WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Nationale des Chemins de Fer Français, SNCF v. Charlie Kalopungi / Moniker Privacy Services

Case No. D2011-0160

1. The Parties

1.1. The Complainant is Société Nationale des Chemins de Fer Français, SNCF of Paris, France (the Complainant), represented by Cabinet Santarelli, France.

1.2 The Respondents are Charlie Kalopungi of Seychelles, Seychelles; Moniker Privacy Services of Florida, United States of America (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <senior6sncf.com> (the disputed Domain Name) is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2011. On January 28, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed Domain Name. On January 31, 2011, Moniker Online Services, LLC. 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.

3.2 The Center sent an email communication to the Complainant on February 1, 2011 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 February 2, 2011.

3.3 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”).

3.4 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 February 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2011.

3.5 The Center appointed Ike Ehiribe as the sole panelist in this matter on March 7, 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.

4. Factual Background

4.1 The Complainant is the French state railway company and is internationally recognized. The Complainant is usually known as “SCNF” and is widely recognized in Europe and around the world as an entity involved in the transportation and travel businesses. The Complainant’s online services are offered through the website “www.voyages-sncf.com” which ranks as first position in e-business websites in Europe.

4.2 The Complainant employs more than 180,000 people in 120 countries across the globe and operates about 14,000 trains daily over a railway network that covers well over 32,000 km. The Complainant’s company name SCNF has been registered in the French commercial register since 1955 and its acronym has been in use since 1937.

4.3 The Respondent registered the disputed domain name <senior6sncf.com> according to the WhoIs database printout on August 17, 2010.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant has valid registered trademarks for the mark SNCF, and the trademark SNCF is used in connection with transport services and travel agencies, as well as related goods. The Complainant has annexed to these proceedings copies of national and international trademark registrations as follows:

(i) The French trademark SNCF registered under No. 053344303 on March 2, 2005 designating goods and services in international classes 12, 16, 18, 25, 28, 39, 41 and 43;

(ii) The French trademark SNCF registered under No. 083594312, on August 14, 2008 designating goods and services in international classes 9, 16, 18, 24, 35, 36, 38 and 39;

(iii) International registration SNCF registered under No. 878372 on August 23, 2005 designating goods and services in international classes 12, 16, 18, 24, 25, 28, 35, 39, 41 and 43 and;

(iv) International registration SNCF registered under No. 1001673 on September 10, 2008 designating goods and services in international classes 9, 16, 18, 24, 35, 36, 38, 39 and 42.

5.2 The Complainant has also annexed to these proceedings WhoIs database printouts indicating that the Complainant registered numerous domain names (around 800) including the acronym “SNCF”, alone or in combination with other words such as <senior-sncf.com>, <sncf-senior.com>, <wwwsenior-sncf.com>, and <seniors-sncf.com>.

5.3 The Complainant therefore contends that the disputed Domain Name <senior6sncf.com> is confusingly similar to the Complainant’s trademark and domain names over which the Complainant has long established rights. The Complainant asserts that the disputed Domain Name wholly reproduces in its entirety the trademark of the Complainant, which, as held in previous UDRP decisions, is a fact sufficient to establish confusing similarity. The Complainant in support cites the case of Research in Motion Limited v. Jumpline.com, WIPO Case No. D2008-0758 for <blackberrycoaching.com>, amongst other cases. The Complainant contends further that the mere addition of the word and number “senior” and “6” is insufficient to avoid confusion with the Complainant’s trademark. The Complainant points out that the term “senior” is used by the Complainant in relation to its discount card services for those people who are above the age of 60 and that the Complainant is the owner of the domain name <senior-sncf.com>. The Complainant in addition states that the addition of the suffix “.com” does not prevent the likelihood of confusion since it is necessary for the registration of the domain name itself. Therefore the Complainant submits that given the fame of the Complainant’s trademark in France and abroad and the obvious similarity between the Complainant’s trademark and the disputed Domain Name, the disputed Domain Name is bound to create a likelihood of confusion as to the origin and possible affiliation of the domain name to the Complainant.

5.4 The Complainant also states that the Respondent has not been licensed or otherwise authorized by the Complainant to use the trademark SNCF in any way or register any domain name incorporating the trademark SNCF. The Complainant states further that the Respondent has neither rights nor legitimate interests in the disputed Domain Name. The Complainant also points out that the disputed Domain Name resolves to third party commercial websites which contain links to travel websites. The Complainant submits, that as held in previous UDRP decisions the use of the disputed Domain Name to direct visitors to various third party commercial websites does not constitute a legitimate, bona fide use of the domain name under the Policy. The Complainant relies on the case of Sports Holdings, Inc. v. WhoIS ID Theft Protection, WIPO Case No. D2006-1146 for <hibbitts.com>. The Complainant further submits that the Respondent failed to respond to a cease and desist letter sent on October 29, 2010 and the reminder dispatched on December 2, 2010 requesting the transfer of the disputed Domain Name; accordingly, as it is put by the Complainant the absence of a reply to those letters is further evidence that the Respondent had no legitimate interest in the disputed Domain Name.

5.5 On the question of registration and use in bad faith, the Complainant points out that the disputed Domain Name resolves to a parking website in French language providing links to third party websites relating to the travel industry. The Complainant submits that as held in numerous UDRP decisions the use of a disputed Domain Name to point to websites that offer sponsored links to other websites providing services and goods which are similar to those offered by the Complainant’s website and which is directed to French Internet users is evidence of bad faith. The Complainant states further that the website in question also offers links to pornographic websites where terms such as “Annonce personnelle adulte” and “jouets sexuels” are displayed which exposes the Complainant’s trademark to the risk of being tarnished by reason of being connected to the said website.

5.6 The Complainant asserts that the Respondent was aware of the existence of the Complainant’s trademark SCNF being a well-known registered trademark and in accordance with numerous UDRP decisions the registration by the Respondent of a domain name containing or including a well-known trademark constitutes proof of the Respondent’s bad faith. The Complainant relies on a number of cases including LEGO Juris A/S v. Transure Enterprise Ltd, WIPO Case No. D2009-1347, for <legobioncle.com>, <legoeduction.com>, <legofriends.com>. The Complainant states that the Respondent obtains financial gain every time an Internet user inadvertently accesses its website and activates any of the sponsored links. In this regard the Complainant refers to the fact that the number “6” and the sign “-“ are situated on the same place on an AZERTY computer keyboard as further proof that the Respondent registered the disputed Domain Name to take advantage of possible typing errors from Internet users to generate more traffic on its website, so that its chances of financial gains may be increased.

B. Respondent

5.7 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings

A. Identical or Confusingly Similar

6.3 This Panel without any hesitation finds the disputed Domain Name, <senior6sncf.com > confusingly similar to the trademark and domain names over which the Complainant has long established rights since 1955 and 1937. This Panel finds as a fact that the Complainant’s trademark SNCF is well-known in France and abroad and the Complainant as the French state railway company is internationally recognized to be involved in the transportation and travel industry. This Panel observes that according to the WhoIs database printout annexed to these proceedings, the Respondent registered the disputed Domain Name on August 17, 2010 well after the Complainant acquired trademark rights in the trademark SCNF and well after the registration of numerous domain names, (around 800) including the trademark SCNF such as <senior-sncf.com>. This Panel is satisfied, just as the Complainant contends that the mere addition of the word “senior” and or the number “6” and or the suffix “.com” does not prevent the likelihood of confusion with the Complainant’s trademark in the minds of Internet visitors, including in particular, French speaking Internet visitor since the disputed Domain Name wholly incorporates the Complainant’s trademark.

6.4 The Panel in this regard relies on a number of previous UDRP decisions relied upon by the Complainant such as Research in Motion Limited v. Jumpline.com, supra for the disputed domain name <blackberrycoaching .com>.

6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s trademark in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 The Panel equally finds, as the Complainant contends, that the Respondent has failed to provide any evidence or circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Complainant asserts that the Respondent has never been authorized or licensed by the Complainant to use the trademark SNCF or register any domain name incorporating the trademark SNCF. The Panel is equally satisfied from the evidence adduced by the Complainant that the Respondent is simply using the disputed Domain Name to divert Internet visitors to various third party commercial websites, an activity which the Complainant correctly contends does not confer legitimate interest in the disputed Domain Name. The Complainant in this regard relies on a previous UDRP decision in Sports Holdings, Inc. v. WhoIs ID Theft Protection, supra.

6.7 The Panel is therefore satisfied that the Respondent has failed to comply with stipulated requirements necessary to establish the bona fide offering of goods and services as stated in the case of Oki Data Americas, Inc.v. ASD, Inc., WIPO Case No. D2001-0903.

6.8 In the circumstances, it follows that the Panel finds the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.9 On the question of bad faith registration and use, the Panel is equally satisfied that the Respondent registered the disputed Domain Name in bad faith and continued to use the disputed Domain Name in bad faith even to the extent of ignoring a cease and desist letter addressed to the Respondent on October 29, 2010 including a reminder dated December 2, 2010. In addition this Panel finds that the Respondent has failed to refute a number of matters that the Panel has taken into account in arriving at this conclusion. First of all, the Panel is satisfied that the Respondent knew or ought to have known of the Complainant’s well-known worldwide rights in the SNCF trademark since 1937 or 1955 and thereafter. Secondly, the Respondent has not countered the preponderant evidence of websites, including pornographic websites, and home pages indicating the Respondent’s usage of the disputed Domain Name for unjust financial gain. It is also significant that the Respondent has not denied the likelihood that French Internet users, including those above the age of sixty are likely to believe that the Respondent’s website is an official website sponsored by, or affiliated to, the Complainant. The Panel relies on a number of previous UDRP decisions cited by the Complainant involving the same trademark SNCF where bad faith registration and use have been found to be proven by the Complainant such as Société Nationale des Chemins de Fer Français v. Miguel Casajuana, WIPO Case No. D2008-1593. Fourthly, the Respondent has failed to deny the case of typosquatting which the Complainant has evidently made out against the Respondent which entails registering a domain name that is a common misspelling of a mark in which the Complainant has rights, since, as the Complainant contends, the number “6” and the sign “-“ are both placed on the same place on an AZERTY computer keyboard thereby enabling the Respondent to take advantage of typing errors from Internet visitors to increase unjust financial gain. The Panel finds the Complainant’s reliance on the case of Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtect.org, WIPO Case No. D2008-0025, most relevant in these circumstances which in itself is authority for the contention that typosquatting is evidence of bad faith registration and use. Fifthly, as earlier indicated, the Panel draws adverse inferences from the failure or refusal of the Respondent to respond to correspondence arising from these proceedings and the failure to submit a response to these proceedings within the prescribed time limits in accordance with paragraph 5(a) of the Rules.

6.10 The Panel there for finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy.

7. Decision

7.1 For all 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 <senior6sncf.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Dated: 22 March 2011