WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit Nationale des Chemins de Fer Franais (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtect.org

Case No. D2008-0025

 

1. The Parties

The Complainant is Socit Nationale des Chemins de Fer Franais (SNCF), of Paris, France, represented by Cabinet Germain & Maureau, France.

The Respondent is Comdot Internet Services Private Limited/ PrivacyProtect.org, of Maharashtra, India.

 

2. The Domain Name and Registrar

The disputed domain name <wwwsncf.com> is registered with Lead Networks Domains Pvt. Ltd.

 

3. Procedural History

The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2008. On January 8, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On January 22, 2008, Lead Networks Domains Pvt. 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 Registrar also confirmed that the language of the registration agreement was English. In response to a notification by the Center that the Complaint was administratively deficient a notice of change in registrant information, and a request to provide the Center with either an agreement with the respondent to proceed in French or the Complaint in English, the Complainant filed an amended Complaint in English on January 28, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2008. Other than a brief e-mail communication from the Respondent dated January 24, 2008, requesting that communications be sent in English, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2008.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 6, 2008. 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 mark upon which the Complaint is based is SNCF. According to the documentary evidence and contentions submitted, the Complainant owns four trademark registrations for the SNCF mark with the French Trademark and Patent Office (INPI): Registration No. 1.314.288 issued June 27, 1985 and renewed as of May 27, 2005; Registration No. 93.466.498 issued April 30, 1993 and renewed as of March 25, 2003; Registration No. 00.3.066.781 issued November 24, 2000; and Registration Nos. 05.3.344.303 issued March 2, 2005. The Complainant states that such marks have always been used in relation to transport services and travels agency services, as well as related goods.

According to the contentions submitted, the Complainant is the French public national railways company and has been operating under a legal monopoly the French railway network for 70 years. The Complainant is usually known as SNCF and, because it is the only railway company in France and operates the well known TGV high speed train, is widely recognized in Europe and around the world as an entity engaged in the transportation and travel business. The Complainant’s online services are offered through a portal website under the domain names <sncf.com> and <voyages-sncf.com>.

Respondent registered the domain name <wwwsncf.com> with Lead Networks Domains Pvt. Ltd. on March 16, 2005. Originally, the registrant of record was PrivacyProtect.org, a privacy service as disclosed at “www.privacyprotect.org” website. Upon the filing of the Complaint, the registrant was identified by the Registrar as the Respondent.

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends that the domain name <wwwsncf.com > is identical or at least confusingly similar to the Complainant’s marks because the technical prefix “www”and the suffix “com”> are irrelevant in the comparison.

The Complainant further contends that the Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) the Respondent is not related to the Complainant and has not been authorized by the Complainant to use or register the name “SNCF”; (ii) before any notice of the Complaint to the Respondent, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; and (iii) the Respondent is not commonly known by the domain name and does not trade under the name “sncf” and does not make any legitimate commercial use thereof.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith by the Respondent because: (i) the Respondent knew of the existence of the Complainant and of its SNCF mark since the website to which the disputed domain name resolved was in French and contained a link to the Complainant’s official website “www.voyages-sncf.com”; (ii) the Respondent chose as a domain name the combination of the “www” prefix with the Complainant’s famous mark in a practice known as “typosquatting”; (iii) the Respondent chose not to disclose its identity when registering the domain name to evade responsibility; (iv) while the Respondent is an Indian entity, the website under the disputed domain name is in French; (v) said website was a simple sponsored link page related to the field of transport and travels services, which is the core business of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response.

As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by theComplainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether the Complainant has complied with such requirements.

B. Identical or Confusingly Similar

This Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

In fact, the similarity between the mark SNCF and the domain name <wwwsncf.com> is obvious. It is clear that the registered mark SNCF stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered mark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

In addition, the “www” prefix is commonly found at the beginning of Web addresses and the suffix “.com” is non-distinctive because it is required for the registration of the domain name. Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

The conduct by the Respondent is a clear example of “typosquatting”: rather than typing the words “www” and “sncf” with a dot between them to visit the Complainant’s website, an Internet user could easily omit the dot between the two words and be diverted to a different website. Therefore, the Panel also takes into account previous UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. This is a point well-established in WIPO domain name case law. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-627; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

As a result, the Panel concludes that the domain name <wwwsncf.com> is confusingly similar to the mark SNCF in which the Complainant has rights, because (i) the Complainant’s mark SNCF is included in its entirety in the disputed domain name, (ii) the addition of the prefix “www” and the suffix “.com” is not sufficient to distinguish the Complainant’s mark from the domain name; and (iii) the disputed domain name is a clear example of “typosquatting”.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The consensus view in UDRP Panel decisions has been that “[w]hile the overall burden of proof rests with the complainant, …. this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel is convinced that the Complainant has done enough to establish a prima facie case, and by defaulting the Respondent has failed to provide the Panel with any evidence of its rights or legitimate interests in the disputed domain name. In addition, none of the three nonexclusive examples for the sole panelist to conclude that the Respondent has rights or a legitimate interest in the disputed domain name (Paragraph 4(c) of the Policy) shows a result in favor of the Respondent.

In fact, the disputed domain name is not the name of the Respondent or the name by which it is commonly known, and the disputed domain name is not the Respondent’s trade name or service mark.

Paragraph 4(c)(i) of the Policy provides that respondents’ rights or legitimate interests to a domain name for the purposes of Paragraph 4(a)(ii) would be demonstrated by “before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name … in connection with bona fide offering of goods and services.” Paragraph 4(c)(iii) further provides that respondents’ rights or legitimate interests to a domain name for the purposes of Paragrah 4(a)(ii) would be demonstrated by “making a legitimate … fair use of the domain name, without intent for commercial gain to misleadingly divert consumers …”

The Respondent originally used the disputed domain name to resolve to a website with sponsored links to travel and related web pages apparently in the French language. Efforts to misleadingly divert customers with the intent of commercial gain is not evidence of bona fide use of the domain name but rather evidence of bad faith (Policy paragraph 4(c)(i) and 4(b)(iv)). After notice of the dispute was given to the Respondent, the website was deactivated. Pursuant to an independent survey conducted by the Panel by attempting to access the Respondent’s website, the Panel verified that the Respondent’s domain name currently does not resolve to any web page (access attempted on March 15, 2008). The deactivation of the Respondent’s website does not affect a finding that Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.

In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that the Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy, or any other, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

In view of the particulars of the instant case, the Panel finds that the Respondent was undoubtedly aware of the existence of the Complainant when the Respondent registered the disputed domain name. In fact, the combination of the “www” prefix, which is commonly found at the beginning of Web addresses, with the expression “sncf” indicates that Respondent intended to take advantage of possible mistakes by Internet users’ when typing the Complainant’s address. The Panel has previously indicated, for the purpose of determining the existence of confusing similarity, that an Internet user, when attempting to visit the Complainant’s website, could easily be diverted to a different website as a result of the “typosquatting” practice conducted by the Respondent.

The act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration and use. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107, citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011; Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728.

The fact is that, before notice of the dispute was given to the Respondent, the website to which the disputed domain name resolved was apparently in French and contained sponsored links to transportation and travel pages, including the Complainant’s official website. Therefore, the Respondent not only intended to take advantage of the good will and reputation of the Complainant’s mark SNCF but also obtained a financial gain every time an Internet user would inadvertedly access its website and activate any of the sponsored links. Therefore, the Respondent showed opportunistic bad faith because the domain name at issue was connected with the services the Complainant provides.

Paragraph 4c(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.

The Panel also concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith. Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.

Finally, the fact that the Respondent’s website is now deactivated does not affect a finding of bad faith use of the disputed domain name. The facts of the case show an evasive and wrongful conduct on the part of the Respondent. First, because the use of a proxy registration service in this case to avoid disclosing the name and coordinates of the real party in interest is consistent with an inference of bad faith in registering and using a domain name. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696. Second, because the deactivation of the website to which the disputed domain name resolved, after notice of the dispute was given to the Respondent, indicates at least that the Respondent intended to avoid a claim of bad faith use of the domain name.

Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith, and finds that the requirement of Paragraph 4(a)(iii) of the Policy is met.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwsncf.com> be transferred to the Complainant.


Manoel J. Pereira dos Santos
Sole Panelist

Dated: March 17, 2008