The Complainant is Société Nationale des Chemins de Fer Français SNCF, of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <transiliensncf.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2009. On September 8, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 10, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant 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 September 11, 2009 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 September 11, 2009. The Center verified that the Complaint together with 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 September 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2009.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on October 16, 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 in this instance is Société Nationale des Chemins de Fer Francais, the French State railway company that operates France's passenger railway system as well as the operation of rail services for freight. As evidenced by the accompanying Annexes, the Complainant holds a number of registered French and international trademarks for the words TRANSILIEN and SNCF that have been registered as early as 1999. The Complainant has also registered a number of domain names, including <transilien.com>, <transilien.eu>, <sncf.com> and <sncf.eu>.
The Respondent in this case is Transure Enterprise Ltd. and Above.com Domain Privacy. The disputed domain name <transiliensncf.com> was registered according to a Whois database search on December 25, 2008.
The Complainant in this case is the French State railway company which operates the majority of the passenger and freight rail services in France. The Complainant has evidenced in their complaint and the accompanying Annexes that they possess the right to use the trademarks TRANSILIEN and SNCF which are used mainly in connection with transport services, and as the Complainant alleges, are known trademarks in the railway field. Accordingly the Complainant states that they have trademark rights in TRANSILIEN and SNCF trademarks in connection with railway services.
In arguing its case under paragraph 4(a) of the Policy, the Complainant first avers that the disputed domain name of <transiliensncf.com> consists of the association of the words “transilien” and “SNCF”, both of which the Complainant has rights to. The Complainant has produced Annex 4 and Annex 5 which evidence the Complainant's existing trademarks concerning the disputed domain name as well as general information concerning the TRANSILIEN and SNCF trademarks and their use in the railway field and in transport services.
In this respect the Complainant further argues that the disputed domain name of <transiliensncf.com> reproduces in its entirety the trademarks of TRANSILIEN and SNCF which are held by the Complainant. The Complainant also contends that as the domain name wholly incorporates Complainant's both trademarks; there will be confusion amongst the public. Accordingly, when a domain name wholly incorporates a complainant's registered mark and gives the impression that the disputed domain name is somehow connected to the owner of the registered trademark, the Complainant alleges that the domain name is confusingly similar to that of a trademark in which the Complainant has rights.
The Complainant thereafter argues that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. The Complainant argues that its trademarks TRANSILIEN and SNCF are well known in France and abroad. The Complainant has also indicated that it possesses a large number of domain names bearing or containing the trademarks TRANSILIEN and SNCF such as <transilien.com>, <transilien.eu>, <sncf.com>.
The Complainant has indicated that the Respondent has not been licensed, contracted with, or otherwise permitted by the Complainant or otherwise to use the trademarks TRANSILIEN or SNCF or to register any domain name incorporating the same. Accordingly, as the Complainant possesses rights to the trademarks and the Respondent has not been given permission, the Complainant argues that the Respondent has no rights or legitimate interests in utilizing the disputed domain name.
As a note, the Complainant points out that the disputed domain name resolves to a number of the Complainant's competitors. With respect to this point, the Complainant alleges that the use of <transiliensncf.com> to direct visitors to various third party commercial websites is not a legitimate or bona fide use of the domain name under the Policy and does not confer any legitimate rights in the domain name.
Finally, under paragraph 4(a)(iii) of the Policy, and in furtherance of its last point above, the Complainant argues that the disputed domain name simply leads to a parking website that includes various links to a number of services, including travel. Some of the websites were even noted to be competitors of the Complainant. The Complainant further notes that a number of the websites contain terms in French referring to “train tickets”, “train schedules”, and “train last minutes”, which relate to the core business of the Complainant. In fact, a subsidiary of the Complainant is engaged in online travel agency activities. The Complainant contends that as a result of the above, internet users may be misled as to the Complainant's sponsorship, affiliation or endorsement of the disputed domain name.
The Complainant claims that Respondent was aware of the existence of Complainant's trademarks TRANSILIEN and SNCF since the web-site to which the disputed domain name resolves is in French and contains links to travel websites with a particular focus on railway travel. The Complainant further states that the website even mentions the terms “Transilien Sncf” and “Train Transilien” as evidence that the Respondent sought to take advantage of the reputation of Complainant's trademarks.
The Complainant notes that in past UDRP decisions, the use of a domain name to point to a website offering sponsored links to websites which offer similar goods and services as those of the Complainant constitutes bad faith and the intention to disrupt the business of the Complainant.
The Complainant also attempts to evidence the financial gain obtained by the Respondent with respect to the disputed domain name by pointing out the fact that the links on the website are sponsored links and thus the Respondent obtains a financial gain each time they are accessed by Internet users. The Complainant has also provided evidence that the Respondent sought to transfer the disputed domain name for a price of five hundred United States dollars (USD 500.00), which the Complainant contends was in excess of their documented out-of-pocket costs and supports their allegation of bad faith use. As a result, it is argued that the domain name was registered in order to disrupt the Complainant's business and to capitalize off of it.
The Complainant argues that the disputed domain name was registered in order to prevent the Complainant from reflecting its trademarks in corresponding domain names. Complainant also notes that the Respondent has been condemned in other domain name disputes but does not provide evidence to that effect.
The Respondent did not reply to the Complainant's contentions.
In accordance with the Rules, a panel is required to render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)).
Additionally, in each case a Complainant must establish each element of paragraph 4(a) of the Policy, which are as follows:
(i) the disputed 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 respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In all cases the complainant must establish these elements regardless of whether the respondent replies to the complaint. See, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
In meeting its obligation under paragraph 4(a)(i), the Complainant is required to evidence that <transiliensncf.com> is identical or confusingly similar to a trademark in which the Complainant has rights. In this instance, the Complainant, through its Complaint and the accompanying Annexes, has evidenced that since 1999, it has possessed trademark rights in both TRANSILIEN and SNCF on both local and international levels.
Presently the disputed domain name of <transiliensncf.com> wholly incorporates two registered and distinct trademarks of the Complainant. The Complainant has evidenced having trademark rights to TRANSILIEN and SNCF. Due to this fact, the Panel finds that the domain name <transiliensncf.com> is identical to trademarks in which the Complainant has rights. The Panel also agrees with the Complainant that the use of the “.com” suffix within the disputed domain name is an irrelevant distinction that does not alter the likelihood of confusion. See, VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709.
Accordingly, the Panel finds that the disputed domain name is identical to trademarks in which the Complainant has rights. As a result the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
The Complainant is next required to make a prima facie showing under paragraph 4(a)(ii) of the Policy that the Respondent has no legitimate rights or interests in <transiliensncf.com>. Following the presentation of the Complainant's case, the Respondent thereafter has the burden of evidencing to the Panel that it has rights or legitimate interests in the disputed domain name. See Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that the respondent can use to demonstrate that it possesses rights or a legitimate interest in the disputed domain names. Additionally, the absence of rights or legitimate interests can also be established if a complainant makes out a prima facie case and the respondent enters no response. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005. The Respondent in this case has not responded to the Complainant's contentions.
The Complainant has not provided the Respondent with any type of license, contract or other permission or authorization to use the trademarks TRANSILIEN or SNCF in any way or to register any domain name incorporating the same. The Complainant is also unaware of any association or rights that the Respondent has to utilize the trademarks and as such believes that the current use is unauthorized.
The Panel finds that the evidence submitted shows that the disputed domain name is not being utilized in a legitimate, non-commercial or fair-use manner without the intent for commercial gain. The links on the Respondent's landing page are noted to be “sponsored links” furthering the Complainant's contention that the dispute domain name is being operated for the financial gain of the Respondent.
As noted by past decisions, if the links on a landing page are based on the generic value of the domain name and do not implicate any trademark rights, such use would be considered bona fide. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. If however the links were targeted to the trademark name and the services offered by the Complainant such use would not constitute a fair or legitimate use. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; See also Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.
In this instance, the disputed domain name <transiliensncf.com> contains a number of pay-per-click and sponsored links on its landing page, in many if not most cases relating to train travel. The various links appear to offer the services of the Complainant, as well as its competitors. Based on this evidence, the links are clearly targeted towards the Complainant's business and as such do not constitute a fair use of the domain name. It is clear to the Panel that the Respondent had intended to profit off the goodwill and reputation of the Complainant.
The Panel is of the belief that the Respondent was operating the domain name for commercial gain and such use was not legitimate or done in connection with a bona fide offering of goods and services. Additionally the Respondent has failed to demonstrate that they were commonly known or associated with the disputed domain names or the trademarks TRANSILIEN and SNCF. Based on all of the above, the Panel finds that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
The final element under paragraph 4(a)(iii) of the Policy requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration. In addition to the instances under paragraph 4(b), a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel believes that the Complainant has successfully shown that the Respondent had no prior connection or rights to the TRANSILIEN and SNCF trademarks and additionally had not been authorized by the Complainant to use either of the trademarks. In satisfying its burden under paragraph 4(a)(iii) in showing that the disputed domain name was registered and is being used in bad faith, the Complainant appears to primarily base its argument on paragraphs 4(b)(i) and 4(b)(iv).
The Panel finds that the stronger argument of the Complainant arises under paragraph 4(b)(iv). Under paragraph 4(b)(iv) of the Policy the Complainant can evidence bad faith registration and use if the Respondent registered the disputed domain name in an attempt to intentionally attract, for commercial gain, Internet users to the domain name by creating a likelihood of confusion with the Complainant's mark.
In this case the Complainant has evidenced through its Complaint and the accompanying Annexes that the disputed domain name resolves to a parking website with sponsored links that relate in most cases to travel and travel services, particularly railway travel. The links include the services of the Complainant, but also a number of other service and travel providers, including those of the Complainant's competitors. The fact that the Complainant has rights to the TRANSILIEN and SNCF trademarks combined with the fact that the goods and services that are being offered on <transiliensncf.com> are the primary services offered by the Complainant, supports the Complainant's contentions.
The Panel finds that the Respondent has attempted to mislead internet users as to the Complainant's association with <transiliensncf.com> since the domain name embodies two registered trademarks of the Complainant and the links offer the services of the Complainant. It is clear to the Panel that the Respondent knew of the Complainant's trademarks TRANSILIEN and SNCF and the services offered by the Complainant. The Respondent is the national rail carrier for France and the term “SNCF” is an acronym for the Complainant. Even putting that fact aside, past decisions have held that the sole use of a disputed domain name to divert traffic to a site providing the sponsored links of various commercial companies is indicative of bad faith. See Micro Electronics, Inc. v. J. Lee, WIPO Case No. D2005-1070; Mudd, LLC v. Unasi Inc., WIPO Case No. D2005-0591.
As a result, the Panel finds that there is sufficient evidence to find that the Respondent has registered and is using the disputed domain name with the intention to attract, for commercial gain, users to the domain name by creating a likelihood of confusion with the Complainant.
Under paragraph 4(b)(i), there are also circumstances evidencing that the Respondent registered or acquired the domain name primarily for the purpose of selling or transferring the domain name registration to the owner or competitor of a trademark holder for valuable consideration in excess of the documented out-of-pocket costs. Such an act shall constitute evidence of bad faith registration and use of a domain name. In this case, the Complainant has attached Annex 7 which is an email from the Respondent dated June 18, 2009 in which the Respondent offers to transfer the domain name for the amount of five hundred United States dollars (USD 500.00). The Panel notes that this amount is not excessively high but believes it is higher than the reasonable out-of-pocket costs for the registration of a domain name. As previous decisions have held, an offer to sell a domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith. See CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243.
In this case the Panel is able to conclude based on the preponderance of the evidence that the disputed domain name was registered and is being used in bad faith by the Respondent. Accordingly the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) 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 <transiliensncf.com> be transferred to the Complainant.
Dated: October 29, 2009