WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société Nationale des Chemins de Fer Français (SNCF) V. Frédéric Nahmias

Case No. D2001-1390

 

1. The Parties

The Complainant is the Société Nationale des Chemins de Fer Français (SNCF), a French State Company, located at 34 rue du Commandant René Mouchotte, 75014 Paris, France. The Complainants authorized representative is BLOCH & Associés, 2 square de l'avenue du Bois, 75116 Paris, France. The counsel in charge of the file is Mr. Henri-Michel REYNAUD.

The Respondent, current owner of the domain names at issue, is Frédéric NAHMIAS, 230 rue de Courcelles, 75017 Paris, France. The Respondent has taken no part in the proceeding, neither a lawyer nor any other agent represents him.

 

2. The Domain Names and Registrar

The dispute concerns the domain names <transilien.com>, <transilien.net> and <transilien.org>. The Registrar with which the domain names are registered is Network Solutions Inc, 505 Huntmar Drive, Herndon, Virginia 20170, United States of America.

 

3. Procedural History

A Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on November 22 and 26, 2001, respectively in electronic format and in hardcopy.

On November 23 and 26, 2001, the acknowledgement of receipt of the Complaint and a request for Registrar verification were sent respectively. The answer to that request was received from Network Solutions Inc, on November 29, 2001.

The Center sent a request by e-mail for amendment to the Complaint on December 5, 2001 (the Complaint was not signed).

On December 10, 2001, the amended Complaint (signed by the representative of the Complainant) was received by the Center in hardcopy.

On December 11, 2001, the Complaint was sent to the Respondent (with copy to the Complainant) and the administrative proceeding began. The compliance with the formal requirements of the Policy, Rules and Supplemental Rules has been checked. The Complainant has made the payment in the required amount to the Center.

The Respondent should have sent his response before January 10, 2002, but the Center did not receive any response within this time limit.

On January 11, 2002, the notification of Respondent Default was sent by e-mail.

The notification of the appointment of the sole Panelist to both parties took place on January 30, 2002, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The same day, the sole Panelist received from the Center the copy of the file by e-mail. The hardcopy of the file was received on January 31, 2002.

This dispute is within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement pursuant to which the domain names were registered incorporates the Policy. The domain names were registered on September 27, 1999.

As the language of the domain name registration agreement is the English language and as the Complainant has filed its complaint in English, the proceeding will be conducted in English, pursuant to paragraph 11 (a) of the Rules.

The decision is issued within the time limit fixed by February 13, 2002.

 

4. Factual Background

The following facts have not been contested:

(a) The Complainant has rights in several French trademarks and namely on the following one:

- Word trademark " TRANSILIEN" n 99/789 356 dated April 29, 1999, covering classes 09, 12, 38 and 39;

- Semi-figurative trademark "TRANSILIEN" n 99/828 440 dated December 13, 1999 covering classes 09, 12, 38 and 39;

(b) The Respondent registered on September 27, 1999, the domain names: <transilien.com>, <transilien.net> and <transilien.org>.

 

5. Parties Contentions

(a) Complainant

Complainant states in its own words:

The contested domain names are identical to the trademarks of the complainant. Their reproduction constitutes an infringement of the prior marks of the Complainant to its detriment.

The Complainant points out that, since 1938, SNCF has been well-known by every French citizen, which is merely a customer of SNCF. This company enjoys a monopolistic situation and no competitor may challenge its leadership in the railway field (building up, manufacturing and managing the French railways).

Furthermore, the trademarks "TRANSILIEN" are known marks in the railways field: in 1999, the Complainant has launched a new service called TRANSILIEN to the attention of its customers living in the region "Ile de France", which is the administrative region including Paris. It appears that 1,800,000 people are traveling by train every day in this Region and this new service has been created in order to ease the management of such area regarding traffic and quality control issues.

Furthermore, the Complainant says that TRANSILIEN is a kind of neologism meaning "transport des Franciliens" across Ile de France.

Finally, the Complainant has quickly promoted the new service "TRANSILIEN", has published various articles in national and local newspapers and organized a large posted campaign over Paris.

Thus, the Respondent could not ignore that he registered domain names which are the identical reproductions of the Complainants trademarks, insofar as the Respondent is a French citizen.

The Respondent has no rights on the domain names, nor interests to these domain names as they do not correspond to any name and the Respondent does not own any corresponding trademark, at least to the knowledge of the Complainant.

The domain names have been registered in bad faith, justifying that the Complainant wants to prevent the Respondent from damaging SNCF rights and notoriety.

The Complainant states that when it noticed the existence of the domain names at issue, it sent a courier to Mr. NAHMIAS. This courier, dated January 18, 2001, warned him that his registration of the domain names <transilien.com>, <transilien.net> and <transilien.org> constituted an infringement of the trademarks of the Complainant. SNCF also asked Mr. NAHMIAS to transfer the ownership of the contested domain names to the Complainant.

Mr. NAHMIAS replied by courier to the SNCF letter on February 9, 2001 and suggested to SNCF the possibility to acquire the domain name <transilien.com> for a lump sum which amount would be freely negotiated. He also tried to legitimate the reservation of the domain names in dispute which would have been registered in order to open a website dedicated to the defense of civil rights of the transsexual community. He failed to evidence his belonging to this community or any social commitment related to transsexuals.

The Complainant sent another letter to the Respondent on March 16, 2001, requiring the transfer of the domain name <transilien.com>; SNCF mentioned that it should be able to exploit its trademarks on every medium including Internet, avoiding any risk of confusion with the websites of third people.

Mr. NAHMIAS did not react any more and kept silent. In the light of administrative panel Decisions of the Center, D2000-0003 and D2000-0055, the passive holding in relation to a domain registration can, in certain circumstances, constitute a domain name used in bad faith.

(b) Respondent

The Respondent did not file any Response to the Complaint and was notified of his default on January 11, 2002, without any later reaction.

 

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain names registered by the Respondent are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and,

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain names; and,

(iii) that the domain names have been registered and used in bad faith.

The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the "TRANSILIEN" mark or to register for any domain name incorporating the "TRANSILIEN" mark, nor has the Complainant acquiesced in any way to such use or registration of the "TRANSILIEN" mark by the Respondent.

Indeed, at no time did the Respondent have authorization to register the domain names <transilien.com>, <transilien.net> and <transilien.org>.

There is no evidence that the Respondents use, or demonstrable preparations to use, the domain names <transilien.com>, <transilien.net> and <transilien.org> are in connection with a bona fide offering of goods or services.

Since the registration of the domain names on September 27, 1999, it seems that no website has been or is accessible by using the domain names <transilien.com>, <transilien.net> and <transilien.org>, nor does the Respondent appear to have any other online location with respect to these domain names.

There is no evidence to show that the Respondent, as either an individual, business, or other organization, has been or is commonly known by the domain names <transilien.com>, <transilien.net> and <transilien.org> or has acquired any trademark or service mark rights in the domain names.

There is no evidence to show that the Respondent is making a legitimate non-commercial or fair use of the domain names <transilien.com>, <transilien.net> and <transilien.org>, without intent for commercial gain to misleadingly divert consumers or to tarnish the marks at issue so as to create an impression of association with the Complainant.

1. Identity or similarity

The prior trademarks of the Complainant "TRANSILIEN" are identical to the domain names <transilien.com>, <transilien.net> and <transilien.org> registered by the Respondent. The suffixes ".com", ".org" and ".net" do not bear a distinctive character for services relating to the Internet. They do not confer to the whole a new meaning involving the absence of risk of confusion with the trademarks "TRANSILIEN".

The registration of the domain names at issue could be considered as an infringement of the above French trademarks n 99/789 356, n 99/828 440.

Finally, it can be said that "TRANSILIEN" is a well-known mark in France and in the Paris region in particular, following the large press and postal campaign made by SNCF.

Thus, the domain names <transilien.com>, <transilien.net> and <transilien.org> generate confusion with the marks of the Complainant.

2. Rights or legitimate interests of the Respondent in respect of the domain names.

The Registrant of the domain names at issue has not filed any Response to the Complaint and then has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain names.

Nevertheless, before the beginning of the present administrative proceeding, Mr. NAHMIAS refused to transfer the domain names <transilien.com>, <transilien.net> and <transilien.org>, because he asserts that these domain names have been registered regularly and in good faith, in order to open a website dedicated to the defense of civil rights of the transsexual community, even though he failed to prove his belonging to this community or any social commitment related to transsexuals.

The Panel finds that Mr. NAHMIAS attitude reveals and recognizes clearly that Mr. NAHMIAS was quite aware that he was not entitled to register the said domain names. Thus the Panel concludes that the Respondent had no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register a domain name consisting of the well known trademark of a third party.

3. Registration and use in bad faith

The Policy (paragraph 4(b)), indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith.

The bad faith of the Respondent is established by the following elements:

- The Respondent is located at Ile de France region and thus could not ignore the existence of the services "TRANSILIEN" widely promoted by press in his region and in France in general, even though the Respondent denied any knowledge of the existence of the trademarks "TRANSILIEN" in his letter dated February 9, 2001.

- The Complainant informed Mr. NAHMIAS by letter of January 18, 2001, of its trademark infringement, but Mr. NAHMIAS refused to transfer the domain names <transilien.com>, <transilien.net> and <transilien.org>; he invited SNCF to acquire the domain name <transilien.com>for a lump sum which amount would be freely negotiated in his letter dated February 9, 2001. Afterwards the Respondent kept silent.

- It appears from the aforementioned that the domain names have been registered or acquired by the Respondent for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademarks for valuable consideration in excess of Respondents documented out-of-pocket costs directly related to the domain names.

- Mr. NAHMIAS has never used the domain names concerned. As in other cases (see D2000-0055), the concept of "use in bad faith" does not necessarily imply that the Respondent is undertaking a positive action in bad faith in relation to the domain names: inaction is within the concept, as supported by the actual provision of paragraph 4(b) of the Policy. As a matter of fact, only one of the circumstances identified in paragraph 4(b) as "evidence of the registration and use of a domain name in bad faith" by necessity involves a positive action post registration undertaken in relation to the domain name (paragraph 4(b)(iv)) while the other three circumstances contemplate either a positive action or inaction in relation to the domain name (paragraphs 4(b)(i), (ii), (iii)). These three circumstances require additional facts (an intention to sell, rent or transfer the registration - paragraph 4(b)(i); a pattern of conduct preventing a trade mark owners use of the registration - paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor - paragraph 4(b)(iii)). In this particular Complaint, there is no allegation or evidence that the Respondent established a website corresponding to the domain names. Consumers, on seeing the domain names, will believe it is related to Complainant but do not allege any offering of products or services by the Respondent. Consequently, the absence of development of any website using the domain names in dispute or the absence of any other good faith use of the domain names are obvious elements of the bad faith of the Respondent.

Thus the Panel concludes that the domain names were registered and are being used in bad faith. The Panel agrees with the submissions of the Complainant articulated above.

The Complainants trademarks "TRANSILIEN" are widely known. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainants rights in the trademarks can be imputed to the Respondent at the time of the registration of the domain names. When this imputed knowledge is combined with the fact that the Respondent has no rights or legitimate interests in the domain names, the fact that the Respondent has engaged in conduct of the type described in paragraph 4(b)(ii) of the Uniform Policy, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which he could make of the domain names, there are sufficient grounds to persuade the Panel that the domain names <transilien.com>, <transilien.net> and <transilien.org> were registered and are being used by the Respondent in bad faith.

Moreover, besides, the Panel considers, according to previous Decisions of he Center, that the notion of "use in bad faith" must not be limited to positive actions and that the passive holding in relation to a domain name registration can, in certain circumstances, constitute also another ground of use of a domain name in bad faith (see D2000-0055, D2000-0098).

Although there is no active website corresponding to the domain names at issue, the Panel finds that the Respondents silence and attitude constitute the use in bad faith of the said domain names.

For the above reasons, the Panel decides as follows:

 

7. Decision

The Panel decides based on its finding that the Respondent in default has engaged in abusive registration of the domain names <transilien.com>, <transilien.net> and <transilien.org>, for the foregoing reasons:

(a) that the domain names registered by the Respondent are identical to the trademarks in which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) that the Respondents domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the domain names <transilien.com>, <transilien.net> and <transilien.org> be transferred to the Complainant Société Nationale des Chemins de Fer Français (SNCF).

 


 

Isabelle Leroux
Sole Panelist

Dated: February 13, 2002