WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français, SNCF v. Bilal Kapadia
Case No. D2011-0590
1. The Parties
The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France, represented by Cabinet Santarelli, France.
The Respondent is Bilal Kapadia of Karachi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <seniorsncf.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 1, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On April 4, 2011, Fabulous.com 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 April 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 9, 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
Complainant, commonly known as “SNCF”, is the French State-owned railway company, operating France’s national rail services including its high-speed rail network. Complainant is well known in Europe as an entity involved in transportation and travel businesses.
Complainant's online services are offered through the website “www.voyages-sncf.com”.
Complainant employs more than 180,000 people in 120 countries across the globe and had a turnover of 17,8 billions Euros in 2009.
The company name SNCF has been registered in the French commercial register since 1955. This acronym has been in use since 1937.
Complainant owns various SNCF trademark registrations in connection with transportation, travel services and related goods, inter alia:
French trademark, Reg. No. 3344303, Reg. date March 2, 2005, covering goods and services in international classes 12, 16, 18, 25, 28, 39, 41 and 43;
French trademark, Reg. No. 3594312, Reg. date August 14, 2008, covering goods and services in international classes 9, 16, 18, 24, 35, 36, 38 and 39;
International registration, Reg. No. 878372, Reg. date August 23, 2005, covering goods and services in international classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43, and
International registration, Reg. No. 1001673, Reg. date September 10, 2008, covering goods and services in international classes 9, 16, 18, 24, 35, 36, 38, 39 and 42.
The disputed domain name was registered on January 21, 2011.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
The disputed domain name reproduces in its entirety Complainant’s mark SNCF. The mere addition of the descriptive word "senior" is insufficient to avoid confusion with Complainant's trademark. The term "senior" is used by the Complainant in relation with its discount card services named “SNCF CARTE SENIOR”, which for instance offers a discount of up to 50 per cent in train tickets for people over 60 years old. Moreover, Complainant is the owner of the domain name <senior-sncf.com>. Internet users can, by omitting the hyphen between the terms "senior" and "sncf", be brought to type the disputed domain name instead of the searched domain name. This circumstance highly increases the risk of confusion. The addition of the term "senior" does not dispel confusion, but rather accentuates the unauthorized connection with Complainant.
Respondent has not been licensed or otherwise authorized by Complainant to use the trademark SNCF, or any other confusing signs, or to register any domain name incorporating the trademark SNCF, or any other confusing signs, nor has Complainant acquiesced in any way to such use or registration of the sign "SNCF" by Respondent.
Respondent, to the knowledge of the Complainant, has neither rights nor legitimate interests in the disputed domain name. In addition, the disputed domain name resolves to third party websites. By diverting traffic to these websites and by using paid link advertisements, Respondent is using Complainant's trademark for its own commercial purposes. This use therefore demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
On December 7, 2010, Complainant sent a cease and desist letter to the registrant of the disputed domain name, and on December 20, 2010, Complainant sent a reminder. In these letters, Complainant referred to its SNCF trademarks, and requested Respondent to transfer the disputed domain name. Respondent never replied to these letters, which is evidence that the Respondent had no legitimate interest in the domain name.
The disputed domain name resolves to a parking website in French language, providing links to third party websites notably relating to travel. It therefore targets a French speaking audience. French Internet users are therefore likely to realize that. Respondent' s website is either the official website of Complainant, or a site sponsored by or affiliated with Complainant. This is especially the case with people aged above 60 who may have much less experience in the use of the Internet than younger people.
Another mark owned by Complainant, TRANSILIEN, is reproduced within the website at issue. By referring to this trademark, it is very likely that the Respondent had knowledge of the Complainant and its well-known trademark SNCF when it registered the disputed domain name. The use of the term "Carte Senior Smiles" within the contested website therefore proves that the Respondent had knowledge of the Complainant's rights when registering the disputed domain name. Besides, this sign was selected to attract people looking for the Complainant's services in the travel area and divert them to websites that market goods and services offered by the Complainant's competitors. This fact is an evidence of bad faith. The website also offers links to websites linked to love ("amour" in French language). In view of this, the image of the Complainant's trademark therefore may be tarnished by being connected to said websites.
Complainant claims that the Respondent was more likely to be aware of the existence of the Complainant's trademark SNCF because said trademark is a well-known registered trademark as evidenced above. The Complainant wishes also to point out that the disputed domain name is proposed for sale. Indeed, the contested website has the following mention in French: "Enquérez-vous au sujet de ce domaine" ("Ask the price for this domain" in English). This proves that Respondent registered the domain name primarily for the purpose of selling it for valuable consideration in excess of documented out-of-pocket costs, within the meaning of §4.b (i) of the Policy and supports a finding of bad faith use. The Complainant presumes that the Respondent obtains a financial gain every time an Internet user would inadvertently access its website and activates any of the sponsored links (because the value of a domain name is often influenced by the number of times a site is visited). According to paragraph 4(c)(iv) of the Policy, this circumstance is an evidence of the registration and use of the domain name in bad faith, particularly since the disputed domain name at issue is connected with the services provided by the Complainant. Moreover, the website linked to the disputed domain name might be chosen as home page ("Faire de cette page d'accueil" in French language), or as a favorite ("Marquer cette page") so that the financial gains of Respondent might be all the more increased.
Finally, the previous registrant of the disputed domain name in dispute, who seems to be linked with the current registrant, has been a party in a previous UDRP dispute, Rue du Commerce v. Bilal Arif, WIPO Case No. D2006-0122, (<ruducommerce.com>), where a transfer of the domain name at issue has been ordered.
According to paragraph 4(c)(iv) of the Policy, the above circumstances are evidence of the registration and use of the domain name in bad faith, particularly since the disputed domain name is connected with the services provided by Complainant.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed 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) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
By submitting printouts taken from the databases of the Institut Nationale de la Propriété Industrielle (<bases-marques.inpi.fr>), Complainant has proved that it owns trademark rights in various French and international SNCF trademarks.
The disputed domain name contains Complainant’s SNCF mark in its entirety, and simply adds the generic term “senior” as a prefix plus the gTLD “.com”.
It is well established by UDRP panels that the addition of a generic term and a gTLD to a mark does not dispel the impression of confusion of the domain name with the mark. Therefore, the Panel finds that the first element of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends that Respondent has not been licensed or otherwise authorized by Complainant to use the trademark SNCF, or any other confusing signs, or to register any domain name incorporating the SNCF mark, or any other confusing signs, and that Complainant has not acquiesced in any way to such use or registration by Respondent. Moreover, Complainant has shown that by using the website at the disputed domain name Respondent has tried to lead Internet users, and senior persons in particular, into confusion, making them believe they have reached a website related to Complainant, while including links to third party websites offering services competing with Complainant. Complainant concludes that by diverting traffic to these websites and by the apparent use of a pay-per-click scheme, Respondent is using Complainant's trademark for its own commercial purposes, which demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
Considered as a whole, these contentions and supporting evidence provided by Complainant amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a complainant makes out a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)”.
Since Respondent is in default and has not submitted any comments or evidence in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant and its SNCF mark are well known in the field of transportation by train. See Société Nationale des Chemins de Fer Français, SNCF v. Elitebase, WIPO Case No. D2010-2179, finding that “[t] here is no doubt that the sign SNCF and the [Complainant´s] trademarks are well-known, particularly in France and the neighbouring countries.”)
Further, the disputed domain name is an obvious imitation of the <senior-sncf.com> domain name, at which Complainant operates a website (“www.senior-sncf.com”) offering transportation and travel services and products such as “la Carte Senior”, meant for senior citizens.
Also, the disputed domain name was registered several years after the SNCF mark had been registered in France and elsewhere, and several decades after the “SNCF” acronym was first used by Complainant in commerce and as a company name.
The Panel concludes that Respondent must have been well aware of Complainant and its SNCF mark, services and goods at the time of registering the disputed domain name, and that the likely purpose of this registration was to free-ride on Complainant’s renown and goodwill, that is, the disputed domain name was registered in bad faith.
The printouts from the website at the disputed domain name submitted by Complainant show that Respondent, by using this domain name, presumably is obtaining a profit via a pay-per-click scheme, i.e. its “www.seniorsncf.com” website is generating revenue by attracting Internet users wishing to connect to Complainant’s “www.senior-sncf.com” website, and re-directing at least some of this traffic to third party websites unrelated to and even competing with Complainant. Such use of the disputed domain name is in bad faith, pursuant to Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”)
Accordingly, the Panel concludes that the third element of the Policy is met.
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 <seniorsncf.com> be transferred to the Complainant.
Dated: May 22, 2011