WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français, SNCF v. Henrico Goldner
Case No. D2012-1880
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 Henrico Goldner of Fort Lauderdale, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <usncf.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2012. On September 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2012, the Registrar 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 September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on October 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. It is usually known as “SNCF”. The Complainant operates the country’s national rail services, including the TGV, France’s high-speed rail network. The Complainant is widely recognized in Europe and around the world as an entity involved in transportation and travel business by rail. The Complainant’s on-line services are offered through its website at “www.voyages-sncf.com”. The Complainant also operates websites at various domain names: including <sncf.com>, <sncf.fr>, and <sncfus.com>. The latter domain names revert to the Complainant’s main website at “www.sncf.com”, which contains content in both French and English. The Complainant provides evidence of registering around 1150 domain names which include its mark.
The SNCF Group employes more than 246,000 people in 120 countries around the world and has a turnover of EUR 30.5 billion (in 2010). The Complainant operates 14,000 trains daily and transports around 1 billion customers per year.
The disputed domain name was registered in December 2011.
The Complainant has been a complainant in a series of cases under the Policy involving its SNCF mark. Recently these include, for example, Société Nationale des Chemins de Fer Français SNCF v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2012-0107 and Société Nationale des Chemins de Fer Français SNCF v. Direct Privacy ID E2D4A, WIPO Case No. D2012-0229. In the former case, the panel found that “The Complainant’s name and main trademark, SNCF, is widely known, in Europe and throughout the world.” In the great majority of UDRP cases involving the Complainant’s mark, the panel ordered in the Complainant’s favor.
5. Parties’ Contentions
The Complainant makes the allegations against the Respondent under paragraph 4(a) of the Policy.
Firstly, the Complainant says that it has rights in the SNCF mark. The Complainant provides various evidence of its registered rights for that mark, including for marks registered in France since 2005, and international registrations. The Complainant says that the disputed domain name is confusingly similar to its registered mark, which the disputed domain name incorporates entirely. The Complainant says that the addition of the prefix “u” in the disputed domain name does not eliminate confusing similarity, since the remainder of the domain name is identical to the Complainant’s registered mark. As a complementary argument, the Complainant says that a quick scan of the disputed domain name may lead an Internet user to see the descriptive word “us” – which corresponds to the ISO code and common abbreviation for the United States of America. This increases the likelihood of confusion as the Complainant is the owner of numerous domain names containing the ISO code “us”, such as <sncfus.org>.
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant points to its registered marks, the availability of its websites in various languages, and the intensive development of its activity in the United States of America since 2010. The Complainant says that the Respondent was certainly aware of the Complainant when he registered the disputed domain name. “Sncf” is not a generic term and is an acronym for the Complainant’s name.
The Complainant sent a “cease and desist” letter, to which the Respondent provided no reply with any evidence or reasons for his choice of the “sncf” component in the disputed domain name. There is also no specific website to which the disputed domain name reverts. The Complainant provided evidence that the disputed domain name reverts to a holding page advertising services of the Registrar and offering the disputed domain name for sale. The Respondent is not licensed or otherwise authorized by the Complainant to use its trademark in the disputed domain name.
Thirdly, the Complainant says that the disputed domain name was registered and has been used in bad faith. The Complainant says that the inclusion of its mark in the disputed domain name indicates that the Respondent had the Complainant in mind when that domain name was registered. The Complainant also points out that it is well known in France and abroad, and that “sncf” is not a common or generic word. Among other things, the Complainant says that a simple search of the WIPO international trademarks database would have disclosed that SNCF is a registered mark, that a search of the Center’s UDRP domain name decision database would provide copies of previous decisions in the Complainant’s favor, and that a simple Google search for the term “sncf” would have indicated that the Complainant is a well-known company. The Complainant says that the registration of the disputed domain name is an example of typo-squatting. The Complainant says that the “passive holding” by the Respondent of the disputed domain name is also indicative of bad faith. The Complainant presumes that the Respondent is obtaining some financial gain for this holding, and provides evidence of a “pop up” window that appears when redirected to the website at the disputed domain name, suggesting that the Internet user has won a prize.
The Complainant sent a cease and desist letter to the Respondent but got no reply.
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Respondent must submit to a mandatory administrative proceeding in the event that a third party (a complainant) asserts, in compliance with the Rules, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant in this case has made those assertions in compliance with the Rules. In this administrative proceeding, the Complainant must prove that each of these three elements are present. As such, each of these three elements are discussed in turn as follows.
A. Identical or Confusingly Similar
The first issue under paragraph 4(a)(i) of the Policy is whether the Complainant has rights in a mark and, if so, whether the disputed domain name is identical or confusingly similar to that mark.
There is no dispute that the Complainant has rights in a mark. The Complainant provided evidence of its registered rights for SNCF. Those rights have been recognized in previous decisions under the Policy.
The issue then is whether the disputed domain name is confusingly similar to that mark. As noted by previous UDRP panels “[i]nitial confusion by an Internet user when seeing or typing the disputed domain name is the focus of paragraph 4(a)(i). It is the simple appearance of similarity – to an Internet user – than can make the disputed domain name confusingly similar to the trademark”. Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776. It is also notable that this is “a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion”. Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299. This does not mean, however, that terms associated with a mark, and incorporated in a disputed domain name, are not relevant for the purpose of comparison – such terms may be relevant if they serve to reinforce an impression of confusing similarity. See, e.g., The Hotel Ritz, Limited v. Kim Min-Kouk, WIPO Case No. D2004-0154.
Applying these approaches, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s registered mark for SNCF. Neither “sncf” or “usncf” are common terms. There is only one letter difference between them. (The “.com” extension to the disputed domain name may be disregarded when doing this comparison, as it is purely a functional component of the disputed domain name.) The Complainant’s mark is entirely incorporated in the disputed domain name with only the addition of the letter “u” as a prefix. The Complainant’s mark is the dominant element in the disputed domain name, both visually and phonetically. Primarily on this basis, the Complainant asserts that the disputed domain name is confusingly similar to its mark. The Panel also notes that the four letter string “sncf” appears to have limited associations other than with the Complainant.
The Panel accepts that the Complainant is a significant transport provider and has, for a substantial period of time, being well known in France and other jurisdictions as “SNCF”. As such, that mark appears relatively distinctive. When a domain name incorporates, in its entirety, a distinctive mark, that may create sufficient similarity between the mark and the domain name to render it confusingly similar: see, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
There are many previous UDRP panel decisions where the omission of one letter between a domain name and a mark is not sufficient to avoid confusing similarity: see, e.g., Pfizer Inc., supra. The addition of one letter also does not avoid confusing similarity for somewhat similar reasons. The addition of the letter “u” in this case may serve to reinforce an impression of confusion, by creating an overlapping association between the acronym “us” (for the “United States”) and “sncf” (representing the Complainant’s mark).
The Complainant also claims that the addition of the letter “u” in this case is an example of “typosquatting”. This Panel considers that this question is more relevant to the issue of bad faith, rather than confusing similarity (which is an approach adopted by previous panelists, e.g., Sharman License Holdings Limited v. Icedlt.com, WIPO Case No. D2004-0713). This is because an inquiry as to “typosquatting” involves, in effect, some consideration to the motivations of the Respondent. The issue of confusing similarity however involves a more objective consideration of the initial and overall impression created between the disputed domain name and the relevant mark.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
The second issue which the Complainant must prove is set out in paragraph 4(a)(ii) of the Policy. This is that the Respondent has no rights or legitimate interests in the disputed domain name. The consensus of previous decisions under the Policy is that a complainant establishes this element by making out a prima facie case against the respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1). Here, the Complainant has sufficiently made out such a case. The burden then shifts to the Respondent to rebut the case against it.
The Respondent has submitted no response and so has not rebutted the Complainant’s case against it. There is otherwise no evidence in the case file that suggests that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence as to the business of the Respondent. The website to which the disputed domain name resolves is “parked”. The Complainant provides some evidence of potential “click through” activity associated with the disputed domain name, including pop up windows, and sponsored advertising, and the offer of the disputed domain name for sale. Previous UDRP panels have found that the use of a domain name, incorporating a complainant’s mark, in connection with comparable activity, is not relevantly bona fide. See, e.g., Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073. In the absence of any evidence that “usncf” has a descriptive meaning, and because of the circumstantial evidence of bad faith as set out below, the Respondent’s use in this case appears relevantly similar.
For these reasons, the Panel finds that the Complainant has established that this second element is present.
C. Registered and Used in Bad Faith
The third element which the Complainant must prove is that the disputed domain name has been registered, and is being used, in bad faith. While this element of the Policy has a conjunctive requirement (registration and use in bad faith), evidence of one can be evidence of the other. That is, in appropriate circumstances, evidence of registration in bad faith may go towards a finding of use in bad faith, and vice versa.
There is no clear evidence of the Respondent’s motivation for registering the disputed domain name in December 2011. However, the Respondent’s “use” of the disputed domain name, together with the other circumstances indicated in the case file, is suggestive of bad faith. These include at least the following:
- the Respondent has submitted no reply. While this does not, taken by itself, show bad faith, it does not go in the Respondent’s favor. Taken with other circumstances, failure of a respondent to submit a response in previous UDRP cases involving the Complainant has been found to be indicative of bad faith: See, e.g., Société Nationale des Chemins de Fer Français SNCF, SNCF International v. Zhao Ke, WIPO Case No. D2011-1503);
- the Respondent has provided no evidence of registering or using the disputed domain name in good faith;
- the Complainant’s mark is well known and widely used;
- the Complainant’s mark is incorporated entirely in the disputed domain name;
- the disputed domain name is confusingly similar to the Complainant’s mark;
- there is no evidence in the case file that “usncf” has an association with the Respondent, or is a common term. This is suggestive that the Respondent knew of the Complainant’s mark and registered the disputed domain name because of its confusing association with that mark;
- nothing in the Respondent’s passive parking of the disputed domain name suggests a good faith use. Rather there are some indications the Respondent has registered the disputed domain name for financial gain, including possible “click through” revenue;
- the Respondent was sent a “cease and desist” letter but did not respond.
For all these reasons, the Panel finds that the Complainant has established bad faith under paragraph 4(a)(iii) of the Policy.
This does not mean that all of the Complainant’s arguments against this ground have merit. In particular, the Complainant draws some bad faith inference from the fact that, had the Respondent undertaken searches of, among other things, the Center’s database of UDRP panel decisions, or the WIPO international trademark database, the Respondent would have discovered that SNCF is a registered mark. While paragraph 2 of the Policy requires a domain name registrant “to determine whether your domain name infringes or violates someone else’s rights”, no particular searches are prescribed. Moreover, paragraph 4(b) sets out examples of registration and use in bad faith. A failure to undertake a particular trademark search is not one of them. Some UDRP panels have found that some respondents have an obligation to make some reasonable effort to determine whether a registration might violate the trademark rights of others. This has particularly arisen in the case of respondents who register domain names in bulk, or those (such as a “sophisticated domainer”) who should know better: See, e.g., Corrections Corporation of America v. Texas International Property Associates, WIPO Case No. D2008-0280. But there is no evidence that this is such a case.
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 <usncf.com> be transferred to the Complainant.
James A. Barker
Dated: November 6, 2012