WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG
Case No. D2008-0886
1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français, Paris, France, represented by Cabinet SANTARELLI, France.
The Respondent is Sinclare Vabalon, BHG, Gibraltar, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed Domain Name <wwwsncfvoyages.com> is registered with Basic Fusion, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2008. On June 11, 2008, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed Domain Name. On June 11, 2008, Basic Fusion, Inc. 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”), 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 June 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on July 21, 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 Complainant is the French State railway company and the owner of trademarks consisting or comprising of SNCF and VOYAGES SNCF in connection with transport services and travel agency services.
The Respondent registered the Domain Name <wwwsncfvoyages.com> on March 27, 2008.
5. Parties’ Contentions
The Complainant states that the trademarks VOYAGES-SNCF and VOYAGES-SNCF.COM are used in connection with the website “www.voyages-sncf.com” which is an online travel agency, operated by a 100% subsidiary of the company SNCF named “voyages-sncf.com”.
The Complainant informs the Panel that “www.voyages-sncf.com”, founded in June 2000, is the first merchant website of the French market, with a business volume of more than 1.5 billion euros in 2006 and more than 9 million visitors.
According to the Complainant, the disputed Domain Name is identical, or at least confusingly similar, to the marks of the Complainant VOYAGES-SNCF, VOYAGES-SNCF.COM and SNCF.
The Complainant contends that the “www” prefix, which is commonly found at the beginning of Web addresses, is non-distinctive. The Complainant underlines that the omission by the Respondent of the dot between the words “www” and “sncfvoyages” is a clear example of “typosquatting” which has consistently been regarded by UDRP panelists as creating domain names confusingly similar to the relevant mark.
The Complainant highlights that the trademarks SNCF and VOYAGES-SNCF.COM are well known in France and abroad and quotes the decision, SNCF vs. Paco Elmudo, WIPO Case No. D2002-1079 recognizing the well known character of the marks SNC and VOYAGES-SNCF.COM. The Complainant concludes that their reproduction constitutes an infringement of the prior marks of the Complainant to its detriment.
The Complainant indicates that it is the registrant of various domain names including the marks SNCF and VOYAGE(S), such as <sncfvoyages.com>, <sncf-voyages.com>, <sncfvoyage.com> and <sncf-voyage.com>.
With reference to rights or legitimate interests in respect of the disputed Domain Name, the Complainant asserts that the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use or to register the SNCF VOYAGES-SNCF or VOYAGES-SNCF.COM marks.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed Domain Name resolves to a website that provides a search service, categorized “top searches”, and “popular links”, all relating to a number of different topics, including travel topic.
The Complainant underlines that the use of the search service results in the display of various “sponsored links” to third party websites, in French language, including the Complainant’s official website.
As a circumstance evidencing bad faith in the registration of the Domain Name, the Complainant claims that the Respondent was aware of the existence of the Complainant’s marks SNCF, VOYAGES-SNCF and VOYAGES-SNCF.COM. Indeed the Complainant indicates that the website to which the disputed Domain Name resolves is in French and contains a link to the Complainant’s official website. The Complainant further states that the combination of the “www” prefix, which is commonly found at the beginning of Web addresses, with the expression “sncfvoyages” indicates that the Respondent intended to take advantage of possible mistakes by Internet users when typing the Complainant’s address. The Complainant contends that such an 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.
The Complainant concludes that the Respondent’s intention is to take advantage of the reputation of the Complainant’s marks SNCF, VOYAGES-SNCF and VOYAGES-SNCF.COM.
The Complainant points out that the Respondent obtains a financial gain every time an Internet user would inadvertedly access its website and activate any of the sponsored links.
The Complainant also claims that the disputed Domain Name was registered in order to prevent the Complainant from reflecting its marks in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
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 in accordance with the Policy, the 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 Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations consisting in or comprising SNCF or VOYAGES SNCF.
The Panel finds that the disputed Domain Name is confusingly similar to the registered trademark VOYAGES SNCF owned by the Complainant since the Respondent has merely added the prefix “www” to the trademark and switched the components of the trademark VOYAGES SNCF which are certainly not sufficient to exclude the confusingly similarity.
Indeed the Panel shares the finding that the addition of the prefix “www” constitutes a typosquatting that does not exclude the likelihood of confusion between the Complainant’s trademarks and the disputed Domain Name (Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286; Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274; Bayer Akiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205 (<wwwbayer.com> confusingly similar to BAYER); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (<wwwpfizer.com> confusingly similar to PFIZER).
In view of the above, the Panel finds that the Complainant has proven that the disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established 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 Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows prima facie case in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights and legitimate interests in the 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. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Case No. 852581).
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed Domain Name.
Indeed there is no relation, disclosed to the Panel or otherwise apparent, 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.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services or intends to make a legitimate, non commercial or fair use of the Domain Name.
The Panel notes that the Domain Name was, at the time of the filing of the Complaint, and still is pointing to a sponsored pay-per-click website related to transport aimed at directing visitors to third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name to direct visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the Domain Name under the Policy. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
See also Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Furthermore, the Panel notes that the website corresponding to the contested Domain Name is displaying a link to the Complainant’s website.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of use of the trademark since 2000, the amount of over 9 million visitors and over 1.5 billion euros in 2006 related to the official website “www.voyages-sncf.com”, the Respondent was well aware of the Complainant’s trademarks.
Furthermore, the Panel observes that the disputed Domain Name points to a parking page where the Complainant’s trademark is referenced and where a link to the Complainant’s official website is displayed, additional element further indicating that the Respondent was well-aware of the Complainant’s trademark.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the disputed Domain Name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
The disputed Domain Name is redirected to a page related to e.g., transport products and services corresponding to the Complainant’s activities and contains a link to the Complainant’s website.
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present Domain Name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the Domain Name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Moreover the Respondent has added the prefix “www” to the Complainant’s VOYAGES SNCF trademark. The Panel finds that this particular kind of typosquatting, consisting of the registration of a Domain Name with the clear circumstance evidencing the Respondent’s bad faith at the time of the registration (Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
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, <wwwsncfvoyages.com> be transferred to the Complainant.
Date: August 6, 2008