WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SNCF - Société Nationale des Chemins de fer Français v. Domains by Proxy, Inc. and GMMB Inc.

Case No. D2010-2177

1. The Parties

The Complainant is SNCF - Société Nationale des Chemins de fer Français of Paris, France, represented by Inlex IP Expertise, France.

The Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America and GMMB Inc, of Washington, District of Columbia, United States of America, represented by James & Hoffman, United States of America.

2. The Domain Names and Registrar

The disputed domain names <sncfamericas.com>, <sncfamericas.org>, <sncfus.com>, and <sncfus.org> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On December 16, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response to the Center indicating that the Respondent Domains By Proxy, Inc. is not the current registrant of the Domain Name. The Registrar identified “GMMB” as the current registrant, providing the contact details for the administrative and technical contact.

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 Respondents of the Complaint, and the proceedings commenced on December 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2011. The second Respondent on December 22, 2010 submitted an email to the Center which in almost all aspects failed to comply with the requirements for a response under paragraph 5(b) of the Rules. While this email as regards formal requirements fails to comply with said paragraph, as regards substantive issues it can be seen as claiming legitimate interests in the disputed domain names. By email of December 23, 2010 the Center suggested to the Complainant to request a suspension of the proceedings. The Complainant chose not to follow up on this suggestion.

The first Respondent did not submit any response.

The Center notified the Respondents’ default on January 11, 2011.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 17, 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.

On January 19, 2011 the second Respondent filed a document titled “Response by Respondent GMMB Inc”. The following day the Center acknowledged to the second Respondent the receipt of this document and referred the second Respondent to the Rules giving the Panel sole discretion to determine the admissibility of this Response.

4. Factual Background

The Complainant is the only French State-owned railway company which operates the French passenger’s railway system and was the only company operating in the rail freight services until 2006.

The company’s name was registered before the commercial French Register in 1955 and its acronym has been used since 1937.

The Complainant inter alia has registered the following trademarks:

- American trademark SNCF No. 77940144, filed on February 19, 2010, in classes 12, 35, 36, 37 and 42.

- French trademark SNCF No. 06 3 424 107 registered on April 19, 2006, in classes 12, 35, 37, 39, 41, 42.

- French trademark SNCF and device No. 05 3 344 303 registered on March 2, 2005, in classes 12, 16, 18, 25, 28, 39, 41, 43.

- International trademark SNCF and device No. 878 372 registered on August 23, 2005, in classes 12, 16, 18, 24, 25, 28, 35, 39, 41, 43, designating Switzerland and European Union.

The Complainant also registered a high number of domain names including SNCF alone or associated with the terms “America” or “USA”.

The Respondent Domains By Proxy, Inc. is an affiliate of the Registrar, GoDaddy.com, Inc., providing a “private” or anonymous domain registration service. The disputed domain names were registered using that service, so that Domains By Proxy, Inc. appeared as the registrant in the Registrar’s WhoIs database. However, the service agreement apparently provided for the registration to revert to the real party in interest in the event of a dispute. In response to the Center’s request for registrar verification, the Registrar informed the Center that the registrant of the Domain Name is actually “GMMB”.

The second Respondent is a communications company.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant is the only French State-owned railway company which operates the French passenger’s railway system and was the only company operating in the rail freight services until 2006.

The company’s name was registered before the commercial French Register in 1955 and its acronym has been used since 1937. In France, this is the only company which is able to provide for this service.

The acronym SNCF is used as trade name, trademark and domain name which are used on the whole French territory and in Europe.

The website “www.voyages-sncf.com” is placed at the first position among e-business websites in Europe.

The SNCF Company is very well-known in France and its SNCF trademarks have already been recognised as such by other UDRP decisions inter alia Société Nationale des Chemins de fer Francais v. Natasya Widjaja, WIPO Case No. D2009-1173 (<velo-sncf.com>); and Société Nationale des Chemins de Fer Francais v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-1185 (<transiliensncf.com>).

The Complainant registered a high number of domain names including SNCF alone or associated the terms “America” or “USA”. These domain names are all used for transport services and redirect towards the website “www.sncf.com”, accessible in English.

The disputed domain names <sncfamericas.com> and <sncfamericas.org> are quasi-identical to the Complainant’s domain name <sncfamerica.com> and are very similar to the other domain names of the Complainant, which were all registered before these disputed domain names.

The four disputed domain names are composed of:

- the identical well-known trademark and Company name SNCF placed in first position;

- the elements “americas” and “us”, which both constitute geographical indications, clearly referring to the United States of America and that can consequently be considered as descriptive of the proposed services’ origin, their presence is not sufficient to avoid any risk of confusion in the pertinent consumer’s mind;

- the inconsequential gTLD “.com” and “.org” have to be ignored, in accordance with the constant current case law.

The four disputed domain names will obviously be perceived as belonging to the well-known company SNCF for the American territory.

The Respondent was certainly aware of the existence of the Complainant’s trademarks when it registered all the disputed domain names. Such awareness is made obvious by the importance of the trademark SNCF and by the notoriety of the SNCF Company worldwide.

The Complainant has been intensively developing its activity on the territory of the United States of America since 2009 and in this regard, has reserved domain names with the terms “sncfamerica” and “sncf-america” with several extensions on March 3, 2010, i.e. one month before the reservation of the disputed domain names by the Respondent.

To the Complainant’s knowledge, the Respondent has no activity under the name SNCF and the disputed domain names do not correspond to the Respondent’s name. Moreover, the Respondent has no activity in relation with transport. On the contrary it is a company identified as a communication agency.

The Complainant has never granted any license or any other kind of authorization to the Respondent to use its SNCF trademarks or any other similar sign like SNCFAMERICAS or SNCFUS.

The disputed domain names redirect towards a web page with commercial links (“parking page”), in relation to the Complainant’s field of activity i.e. “transport”, and even provides commercial links to competitors’ websites like “www.voyagermoinscher.com”, www.kelbillet.com, and www.thalys.com.

Neither in English nor in French, SNCF is considered a common word. Thus, it is unthinkable that the Respondent has registered these domain names by chance or coincidence, since they have no meaning for him.

If the Respondent had checked:

- on the WIPO website , he would easily have seen that SNCF was a registered trademark; or

- on the WIPO data bases for domain name cases, he would have come across some decisions ordering the transfer of a domain name containing the acronym SNCF to the benefit of the SNCF Company; or

- by a simple search on Internet via Google, he would also have seen that SNCF is a well- known French Company.

These preliminary verifications are very simple, but are necessary for a person who wants to register a domain name in a good faith.

It is consequently obvious that the Respondent could not ignore the Complainant’s rights over the name SNCF and he did not have any reason to register this domain name save for his aim to retain some financial benefit from such registration (by selling this domain name to the Complainant or by taking advantage of the well-known SNCF trademark to generate some traffic on its web pages by way of “pay-per-click”).

By reserving the disputed domain names, the Respondent intended to use the Complainant’s trademarks and their reputation to attract consumers onto its website and gain money from the pay-per-click system.

B. Respondent

The second Respondent does not dispute that the disputed domain names are similar to the trademarks in which the Complainant has rights. The second Respondent does not dispute either that it does not have independent rights or legitimate interests in the domain names.

The second Respondent only denies that the disputed domain names were registered in bad faith. Starting with its email to the Center of December 22, 2010 and further elaborating on this issue in section V.C of the late Response the second Respondent contends that it was requested by the Complainant to submit a proposal for services to the Complainant and that the registration of the domain names was accomplished in the course of the preparation of that offer and for such purpose only. The second Respondent further contends that the domain names were reserved solely as a part of its strategic program proposal to the Complainant and solely with the intent that the names be used by the Complainant. The second Respondent emphasizes that it was not its intent to sell the domain names to the Complainant.

6. Discussion and Findings

A. Several Respondents; Deficient and Late Responses

The Panel’s discretion to admit late and deficient responses falls within its general discretion under paragraph 10(a) of the Rules to conduct the administrative proceeding in the manner it considers appropriate in accordance with the Policy and Rules. Under paragraph 10(b) of the Rules, the Panel has a duty to ensure that the parties are treated equally, that each has a fair opportunity to present its case, and that the proceedings are conducted expeditiously.

Although panels have in some circumstances exercised their discretion to accept administratively deficient responses, other panels have been reluctant to do so.

Where a late response clarifies an issue fundamental to a dispute, however, and its admission will not prejudice either party or substantially delay the proceedings, it may be appropriate to take the contents of the response into account. In this case, while both from the Complaint and the verification response provided by the Registrar the identity/legal status of the second Respondent remained unclear the Response filed by GMMB, Inc. clarifies that this corporation is the beneficial owner of the disputed domain names and that the registrant on record, the first Respondent, is merely a privacy service.

Taking all these factors into account, it is clear that the late Response casts light on an important issue in the dispute, i.e. the identity of the second Respondent. The Panel finds that the late response is credible on the issue of GMMB, Inc.’s claimed ownership of the disputed domain names. The Panel therefore admits the late Response into the proceeding and treats GMMB, Inc. as a co-Respondent.

This, however, does not have an impact on the fact that Domains by Proxy, Inc. was also named as a respondent in the Complaint (due ostensibly to its appearance in the publicly-accessible Whois at the time of the filing of the Complaint). The acceptance of GMMB, Inc as co-Respondent does not by nature eliminate Domains by Proxy, Inc as a party to these proceedings. The Panel therefore maintains Domains by Proxy, Inc. as co-Respondent.

Given, however, the limited remedies available under paragraph 4(i) of the Rules the existence of the two co-Respondents in these proceedings has limited, if any, impact.

A late Response naturally has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit a late Response will depend inter alia also on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not.

In this case, the late Response also elaborates on the statement by the second Respondent on the issue of legitimate interests in the disputed domains and adduces clarification on questions related to the registration and use in bad faith (paragraph 4(b) of the Rules). Since the late Response was filed only two days after the appointment of the panellist, the admission of the late Response does not lead to delaying the proceedings.

The Panel has considered whether the Complainant should be given an opportunity to reply to the late Response. It has come to the view that it should not. The arguments in the late Response shed further light on the behaviour of the second Respondent as shown in these proceedings prior to the filing of the late Response and described in section 3 hereof. The Parties will not be prejudiced, and procedural efficiency will be better served, by the Panel proceeding to a decision based on the materials now before it.

B. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See e.g. Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419 including references to numerous previous cases).

The disputed domain names wholly incorporate the distinctive and well-known trademark or the key verbal element SNCF of the Complainant’s well-known trademarks. The fact that the terms “US” and “Americas” respectively are added to the Complainant’s trademarks does not eliminate the confusing similarity between the Complainant’s trademarks and the disputed domain names, as those additions are purely descriptive components of the disputed domain names. Internet users will assume that the disputed domain names relate to the Complainant’s services in the United States of America and the countries on the American continent(s). In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks. This also applies in case (only) the most distinctive element of the Complainant’s trademarks is incorporated; this also applies regarding the Complainant’s device marks since they contain the same dominative element and besides that only show a graphic element of minor distinctiveness.

It is also well established that the specific top level of a domain name such as “.com”, “.org”, or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

The second Respondent does not dispute that the disputed domain names are similar to trademarks in which Complainant has rights.

The Panel thus finds that the disputed domain names are confusingly similar to the trademarks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Respondent has not been licensed, or otherwise authorised by the Complainant in any way to use the or to register any domain name incorporating the word “sncf” of Complainant or any other confusing signs, nor has the Complainant acquiesced in any way to such use or registration of any domain name incorporating the keyword “sncf” by the Respondent.

The Panel, in particular because the Respondent did not contest such allegation, has no reason to doubt such (negative) allegations by the Complainant. Also, the second Respondent does not dispute that it does not have rights or legitimate interests in the domain names

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The disputed domain names resolve to third party websites. The use of the disputed domain names to direct visitors to various third party commercial websites does not constitute a legitimate, bona fide use of the domain names under the Policy and does not confer legitimate interests in the domain names. The website to which the disputed domain names resolve refer to the Complainant’s core business. Internet users are therefore likely to get the idea that the Respondent’s websites are endorsed or sponsored by the Complainant. This is not changed because two of the domain names presently are not available any more. This and the offer: “Want to buy this domain? Our domain buy service can help to get it.” on the resolved web sites prove that the Respondent registered the domain names for the purpose of selling them for valuable consideration in excess of documented out-of-pocket costs, within the meaning of paragraph 4b (i) of the Policy and supports a finding of bad faith use.

There is no doubt that the sign SNCF and the trademarks are well-known, particularly in France and the neighbouring countries. The Panel finds that the second Respondent on purpose included (the keyword of the Complainant’s) trademarks into the disputed domains in order to attract, for commercial use, Internet users to its websites or the websites to which the disputed domain names resolve to. This view is also supported by the near identity of the disputed domain names to the Complainant’s domain names.

The second Respondent in the late Response contends that the disputed domain names were reserved solely as a part of its strategic program proposal to the Complainant and solely with the intent that the these domain names be used by the Complainant. The second Respondent emphasizes that it was not its intent to sell the disputed domain names to the Complainant. Such statements apparently are made aiming at supporting the argument that second Respondent did not act in bad faith pursuant to paragraph 4(b)(i) of the Policy. However, if the registrant of a domain name does not offer to sell the domain name to the holder of trademarks, this does not per se lead to the conclusion that it did not register the domain names in bad faith. If the second Respondent had acted like a communications company in good faith it never would have registered the domain names in its own name and granting its (potential) customer only the right to use the trade names. The second Respondent here is caught by its own argument and by (deliberately) misinterpreting paragraph 4(b)(i) of the Policy in the sense that the non-compliance with actions referred to therein would automatically exclude bad faith. This is not the case.

The second Respondent in the late Response also contends that it was invited to submit an offer for its services by Mr. Maloof and Mr. Le Caignec. The second Respondent fails to submit any evidence in this respect. The Panel therefore believes that the second Respondent’s statements are not credible as it would be easy for the second Respondent to submit evidence to support those statements, if it did exist.

The panel therefore finds that the Complainant has established the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <sncfamericas.com>, <sncfamericas.org>, <sncfus.com>, and <sncfus.org> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Dated: February 1, 2011