The Complainant is Société Nationale des Chemins de Fer Français of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Natasya Widjaja of Malang, Indonesia.
The disputed domain name <velo-sncf.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2009. On September 4, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 4, 2009, GoDaddy.com, 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” 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 September 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2009.
The Center appointed Angela Fox as the sole panelist in this matter on October 5, 2009. 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 national railway operator, Société Nationale des Chemins de Fer Français. It owns trademark registrations for the stylised acronym SNCF in France and other countries around the world in respect of transport and travel agency services and related goods and services.
The Complainant exhibited print-outs from the INPI and Madrid Express databases showing details of its French registration numbers 93466498 (filed in 1993), 3066781 (filed in 2000), 3344303 (filed in 2005), 3424107 (filed in 2006), and International Registration numbers 878372 (filed in 2005) and 1001673 (filed in 2008), all for stylised versions of SNCF.
The Complainant also operates a website at “www.velo.sncf.com”, providing information on travelling with a bicycle on the SNCF train network. The Complainant exhibited recent print-outs from that website and stated that this subdomain had been activated on May 3, 2005. The Complainant also owns the domain names <velo-sncf.eu>, registered on April 7, 2006, and <velo-sncf.mobi>, registered on January 25, 2007. Annexed to the Complaint were WhoIs details of these.
The disputed domain name was registered on April 11, 2006. At the time this decision was written, the disputed domain name resolved to a page indicating that the website had been suspended. However, the Complainant exhibited a print-out showing that the domain name had previously linked to a generic landing page headed “<velo-sncf.com> What you need, when you need it” with links to topics including “travel”, “photosex”, “dating”, “finance”, “home”, “business”, “entertainment” and “lifestyle”. The Complainant exhibited a further print-out showing that the domain name was later linked to a website hosting links to articles on third-party websites relating to assorted topics, including bicycles and cycling.
The Complainant alleges that the disputed domain name is confusingly similar to its registered trademark. It argues that “velo” is a descriptive term (the Panel notes that “vélo” is the French word for “bicycle”) and that its presence is insufficient to avoid confusion. The Complainant points to earlier UDRP decisions in which it says that its SNCF trademark was recognised as well-known (inter alia Société Nationale des Chemins de Fer Français v. Miguel Casajuana, WIPO Case No. D2008-1593 and Société Nationale des Chemins de Fer Français (SNCF) c. Paco Elmudo, WIPO Case No. D2002-1079), and argues that the mere presence of the well-known trademark SNCF in the disputed domain name is enough to create confusing similarity.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its SNCF trademark, and the Respondent's use of the disputed domain name in respect of a generic landing page including links to travel-related third-party websites constitutes, in the Complainant's submission, an effort to misleadingly divert customers for commercial gain, and is not therefore evidence of a bona fide commercial use.
Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant claims that the disputed domain name was registered in order to take advantage of confusion by Internet users between the disputed domain name and the Complainant's SNCF trademark and website at “www.velo.sncf.com”. The Complainant avers that the Respondent chose the disputed domain name with the intent to confuse and divert Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product or service on it.
The Complainant also submits that the Respondent's choice of a domain name comprising a descriptive French word in conjunction a well-known French trademark is no coincidence, and that this further demonstrates the Respondent's registration of the disputed domain name in bad faith.
The Complainant further contends that the Respondent registered the disputed domain name with the intention of preventing the Complainant from reflecting its mark in a corresponding domain name.
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14I(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The Complainant has shown that it owns registered trademark rights in stylised forms of the acronym SNCF. The acronym SNCF appears in its entirety in the disputed domain name.
The disputed domain name also contains a hyphen and the word “velo”, which means “bicycle” in French. Although “velo-” is the first element in the disputed domain name, “sncf” is the most distinctive element and it is therefore plausible that Internet users will read “velo-” as merely modifying the acronym SNCF. The Complainant itself no doubt counted on such an impression when it activated its own subdomain “www.velo.sncf.com” in May 2005 for a bicycling-by-train website. There is ample agreement among panels that the mere addition of a descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly (although not exclusively) where the descriptor is in some way relevant to the Complainant's business (see inter alia Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338). Bicycles and cycling are clearly relevant to train operators, who count among their passengers many people who travel with their bikes.
The Panel notes that the Complainant's registered trademark rights are in stylised forms of SNCF. Elements of visual stylisation cannot be reflected in domain names. Their absence in this case in no way detracts from the confusing similarity of the disputed domain name arising from its inclusion of SNCF and a mere generic descriptor relevant to the Complainant's business.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademarks.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the Complainant, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of the respondent.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that it does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing on the record to indicate that the Respondent might enjoy such a right or interest, and it has not attempted to refute the Complainant's assertion.
The Panel notes that the Respondent appears to have used the disputed domain name in the past in respect of a generic landing page hosting commercial links to third party websites, including some relating to travel, and subsequently for a site providing links to articles on inter alia bicycles and cycling.
Panels have recognised that the provision of pay-per-click (“PPC”) links through a landing site may amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the Policy, where domain names consist of dictionary words and their value as links to PPC landing sites is linked to the dictionary meanings, rather than to any trademark significance (see inter alia mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141).
In this case, however, the disputed domain name consists of the Complainant's trademark, SNCF, which has no dictionary meaning, coupled with a generic descriptive French word. There is nothing in the evidence to suggest any connection between the generic word “velo” and the content of the Respondent's former PPC landing site. Any value of attraction in the disputed domain name for the former PPC landing site was bound up not in the generic descriptor, but in the presence of the Complainant's trademark. That the landing site contained links related to travel, the Complainant's field of activity, supports this conclusion.
Panels have frequently found that landing pages using domain names whose value as attractors is linked to trademark meaning are in themselves evidence of cybersquatting behaviour (see inter alia mVisible Technologies, Inc. supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; and Brink's Network, Inc. v. Asproductions, WIPO Case No. D2007-0353).
The Respondent's later modification of the site to provide links to articles on bicycles and cycling tends to suggest an effort to shore up its position against a possible finding of lack of bona fides and legitimacy.
There is nothing in the evidence to suggest that the Respondent has any legitimate interest or right in using a domain name including the Complainant's trademark. The Panel finds that it has none.
The Respondent has used a domain name that is confusingly similar to the Complainant's SNCF trademark to host PPC links to third-party websites on topics including travel, the field in which the Complainant trades.
Although the Respondent is based in Indonesia, it is improbable that it had no knowledge of the Complainant's SNCF rail network in France when it registered the disputed domain name. Although the Complainant did not put forward evidence of reputation in this case, it did refer to other decisions in which panels have found the Complainant's SNCF trademark to be well-known in France and abroad (see inter alia Société Nationale des Chemins de Fer Français v. Miguel Casajuana, WIPO Case No. D2008-1593 and Société Nationale des Chemins de Fer Français (SNCF) c. Paco Elmudo, WIPO Case No. D2002-1079). If the Respondent had not been aware that SNCF was the trademark of a French company, it is hard to see why it would have chosen to include a generic French word in the domain name, as opposed to a word in English, the language of the linked site.
Moreover, the Panel agrees with the Complainant that the similarity of the disputed domain name to the Complainant's own website subdomain, “www.velo.sncf.com,” in use for the Complainant's bicycling-by-train website since May 2005, and to the Complainant's prior registered domain name, <velo-sncf.eu>, appears to be more than mere coincidence.
The Panel finds it more likely than not that the Respondent was aware of the Complainant's SNCF trademark, and probably also its “www.velo.sncf.com” website and/or its <velo-sncf.eu> domain name, at the time that it registered the disputed domain name, and that such awareness indeed prompted the registration.
Under paragraph 4(b)(iv), the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 the Respondent's web site or location or of a product or service on it.
In this case, the Respondent deliberately set out to derive PPC revenue from Internet users by creating a likelihood of confusion with the Complainant's trademark. It adopted a confusingly similar domain name and used it to host PPC links to third-party websites including sites relating to travel, the Complainant's own field of activity. Such conduct is inherently misleading, and there is widespread agreement among panels that the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is evidence of bad faith (see inter alia mVisible Technologies, Inc. supra; Mudd, (USA) LLC v. Unasai, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
The Panel finds that the Respondent's conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
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, <velo-sncf.com> be transferred to the Complainant.
Dated: October 16, 2009