WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Nationale des Chemins de Fer Français, SNCF v. Mark Tatum

Case No. DCO2010-0053

1. The Parties

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

The Respondent is Mark Tatum of Colorado Springs, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <sncf.co>. It is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

According to information and documents provided to the Panel by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:

- The Complaint was filed with the Center on December 23, 2010.

- On December 23, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.

- On December 23, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s 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 Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2010. The Center delivered the Complaint to the Respondent by email and also by UPS shipping service (delivered on December 30, 2010).

- In accordance with Rules paragraph 5(a), the due date for the Respondent to submit his Response was January 17, 2011. The Respondent did not submit any Response.

- On January 18, 2011, the Center formally notified the parties that the Respondent was in default because he failed to submit a Response, and that the proceeding would continue with a single-member Administrative Panel.

- On January 25, 2011, the Center appointed Bradley Freedman as the sole panelist in this matter. Bradley Freedman submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

Based upon the information provided by the Center, the Panel finds that it was properly constituted in accordance with the Rules and the Supplementary Rules, and that all technical requirements for this proceeding have been met.

4. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant:

- The Complainant is the well-known French, state-owned railway company that operates the French passenger railway system.

- The Complainant has used the acronym SNCF since 1937. The SNCF acronym is now used as a trade name and trademark in France and throughout Europe, and as a domain name for the Complainant’s websites.

- The Complainant is the owner of various trademarks, registered in France and the European Union, which incorporate its SNCF acronym, including – SNCF (France registration No. 06 3 424 107, registered April 19, 2006); SNCF and design (France registration No. 05 3 344 303, registered March 2, 2005); SNCF and design (European Union registration No. 878 372, registered August 23, 2005); and SNCF and design (European Union registration No. 1 001 673, registered September 10, 2008). The trademarks are registered for use in association with various classes of wares and services, including transportation services (class 39).

- The Complainant is also the registered owner of various domain names that incorporate its SNCF acronym, including <sncf.com> created October 14, 1996; <sncf.fr> created January 1, 1995; <sncf.eu> created March 9, 2006; <sncf.net> created August 13, 2000; <sncf.org> created April 6, 2002; <sncf.tel> created March 23, 2009; and <sncf.asia> created February 5, 2008. The <sncf.com> domain name is used for the Complainant’s main official website.

- The Complainant’s SNCF trademark has been recognized by other panels: for example, Société Nationale des Chemins de Fer Français v. Natasya Widjaja, WIPO Case No. D2009-1173; and Société Nationale des Chemins de Fer Français SNCF v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-1185.

- The disputed domain name was registered on July 20, 2010.

- The Respondent uses the disputed domain name for a website that displays an image of a passenger train, the heading “SNCF European Train Service”, French-language information regarding the Complainant and its business and services, and English-language Google advertising links to various third-party websites offering transportation and accommodation services in France and Europe. There is no Spanish language content in the website.

- There is no commercial relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise authorized the Respondent to use the SNCF trademark.

- The Respondent’s personal website at <marktatum.com> indicates that the Respondent’s business is “interactive marketing”, and states: “I have been creating websites for interactive marketing since 1994”. There is no reference on the website to SNCF or anything related to SNCF or its business or services.

- The Respondent does not use the word SNCF as a trademark or otherwise, except in connection with the disputed domain name.

- The Complainant sent its first cease and desist demand letter to the Respondent on August 5, 2010. The Respondent immediately responded, on August 6, 2010, by offering to transfer the disputed domain name to the Complainant, initially in exchange for payment of USD 29.90 (as reimbursement of registration costs) and then later without any reimbursement or other payment. From August until late October, 2010, the parties exchange email correspondence to arrange for the transfer, but the Respondent failed to take the steps necessary to transfer registered ownership of the disputed domain name to the Complainant.

The Respondent has not filed a Response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i) The Complainant is the owner of the SNCF trademark, and the disputed domain name is identical or confusingly similar to the Complainant’s SNCF trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The Respondent registered and is fraudulently using the disputed domain name in bad faith to divert Internet users to a website for commercial gain. The Respondent is engaged in “typosquatting”.

B. Respondent

The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner.

6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. The narrow scope of the Policy reflects its origin as a novel form of dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant 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 burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.

Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and in accordance with Rules paragraph 14(a) the Panel will proceed to a decision.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision.

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark SNCF, registered in various countries for use in association with various wares and services, including transportation services. The Complainant uses the SNCF trademark to advertise its business and services, including through websites that use domain names (including <sncf.com>) that incorporate the SNCF trademark. The Complainant asserts that it has used the SNCF trademark since 1937 and the earliest SNCF trademark registration was in 2005. The Complainant’s assertions are supported by documentary evidence. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark SNCF.

The Complainant’s SNCF trademark was registered before the Respondent registered the disputed domain name on July 20, 2010.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s trademarks. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in the decisions is that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 1.2.

The literal comparison approach is supported by a number of considerations, which have been discussed in various decisions. See: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung, WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant’s trademark.

The disputed domain name and the Complainant’s SNCF trademark are visually and phonetically similar. The only difference between the Complainant’s SNCF trademark and the disputed domain name is the “.co” suffix. The “.co” suffix is irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for that determination, since the “.co” suffix is merely descriptive of the registry services. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, WIPO Case No. D2001-0716; The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113.

The Complainant contents that the disputed domain name is a purposeful misspelling of its <sncf.com> domain name (.co instead of .com), and that the Respondent is engaged in a practice known as “typosquatting” – where a domain name is a slight variation from a well-known mark or domain name in order to divert Internet traffic. This practice takes advantage of Internet users inadvertently typing an incorrect address when seeking to access the trademark owner’s website. Typosquatters often profit by selling advertisements and links to websites operated by the trademark owner’s competitors. Many panels have held that domain names based on a misspelling of trademarks and domain names, including the omission of a single letter, are confusingly similar. For example, see Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments Limited, WIPO Case No. D2001-1095; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728; and EasyGroup IP Licensing Limited v. John Sansone, WIPO Case No. D2004-0763.

In light of the Respondent’s use of the disputed domain name, and in the absence of any explanation or rationale put forward by the Respondent for his registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainant’s SNCF trademark, and that the Respondent is engaged in typosquatting.

For those reasons, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s SNCF trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

B. Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interest in the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the decisions is that the complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or interests in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; and Alfa Laval AB, Laval Corporate AB v. Caribbean Online International Ltd.(ALFALAVALL-COM-DOM), WIPO Case No. D2007-1893.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent does not use the name SNCF as a trademark, trade name, or business identity, and the disputed domain name is used for a website that provides links to third party websites, including websites of the Complainant’s competitors (such as “www.eurail.com”). The Complainant notes that the disputed domain name does not link to the Respondent’s personal website (“www.marktatum.com”), which identifies the Respondent as providing interactive marketing services and does not make any reference to SNCF. The Complainant also contents that the Respondent’s initial and immediate willingness to relinquish ownership of the disputed domain name demonstrates that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.

Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing links to search results or other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s SNCF trademark; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; (c) the disputed domain name is used for a website that expressly refers to the Complainant and its services; and (d) the Respondent does not use the disputed domain name to advertise or sell his own wares and services, but to provide Google advertising links to other websites offering services in competition to the Complainant. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of the Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable.

For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are deemed evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location.

The Policy expressly states that those circumstances are non-exclusive.

In order to establish that a registrant registered and is using the disputed domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).

Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its SNCF trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the Complainant’s SNCF trademark, and registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website, based upon the following circumstances: (a) the Complainant’s SNCF trademark is specific to the Complainant in connection with its rail services, and has been widely used and advertised for many years; (b) the term “SNCF” has no apparent meaning in the English, Spanish or French language; (c) there is no apparent connection or relationship between the disputed domain name and the Respondent or his business or services; (d) the Respondent uses the disputed domain name for a website that expressly refers to the Complainant and its services, and might be mistaken for the Complainant’s official website; (e) the Respondent uses the disputed domain name for a website that provides Google advertising links to other websites offering services in competition to the Complainant; (f) the Respondent uses the disputed domain name for a website that contains English and French language content, but there is no Spanish language content (Spanish is the official language of Columbia for which the .co ccTLD is designated); (g) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name; and (h) the Respondent has not denied any knowledge of the Complainant or its SNCF trademark. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for his use of the disputed domain name.

The Panel also finds that the Respondent’s use of the disputed domain name results in commercial gain to the Respondent. It is well known that many websites generate revenue from click-through advertising by directing traffic to other websites. The Google advertising links on the Respondent’s website are intended to generate revenue. Based upon the information apparent from the Respondent’s website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent.

The Panel also finds that the Respondent is engaged in typosquatting, by attempting to take advantage when an Internet user seeking to access the Complainant’s website at “www.sncf.com” inadvertently types the incorrect address “www.sncf.co”.

In the circumstances, the Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith to confuse and divert Internet traffic to his website for commercial gain.

In the circumstances, the Panel need not consider whether Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) – the disputed domain name is identical or confusingly similar to the Complainant’s SNCF trademark, the Respondent does not have any rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

The Panel orders that the disputed domain name <sncf.co> be transferred to the Complainant.

Bradley Freedman
Sole Panelist
Dated: February 2, 2011