WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2011-0447
1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France represented by Cabinet Santarelli of France.
The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands Overseas Territory of United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy Australia.
2. The Domain Name and Registrar
The contested domain name <sncfhoraire.com> (“Domain Name”) is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2011. On March 9, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the contested domain name. On March 10, 2011, 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 March 15, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on March 15, 2011.
The Center verified that 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 March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2011.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on April 14, 2011. 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 is internationally recognized.
The Complainant, usually known as “SNCF”, operates the country’s national rail service, including the TGV, France’s high-speed rail network. The company SNCF is widely recognized in Europe and around the world as an entity involved in transportation and travel businesses. The Complainant’s online services are offered through the website “www.voyages-sncf.com”. The Complainant employs more than 180.000 people in 120 countries across the globe and has had in 2009 a turnover of EUR17,8 billion. The Company name has been registered in the French commercial register since 1955 and its acronym has been in use since 1937.
The Complainant has valid registered trademarks for the word “sncf” which is used in connection with transport services and travel agencies services, as well as related goods. The Complainant owns numerous domain names including “sncf” alone or in combination with other words such as <horairesncf.com>, <sncfhoraries.fr> and so on.
The Respondent has registered the contested Domain Name on June 9, 2010. The website resolves to a parking website in French language.
5. Parties’ Contentions
The Complainant contends the following:
(a) The contested Domain Name is confusingly similar to the trademark of the Complainant because:
- it reproduces the Complainant's trademark in its entirety;
- the addition of the word “horaire” in the contested Domain Name is insufficient to avoid confusion with the Complainant’s trademarks;
- the addition of the gTLD indication “.com” does not prevent likelihood of confusion since it is necessary for the registration of the domain name itself.
(b) The Respondent has no rights or legitimate interests in respect to the Domain Name because:
- the Complainant has never given to the Respondent any license or authorization to use the Complainant’s trademark or any other confusing signs, or to register any domain name incorporating the trademark SNCF or any other confusing signs;
- the Respondent has no registered trademarks or trade names corresponding to the contested Domain Name.
(c) The contested Domain Name was registered and is being used in bad faith because:
- the contested Domain Name resolves to a parking website in French language providing links to third party websites, notably relating to travel;
- the Respondent answered to the cease and desist letter proposing to sell the contested Domain Name at the price of USD 500;
- the Respondent at the time of the registration of the contested Domain Name was surely aware of the trademark of the Complainant and in particular the Respondent could not ignore the strong notoriety and world renown of the Complainant’s trademark;
- the Respondent registered the contested Domain Name in order to prevent the Complainant from registering it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The contested Domain Name <sncfhoraire.com> incorporates the term “sncf” which constitutes the Complainant's trademark.
The only difference between the contested Domain Name and the trademark of the Complainant is the addition of the word “horarire”. The addition of the mentioned French word, which is a generic term, does not add a distinctive element to the contested Domain Name and does not render it dissimilar to the trademark of the Complainant.
Moreover, such addition increases the likelihood of confusion between the contested Domain Name and the Complainant's trademark, because SNCF is a well-known trademark for railway and “horaire” means time-schedule and therefore the addition of the term “horaire” to the Complainant’s trademark just strengthens the bond and relation with it.
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established inter alia when a domain name wholly incorporates a complainant's mark and only adds a generic word along with it (see i.e., F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694; Deceininck nvand, Thyssen Polymer GmbH v. Dimitriy Beloussov, WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526).
Additionally, the Panel does not consider, when analyzing the identity or similarity, the suffix, in this case “.com,” because it is a necessary component of the Domain Name and does not give any distinctiveness (see i.e., Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
Therefore the Panel finds that the contested Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant has several trademark registrations for SNCF and owns several domain names, which include the trademark SNCF. Therefore it has been proven that the Complainant has rights in the SNCF trademark.
The Respondent has not filed any response in this case. There is a prima facie case made by the evidence provided to the Panel that the Respondent has no rights or legitimate interests in the contested Domain Name, (see paragraph 4(c) of the Policy; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840; and UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark SNCF, nor has the Respondent been authorized to register and use the contested Domain Name
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the contested Domain Name.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the existence of the SNCF mark owned and used by the Complainant. Only someone who was familiar with the Complainant's mark and its activity would have registered the contested Domain Name inclusive of such mark (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131 and Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the contested Domain Name, nor is there evidence of any rights or legitimate interest in said Domain Name by the Respondent. The Panel finds that, in the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of a Domain Name confusingly similar to the Complainant’s trademark was done in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157. Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Panel is of the opinion that the Respondent has registered the contested Domain Name primarily for the purpose of selling it for valuable consideration in excess of documented out-of-pocket costs (see Baccarat SA v. Jacques Touroute, WIPO Case No. D2008-0010; Compagnie Gervais Danone contre. Sarl Biu, WIPO Case No. D2007-1824; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Moreover the contested Domain Name resolves to a parking website in French language providing links to third party websites some of them related to travel. The Panel finds that the use of the Domain Name which points to websites that offer sponsored links to other websites providing services or goods which are similar to those offered by the Complainant’s own websites and which are directed to French Internet users is evidence of bad faith (Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556). It is also likely that the Respondent obtains a financial gain every time an Internet user would inadvertently access its website and performs activities on anyone of the sponsored links. Also this behavior can be considered an evidence of the registration and use of the contested Domain Name in bad faith.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel finds that the Complainant has demonstrated that the contested Domain Name was registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sncfhoraire.com> be transferred to the Complainant .
Dated: April 27, 2011