WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français SNCF v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-0107
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 Above.com Domain Privacy of Beaumaris, Australia / Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sncf-grandvoyageur.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 20, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 24, 2012, 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 January 25, 2012 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 January 26, 2012.
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 January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2012.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on February 23, 2012. 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, Société Nationale des Chemins de Fer Français SNCF. Although based and doing business in France, the Complainant is recognized internationally as a company doing business in the transportation and travel field.
The Complainant’s name and main trademark, SNCF, is widely known, in Europe and throughout the world. The same happens to other marks owned and exploited by the Complainant, such as TGV, that identifies the renown high speed French rail network. The Complainant also owns a registration for trademark GRAND VOYAGEUR SNCF, which identifies the frequent travelers program.
The Complainant holds several trademark registrations for trademark SNCF, in France and internationally, granted to identify a wide variety of goods and services, beside the Complainant’s core business, transportation and travel services. Copies of these registrations were submitted by the Complainant.
Besides the above mentioned trademark registrations, the Complainant also owns a wide list of domain names composed by the main trademark SNCF, as well as domain names containing trademark GRAND VOYAGEUR SNCF. Among these last ones, it is interesting to note that the Complainant is the owner of the domain name <sncfgrandvoyageur.com>, which is almost identical to the disputed domain name.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <sncf-grandvoyageur.com> bears the famous trademark SNCF, associated with the expression GRAND VOYAGEUR, which is part of one of the mark used to identify the Complainant’s fidelity program, GRAND VOYAGEUR SNCF. The Complainant claims that this was made in a clear attempt to create confusion and mislead the consumers.
The Complainant claims not to have any relationship with the Respondent or has never given the Respondent permission to use its mark or to apply it to any kind of domain name incorporating its mark.
The Complainant sent a cease and desist letter to the Respondent but it could not be delivered. It was then sent to the support for the Registrar, which informed that the disputed domain name had been deleted by the Registrant. A few days after that the Complainant received an e-mail offering the disputed domain name for sale.
The disputed domain name was again registered and a new warning letter was addressed, claiming the illegality of the registration and the transfer of the disputed domain name. The Respondent did not respond.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel finds that the Complainant presented sufficient evidence showing it has rights in the mark SNCF, which is duly registered in several countries. In addition, the Complainant evidenced its rights in trademark GRAND VOYAGEUR SNCF, as well as in several domain names that are almost identical to the disputed domain name.
Further, the Panel finds that the disputed domain name, <sncf-grandvoyageur.com>, is indeed confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name. Besides, the disputed domain name repeats the name and mark of the referred loyalty program run by the Complainant.
Hence, the Panel concludes that the first element of paragraph 4(a) is fulfilled in this dispute.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Although contacted twice, the Respondent has not rebutted the Complainant’s contentions.
Moreover, a visit to the disputed domain name <sncf-grandvoyageur.com> leads to a web page offering several travel services, including those of the Complainant. The Complainant’s marks SNCF and TGV are used in the web page at the disputed domain name. Besides, most of the web page is in French, noting that the Complainant is located in France and therefore familiar with this language. In the Panel’s view, this, among other facts, proves that the Respondent’s interests cannot have been legitimate.
The Panel, thus, finds that the Complainant has proven the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent must have registered the disputed domain name <sncf-grandvoyageur.com> with the purpose of taking advantage of the renown of the Complainant’s mark.
As mentioned above, the disputed domain name leads to a web page offering a plethora of travel and transportation services, with links to other sites that have no business relation with the Complainant. By doing so the Respondent is apparently using the disputed domain name to attract consumers in the same field of the Complainant’s business.
The Panel understands that all evidence as above shows that the Respondent obtained the registration and has been using the disputed domain name in bad faith.
The Panel, hence, finds that the Complainant has satisfied the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sncf-grandvoyageur.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: March 8, 2012