputed domain name was registered. The Complainant emphasizes that a Google (or similar) online search would have undoubtedly demonstrated that all the results would have led to the Complainant’s websites and business, thus the Complainant contends that it was highly unlikely that the Respondent’s choice to register a domain name similar to the Complainant’s mark was purely coincidental. The Complainant also states that, since 25 per cent of the Complainant is owned by the French company SNCF, French is one of the official languages of the Complainant and that, the circumstance that the disputed domain name resolved to a parking page with links in French language whilst the Respondent is a British citizen, shows that the French public was targeted. The Complainant thus contends that the Respondent registered the disputed domain name in bad faith as its aim was purely for commercial gain. B. Respondent In the email communication addressed to the Complainant, with the Center in copy, on December 15, 2020, the Respondent states that it was completely unaware of the Complainant when registering the disputed domain name and that it was not acting in bad faith since it was intending to use the disputed domain name in connection with consultancy services for the UK rail industry. The Respondent also asserts that it would be willing to transfer the disputed domain name to the Complainant at a cost of £500 and requests to be granted a transition period in order to redirect all communications (which would be currently connected to an email address associated to the disputed domain name), to a new email address. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark RAILTEAM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at hand, the Panel notes that the disputed domain name is confusingly similar to the trademark RAILTEAM as it reproduces the trademark in its entirety with the mere addition of the definite article “the” and the generic Top-Level Domain “.com”, which does not prevent a finding of confusing similarity. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well-known that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, the Panel finds that the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is George Staines, might be commonly known by the disputed domain name or a name corresponding to it. As highlighted above, the disputed domain name has been pointed to a parking page with sponsored links. In view of the substantial correspondence of the disputed domain name with the Complainant’s trademark RAILTEAM, the Panel finds that such use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without intention to misleadingly divert the consumers or to tarnish the Complainant’s trademark. After the filing of the Complaint, the disputed domain name has been pointed to a landing page showing the image of a train with the statements “The rail team ltd - Our Online Platform is Under Construction”. The Respondent asserted to have registered the disputed domain name for use in connection with its new up and coming business based in the UK, focusing on consultancy services for the UK rail industry. However, the Respondent failed to submit any documents to substantiate its allegations. Moreover, in view of the confusing similarity of the disputed domain name with the Complainant’s prior trademark RAILTEAM, registered and used by the Complainant in connection with rail services and the geographic reach of the Complainant’s services which notably includes London in the UK, the Panel finds that the Respondent’s purported use of the disputed domain name would anyway cause confusion with the Complainant and its trademark as to the source or affiliation of the Respondent’s website and the alleged services promoted therein. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. As to the bad faith at the time of the registration, the Panel notes that, in light of the substantial correspondence of the disputed domain name with the Complainant’s prior trademark RAILTEAM and its domain name Moreover, in view of the fact that the Respondent claimed to have registered the disputed domain name for use in connection with the promotion of consultancy services for the railway industry, the Panel finds that the Respondent was or ought to be aware of the Complainant’s trademarks, also in light of the fact that a simple verification on Internet search engines before registering the disputed domain name would have revealed the existence of the Complainant and its trademark. Based on the evidence on records, showing that the disputed domain name was used, before the filing of the Complaint, in connection with a parking page with sponsored links, and in view of the Respondent’s allegations about its intention to use the disputed domain name to provide consultancy services for the UK rail industry (where the Complainant’s services moreover reach), the Panel finds that, on balance on probabilities, the Respondent registered the disputed domain name in order to intentionally attempt to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according 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 Luca Barbero
- International trademark registration n. 887130 for RAILTEAM (word mark), registered on January 6, 2006, international classes 12, 16, 35, 39, and 43;
- French trademark registration n. 3511082 for RAILTEAM (figurative mark), filed on July 04, 2007, published on August 10, 2007, in international classes 16, 35, and 39;
- United States trademark registration No. 3970833, for RAILTEAM (word mark), filed on December 13, 2006, and registered on May 31, 2011, in international class 39;
- European Union trademark registration n. 009621707, for RAILTEAM (figurative mark), filed on December 23, 2010, and registered on June 3, 2011, in international classes 16, 35, 38, and 39.
Sole Panelist
Date: February 3, 2021
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