Complainant is SNCF - Société Nationale des Chemins de Fer Français of Paris, France, represented by Inlex IP Expertise, France.
Respondent is Private Registration - BMON/ Telecom Tech Corp. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom.
The disputed domain name <horairesncf.com> is registered with Bargin Register Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2010. On February 4, 2010, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name(s). On February 16, 2010 and on February 24, 2010, Bargin Register 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 Complainant on February 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 3, 2010. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on March 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 25, 2010.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on April 1, 2010. 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.
Complainant, SNCF - Société Nationale des Chemins de Fer Français, is the national railroad company of France and it, as well as its acronym “SNCF” are internationally recognized. The company name has been registered in the French commercial register since 1955 and its acronym has been in use since 1937. Complainant is in possession of French trademark SNCF Reg. No. 063424107 filed on April 19, 2006 in classes 12, 35, 37, 39, 41, 42, French trademark SNCF and device Reg. No. 053344303 filed on March 2, 2005 in classes 12, 16, 18, 25, 28, 39, 41, 43, International trademark SNCF and device Reg. No. 878372 filed on August 23, 2005 in classes 12, 16, 18, 24, 25, 28, 35, 39, 41, 43, designating Switzerland and the European Union. Complainant also is in possession of many domain names containing “SNCF” as well as the word “horaires”, among which is <horairesncf.fr> and the first of which, <horaires-sncf.com> was created on July 12, 2003. SNCF first used its name in a website, <sncf.fr>, in 1995. The disputed domain name was registered through Bargin Register Inc. on December 11, 2006.
Complainant asserts that Respondent has knowingly registered the domain name <horairesncf.com> in order to profit, through a “parking page”, from the name and reputation of Complainant. Complainant has trademarked the acronym “SNCF” which it has used, in its capacity as the Société Nationale des Chemins de Fer Français, or the French National Railway, since 1937, and asserts that it is known internationally not only due to being the national rail carrier in France, but also because of its high speed record setting train, the TGV. Upon discovery of the disputed domain name, Complainant contacted the holder of the domain name, transmitting a cease and desist letter on September 29, 2009; the then holder of the domain name subsequently transferred the domain name to Respondent. Although the website to which the disputed domain name resolves has recently been blocked, the only activity observed on this website by Complainant was links to travel discount websites. As Complainant's business is transportation, Complainant asserts that it is clear that Respondent was aware of this when registering the domain name as well as when populating the website with links.
Complainant further asserts that by nature of the actions of Respondent, the notoriety of Complainant's name and the content of the website under the disputed domain name, Complainant puts forth that Respondent has purposefully registered a domain name identical or confusingly similar to those owned by Complainant to which it has no rights or legitimate interest and which it registered and used in bad faith.
Respondent did not reply to Complainant's contentions.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
Respondent submitted, in addition to trademarks, references to multiple websites containing the trademark SNCF. The addition of “horaires” to this trademark does not serve to differentiate Respondent's website from Complainant's mark. It in fact reinforces the relation to the Société Nationale des Chemins de Fer Français as, in their function as the national railway company of France; schedules, or “horaires” in French, are a large part of their everyday operations. Indeed, Complainant is in possession of seven (7) websites containing a combination of “horaires” and “SNCF”, one of which is <horairesncf.fr>, the same as the domain name here in dispute with the exception of “.fr” instead of “.com”. Thus the disputed domain name is obviously confusingly similar to marks in which Complainant has rights.
As Respondent is in default in this matter, it has not presented any claim to its rights to the disputed domain name or that it has a legitimate interest in this domain name, and Complainant convincingly denies that Respondent could have any such rights. There are, furthermore, no facts or reasons to infer that Respondent has any rights or legitimate interest in the well-known SNCF mark. So this element of the Policy is also proven.
Complainant would clearly have had knowledge of the SNCF name and rights when it registered the disputed domain name in December 2006. The addition of the word “horaires” does not diminish Respondent's knowledge, to the contrary, it evidences Respondent's bad faith as it knew Complainant's business and was setting up the disputed domain name to trade upon it. This is confirmed by Respondent's actual behavior. Screenshots of the disputed website submitted by Complainant contained links to various travel discount sites including “www.trains-horaires.com” and “www.voyagermoinscher.com” both of which seem to be related to the transport business, albeit in competition with Complainant. These links are the only content of the website, it does not in itself put forth any service or goods but is merely a portal to competitors of its namesake. As Complainant's business solely involves transportation, it is clear that Respondent wished to use Complainant's reputation in order to attract visitors to this website and cause them to click on the links contained therein. Complainant, on September 29, 2009, transmitted by email a cease and desist letter to the holder of the disputed domain name <horairesncf.com>, after which the domain name was transferred to Respondent; this can be further indicia of bad faith, see, Mäurer + Wirtz GmbH & Co. KG v. Lajos Kiss, WIPO Case No. D2007-1696. By nature of the use of the disputed domain name, the transfer of its ownership in late 2009 and the notoriety of Complainant and its marks, it is clear that Respondent has both registered and used the disputed domain name 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, <horairesncf.com>, be transferred to Complainant.
Dated: April 9, 2010