WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Français (SNCF) v. Peter Hill
Case No. DCO2010-0024
1. The Parties
Complainant is Société Nationale des Chemins de Fer Français (SNCF) of Paris, France, represented by Cabinet Santarelli, France.
Respondent is Peter Hill of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <tgv.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2010. On September 29, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 29, 2010, the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 5, 2010. 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 Respondent of the Complaint, and the proceedings commenced on October 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2010. The Response was filed with the Center on October 18, 2010.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on November 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.
4. Factual Background
Complainant Société Nationale des Chemins de Fer Français (SNCF) is the French State railway company that operates all of France’s passenger railway system. TGV is the name of a train and related transport and travel services used by Complainant to organize railway transportation of passengers, mainly in France.
Complainant is the owner of a number of French trademark registrations for the mark TGV. Its trademark rights in France date back to August 17, 1978. Complainant also owns a Community Trade Mark registration and an international registration for the mark TGV. See Complaint, Annex 3. Complainant also owns the domain name <tgv.com>.
Respondent Peter Hill resides in Australia1. The disputed domain name was registered in July 2010.
5. Parties’ Contentions
Complainant contends that the disputed domain name <tgv.co> is identical or confusingly similar to the mark TGV. It notes that the disputed domain name reproduces the mark in its entirety and argues that the addition of the country code top-level domain “.co” does not prevent likelihood of confusion since it is necessary for the registration of the domain name itself.
Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant alleges that Respondent has not been licensed or otherwise permitted to use the TGV mark or to register any domain name incorporating such mark, nor has Complainant acquiesced in any way to such use or registration of the TGV mark by Respondent.
With respect to the issue of bad faith registration and use, Complainant points out that the disputed domain name previously resolved to a parking webpage indicating that “tgv.co is for sale.” This proves, according to Complainant, that Respondent registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of documented out-of-pocket costs, within the meaning of paragraph 4(b)(i) of the Policy. Complainant also notes that the website contained links to different websites, such as “www.beton.co”, “www.echos.co” and “www.seahorses.co”. The websites linked to these sites indicate in French and/or in English that the domains are for sale.
Complainant indicates that, following the mailing of an August 5, 2010 “cease and desist” letter to Respondent (see Complaint, Annex 6), the content of the disputed website changed. Such site now indicates, in part, that “TGV is a free service assisting in the development of TESTs and programmes GENERATION for VALIDATION of computer programmes written in C and Objective-C.” See Complaint, Annex 7. Complainant explains that it cannot provide proof of the previous webpage of the website at <tgv.co> “since the Respondent uses robot.txt to block access to the historical records of said website.”
Complainant asserts that the current website is likely to mislead Internet users into believing that the site to which the disputed domain name resolves is sponsored, endorsed or authorized by, or in association with, Complainant. “This is evidence to support that Respondent has registered and is using the domain name in bad faith. Further, there is a great risk of dilution of the Complainant’s trademark and its reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.”
In his response, Respondent notes that <tgv.co> is a free service, does not accept advertising, does not have pay per click links, has no links, and is not for sale. Respondent indicates that “tgv.co” stands for Tests Generation Validation and is a free service to help C programmers.
Here is the text of Respondent’s site:
Tests Generation Validation
For C and objective-C programmes
TGV is a free service assisting in the
development of TESTs and programmes GENERATION for VALIDATION
of computer programmes written in C and Objective-C
You love programming, but testing is boring, let us do it for you.
Contact us to develop your tests and validation.
This service is provided free of charge.
Sorry, this service is NOT available for C++
No advertising on this site.
No links from this site.
Please email PETER + @ + TGV.CO
To stop spam :
In subject line put the sum of 900+100
Respondent points out that when the new “.co” domain became available, Complainant had a three-month priority period within which to register <tgv.co> but failed or neglected to do so. According to Respondent, “[t]here is no possible confusion between a French train and a free test validation service. We don’t sell trains nor trips.”
Respondent rejects any assertion by Complainant that Respondent uses robot.txt to block access to historical records. He asserts that <tgv.co> was registered in good faith by an old C programmer trying to give free service to all C programmers.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <tgv.co> is, for all intents and purposes, identical to the mark TGV. As noted by Complainant, the disputed domain name incorporates the mark in full, adding only the country code top-level domain “.co.”2
The Panel further concludes that the evidence establishes that Complainant has rights in the mark TGV. The evidence indicates that Complainant owns trademark registrations for such mark in France as well as a Community Trade Mark registration for the mark.
B. Rights or Legitimate Interests
Though not articulated, it appears that Respondent contends he has rights or legitimate interests in the <tgv.co> domain name because he is making a legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy. In this regard, the Panel refers to the current text of the <tgv.co> site, as reprinted above, and to Respondent’s contention that “tgv” stands for Tests Generation Validation.
The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. When viewed in its entirety, the evidence supports a determination that the domain name previously resolved to a parking webpage indicating that “tgv.co is for sale” and that Respondent changed the content of his site only after receiving a “cease and desist” letter from Complainant’s counsel. While Complainant is unable to produce documentary evidence of the original content of Respondent’s <tgv.co> site, Respondent did not challenge Complainant’s assertions regarding such content or that the content changed only after Respondent received the “cease and desist” letter. There also is no evidence that the term ‘TGV” is an accepted acronym for ‘Tests Generation Validation.”
Thus, the Panel concludes that Respondent is not making a legitimate noncommercial or fair use of the domain name within the meaning of the Policy. (emphasis added)3
C. Registered and Used in Bad Faith
The Panel rules that the disputed domain name was registered and is being used in bad faith. The circumstances set forth above in connection with the discussion of “rights or legitimate interests” convinces the Panel that Respondent registered the domain name primarily for the purpose of selling the domain name for valuable consideration in excess of his documented out-of-pocket costs. The Panel further notes that Complainant’s TGV mark has been deemed a “well-known” mark by other UDRP panels (see, e.g., Société Nationale des Chemins de Fer Français v. Tang Zhiyan, WIPO Case No. D2008-1659) and has been registered in Australia, Respondent’s home country. Thus, the Panel may assume that Respondent was aware of Complainant’s mark at the time of registration of the disputed domain name. The evidence suggests that the content of such site was changed only after Respondent got caught.
In short, Respondent’s domain name registration has all the trappings of an abusive registration, the very activity the UDRP is designed to combat. The fact that there is no relationship between Complainant’s train service and the service currently advertised on Respondent’s <tgv.co> site is of no moment, given the overall circumstances of this case.
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 <tgv.co> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: November 15, 2010
1 The cease and desist letter sent to Respondent by Complainant’s counsel indicates that Complainant owns a trademark registration for the mark TGV in Australia.
2 .co is the top-level country code for Colombia.
3 The Panel notes that nothing would prevent Respondent from once again changing the content of his site and offering to sell the domain name.