The Complainant is Société Nationale des Chemins de Fer Français, Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Tang Zhiyan, Chicago, Ilinois, United States of America.
The disputed domain name <tgvinc.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2008. On October 31, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On November 6, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Tang Zhiyan is the current registrant and providing the contact details 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 14, 2008 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 17, 2008. The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 19, 2008.
The Center appointed Francine Tan as the sole panelist in this matter on December 30, 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.
The Complainant is the French State railway company which operates the passenger railway system in France. TGV is the name for a train and related rail transport service adopted by the Complainant. The Complainant has French, US and International trademark registrations for the mark TGV. The Complainant's trademark rights in France date back to August 17, 1978. The Complainant is also the registrant of various domain names incorporating the sign TGV, including <tgv.com>.
The Complaint is based on the following grounds:
(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The disputed domain name incorporates the Complainant's well-known trade mark TGV, the word “inc.” and the standard suffix “.com”. The mere addition of the word “inc.” in the domain name is insufficient to avoid confusion with the Complainant's trade mark. In Iron Mountain Incorporated v. Belize Domain Whois Service Ltd, WIPO Case No. D2007-1651 and IFS Financial Services, Inc. v. Flint O. Agyeman, WIPO Case No. D2008-0629, it was held that “Inc.” is a non-distinctive and common abbreviation for the word “incorporated” and the addition thereof to the domain name does not affect the likelihood of confusion where the complainant's trade mark is incorporated in the domain name in dispute.
(2) The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has not licensed, appointed or otherwise permitted the Respondent to use the mark TGV or to register domain names incorporating the said trade mark, nor has the Complainant acquiesced to such use or registration by the Respondent. Further, as far as the Complainant is aware, the Respondent has neither rights to nor any interest in the disputed domain name.
(3) The domain name was registered and is being used in bad faith.
(a) The Respondent's registration of the disputed domain name which is confusingly similar to the Complainant's well-known trade mark is, in itself, prima facie evidence of a registration in bad faith.
(b) The disputed domain name resolves to another website, “www.averagepoll.com” and this is likely to mislead Internet users into believing that that site is sponsored, endorsed or authorized by or associated with the Complainant. Further, in attracting Internet users to a webpage that does not correspond to what they are looking for, there is a risk that the Complainant's TGV trade mark would be diluted and its reputation jeopardized. This amounts to bad faith registration of the disputed domain name.
(c) The disputed domain name was registered in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name, whereas the Complainant, being a State company, has a bona fide and legitimate interest in having its domain names reflecting its core trade marks.
The Respondent did not reply to the Complainant's contentions.
The disputed domain name incorporates the Complainant's registered trade mark TGV in its entirety. Whilst the domain name contains the suffix “inc.”, the likelihood of confusion is not thereby removed since the entire trade mark is incorporated into the domain name and “inc.” is a common abbreviation for “incorporated”. This principle is well established in previous UDRP decisions including the cases of Iron Mountain Incorporated v. Belize Domain Whois Service Lt (supra) and IFS Financial Services, Inc. v. Flint O. Agyeman (supra) which the Complainant cited in the Complaint. The element “.com” is also generic and a necessary extension of the domain name.
Hence, the Panel finds that the domain name is confusingly similar to the trade mark TGV in which the Complainant has rights.
The Respondent has not participated in these proceedings nor asserted any right or legitimate interest in the disputed domain name, nor is there anything in the file which suggests that such right or interest exists. The Complainant has no relationship with the Respondent and has not at any time permitted or licensed the Respondent to use the trade mark TGV or to register the disputed domain name or other domain name incorporating the Complainant's trade marks.
The Panel accordingly finds that the Complainant has established a prima facie case and concludes that the Respondent has no rights or legitimate interests in the domain name.
Paragraph 4(b) of the Policy sets out, without limitation, the following four circumstances which, if found by the Panel to be present, shall be evidence of bad faith registration and use:
(i) registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trade mark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) registration for the purpose of preventing the owner of the trade mark from reflecting the mark in a corresponding name, provided the respondent has engaged in a pattern of such conduct; or
(iii) registration primarily for the purpose of disrupting the business of a competitor; or
(iv) intentionally attempting, through the use of the domain name, to attract for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
There is nothing in the file record which establishes that the Respondent's conduct falls within any of these examples. There is no evidence that the Respondent registered the disputed domain name for the primary purpose of selling, renting or transferring the domain name to the Complainant. Neither is there evidence that the Respondent registered the domain name to prevent the Complainant from reflecting the TGV mark in a corresponding domain name, much less can one say there has been a pattern of such conduct. There is furthermore no evidence to support a finding that the Respondent registered the domain name primarily for the purpose of disrupting the Complainant's business. The content of the website which the disputed domain name resolves to, “www.averagepoll.com” is totally distinct from and unrelated to the Complainant's business. The stated purpose as reflected on the website is “to provide you a clear picture of how the upcoming [US Presidential] elections are shaping up”. The Panel does not consider that this case falls squarely within the fourth circumstance described in paragraph 4(b) of the Policy.
Nevertheless, the list in paragraph 4(b) of the Policy is not exhaustive and there can be other circumstances which may be evidence of bad faith use and registration. In this case, the trade mark TGV is widely known and the domain name can only sensibly refer to the Complainant. Further, the domain name <tgv.com> belongs to the Complainant and it is unlikely that the Respondent would have been unaware of the fact that <tgv.com> is already registered by the Complainant and that TGV is a trade mark of the Complainant. The domain name <tgvinc.com> is a natural extension of the primary domain name <tgv.com> and it would indeed be difficult for the Respondent to assert that he was not aware of the Complainant and of its rights and interests in the trade mark. There is no obvious possible justification for the Respondent's choice of the domain name and the Panel is free to infer from the Respondent's silence that no justification exists and that somehow, the Respondent hoped in some way to capitalize on the Complainant's reputation.
In the premises, the Panel finds that the domain name <tgvinc.com> was registered and is being used in bad faith.
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 < tgvinc.com> be transferred to the Complainant.
Dated: January 7, 2009