WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Nationale des Chemins de Fer Français, SNCF v. Point eg, Ahmed Assan

Case No. D2014-0032

1. The Parties

The Complainant is Société Nationale des Chemins de Fer Français, SNCF of St. Denis, France,represented by Cabinet Santarelli, France.

The Respondent is Point eg, Ahmed Assan of Cairo, Giza, Egypt.

2. The Domain Name and Registrar

The disputed domain name <sncfglobal.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 January 10, 2014. On January 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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”).

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on February 19, 2014. 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 March 14, 2014, the Panel issued a Procedural Order noting that the document entitled “Notification of Complaint and Commencement of Administrative Proceeding” and the Complaint including annexes were inadvertently not copied to the email address confirmed by the Registrar in its Registrar Verification Response. Consequently, the Panel ordered the Center to re-notify the Complaint and annexes to the Respondent to all the available e-mail addresses, including the one missed in the original Notification of Complaint. On the same day, the Center made the necessary re-notification in accordance with the Procedural Order. In accordance with the Rules, paragraph 4(c), the formal date of the commencement of the administrative proceeding was on March 14, 2014.

In accordance with the Rules, the due date for Response was April 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2014.

4. Factual Background

The Complainant in this administrative proceeding is Société Nationale des Chemins de Fer Français, known as “SNCF”, the French State railway company which operates all of France’s passenger railway system.

The Complainant is widely recognized in Europe and around the world.

The Complainant online services are offered through a portal website under “www.voyages-sncf.com”.

The company name SNCF has been registered in the French commercial register since 1955 and its acronym has been used since 1937.

The SNCF group employs more than 246,000 people in 120 countries across the globe and has a turnover of EUR 30,5 billion (in 2010).

The Complainant is the owner of several national and international trademarks for the word and figurative sign SNCF, used in connection with transport services and travel agencies, as well as related goods.

Besides, the Complainant also owns numerous domain names (more than 1,160) including “sncf” alone or in combination with other words such as <horairesncf.com>, <sncfhoraires.fr> and so on.

The disputed domain name <sncfglobal.com> was created on February 21, 2012 and registered to the Respondent on March 24, 2012.

The Respondent has offered the disputed domain name to the Complainant for sale at the price of USD 20,000, further to the cease and desist letter sent by the Complainant on March 14, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is and has been for many years (and before the disputed domain name was registered) the right holder of the mark SNCF (the “Trademark”) in numerous countries worldwide. The Trademark is used in connection with transport services and travel agencies services, as well as related goods.

The Complainant contends that the disputed domain name is similar to the Complainant’s trademarks and domain names, which were all registered before the disputed domain name.

More precisely and by invoking several UDRP decisions, the Complainant contends that the disputed domain name, by combining the Trademark of the Complainant in its entirety and the generic term “global”, creates a confusing similarity.

The Complainant further asserts that the mere addition of the generic Top-Level domain (“gTLD”) “.com” does not have to be taken into consideration when examining the identity or similarity between the Trademark and the disputed domain name.

Moreover, the Complainant contends that there is a risk of confusion between the disputed domain name and its own domain names, and in particular <sncf.eg>. Indeed, both of these domain names refer to the Egyptian territory, where the first one is offering tourism services within Egypt while the latter is designed for the same country.

Finally, the Complainant, by making several references to UDRP decisions, reminds the well-known character in France and abroad of the Trademark. Given this fact, the Complainant contends that the disputed domain name is bound to create a likelihood of confusion as to the origin and the possible affiliation of the disputed domain name to the Complainant.

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

The Respondent registered the disputed domain name long after the Complainant established its rights in and to the Trademark, registered in many countries in the world. Additionally, SNCF is not a generic term but the acronym corresponding to the Complainant and the Trademark. This fact can easily be confirmed by a simple search on the Internet. For instance, the Complainant argues that the translation website “www.wordreference.com” gives as result, under the search on SNCF, “feminine noun, French national railway company”.

In addition, the Complainant submits that previous UDRP decisions have already held that the four letter string “sncf” appears to have limited associations other than with the Complainant.

The Complainant also notices that before it sent the cease and desist letter, the litigious website was reproducing the Trademark by using a highly similar stylization of the letters of the Complainant’s Trademark. On the basis of this fact it is, in the Complainant’s mind, obvious that the Respondent was aware of the existence of the Complainant’s Trademark when registering the disputed domain name.

Furthermore, the Complainant has trademark rights for SNCF and the Respondent has not been licensed, or otherwise authorized by the Complainant in any way to use the Trademark, or any other confusing signs, or to register any domain name incorporating the Trademark, or any other confusing signs, nor has the Complainant acquiesced in any way such use or registration of the sign “sncf” by the Respondent.

Finally, the Complainant evidences that, by not answering the last formal notice sent by the Complainant on August 23, 2013, the Respondent has no legitimate interest in the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

First, the Complainant provides evidence that the disputed domain name leads to a website which is offering tourism services, for instance hotel reservation, vacation packages, cruises and other services which are also offered by the Complainant.

Besides, the Complainant reminds that it is the owner of the domain name <sncf.eg> and therefore argues that the Respondent registered the disputed domain name for the purpose to profit from consumer confusion by making them believe that the website at the disputed domain name is either maintained by the Complainant or by a third party who is linked with the Complainant. Following the Complainant, this shows a bad faith use of the disputed domain name.

Second, the Complainant notices that when typing in the browser the key words “sncf” and “Egypt”, its own website “www.voyages-sncf.com” appears but also the website at the disputed domain name “www.sncfglobal.com”.

Consequently, the Complainant concludes that the Respondent, by intentionally trying to attract Internet users to its website, is disrupting its business and making commercial gain.

Third, the Complainant alleges that the reproduction of the Trademark on the website at issue conveys a visual impression of association with the Complainant and is obviously done to attract people looking for the Complainant’s services in the travel area.

Moreover, the email addresses listed in the website at the disputed domain name, including “[…]@sncfglobal.com”, may also induce a risk of confusion for the users by making them believe that these addresses lead to the Complainant.

Fourthly, the Complainant highlights the proposal to transfer the disputed domain name it received (after it sent the cease and desist letter) from the Respondent, at the sale price of USD 20,000. As already held in numerous UDRP decisions cited by the Complainant, this amount is clearly over the ordinary costs of registration and thus only shows the Respondent’s intention to sell it for valuable consideration in excess of documented out-of-pocket costs, within the meaning of paragraph 4(b)(i) of the Policy and supports a finding of bad faith use.

Finally, the Complainant once again reminds the well-known character of the Trademark, as held in several UDRP decisions, which induces a higher likelihood for the Respondent to be aware of the existence of the Trademark, and insists on the existence of a risk of dilution of its Trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

This Panel has found no such exceptional circumstances that would justify the Respondent’s failure to submit a Response. The Panel therefore infers that by not replying to the Complainant’s contentions, the Respondent does not deny the facts asserted and contentions made by the Complainant (e.g. Roche Products Limited v. Private Whois Service, WIPO Case No. D2010-1983; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994).

As a result, asserted facts that are not unreasonable will be taken as true by this Panel.

Furthermore, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:

(i) the disputed domain name registered by the Respondent 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.

Consequently, this Panel shall further analyze the eventual concurrence of these three grounds in the present case.

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SNCF well before the disputed domain name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities. Furthermore, this Panel finds that the Trademark shall be considered as a well-known trademark.

The above conclusions are supported by several previous UDRP decisions (see, for instance, Société Nationale des Chemins de Fer Français, SNCF v. Henrico Goldner, WIPO Case No. D2012-1880; Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2010-0513; Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2012-0107; Société Nationale des Chemins de Fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891).

Secondly, the disputed domain name fully incorporates the Complainant’s distinctive and well-known SNCF Trademark in which the Complainant has exclusive rights. This Panel finds on the basis of previous UDRP decisions, including cases involving the SNCF company, that it is established that where a domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark for the purposes of the Policy (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Société Nationale des Chemins de Fer Français SNCF v. Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2011-0447; Société Nationale des Chemins de Fer Français SNCF, SNCF International v. Zhao Ke, WIPO Case No. D2011-1503; Societe Nationale des Chemins de Fer Français, SNCF, v. Elitebase, WIPO Case No. D2010-2179; Société Nationale des Chemins de Fer Français, SNCF v. Charlie Kalopungi / Moniker Privacy Services, WIPO Case No. D2011-0160; Société Nationale des Chemins de Fer Français SNCF contre Assane Amadoun, WIPO Case No. D2012-0714).

Thirdly, according to previous UDRP decisions, mere addition of common or generic terms is, in general, insufficient to make a domain name distinctive such that it is not confusingly similar to a complainant’s registered trademark (see Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith, WIPO Case No. D2012-0847; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694). Consequently, this Panel believes that the addition of the generic term “global” does not prevent the disputed domain name from being confusingly similar to the Trademark.

Fourthly, this Panel finds that, in the circumstances of this case, the addition of the gTLD “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for UDRP purposes (see Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

This Panel finds in the present case that the disputed domain name incorporates the Complainant’s well- known Trademark SNCF in its entirety and only with the addition of the generic term “global”, and ending with the gTLD “.com”.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s SNCF Trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

This Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s Trademark has been granted to the Respondent. Thus, the Respondent has no own rights in SNCF.

Examination of the website operating under the disputed domain name, as sufficiently evidenced by the Complainant, shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

Indeed, the Respondent is offering various tourism services which are similar to those offered by the Complainant and the Respondent is reproducing, with a highly similar stylization, the Trademark on its website.

Furthermore, given the well-known character of the Trademark, this Panel finds that the Respondent was or should have been aware of the existence of the Trademark and can therefore not establish a bona fide offering of goods or services (see Société Nationale des Chemins de Fer Français SNCF, SNCF International v. Zhao Ke, WIPO Case No. D2011-1503).

Moreover, there is no evidence before this Panel to show that the Respondent was acting in pursuance of any legitimate interests with respect to registering the disputed domain name. Indeed, the Respondent is not commonly known by the name “sncf” and/or “global”, or the combination of such elements. This assertion is reinforced by the factual evidences provided by the Complainant according to which a simple search on the Internet using the acronym “SNCF”, without any other word, or a simple consultation of the translation website “www.wordreference.com”, immediately refers to the SNCF Company. In other words, before registering the disputed domain name, the Respondent was not known by the word “SNCF”.

This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidences with regard to the Respondent’s registration of the disputed domain name, and finds, after reviewing the website at the disputed domain name as evidenced by the Complainant, and in particular the reproduction on the website at the disputed domain name of the Trademark with a highly similar stylization, that the Respondent (should have) had full knowledge of the Trademark and that its only intention is to gain profit by riding on the good reputation of the Complainant.

For all the foregoing reasons, and in the absence of any reply to the Complainant’s contentions, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

First of all, this Panel has considered the Complainant’s assertions and evidences with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website at the disputed domain name and its links as evidenced by the Complainant, and in particular of the existence of the Complainant’s website “www.sncf.eg”, that the Respondent must have known and been aware of the rights on the prior SNCF Complainant’s Trademark and the associated products at the time of the registration of the disputed domain name. Such conclusion is supported by previous UDRP decisions where such principles have been applied in the case of a well-known trademark (see LEGO Juris A.S v. Transure Enterprise Ltd, WIPO Case No. D2009-1347; United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339; Société Nationale des Chemins de Fer Français SNCF v. Transure Enterprise Ltd / Above.com Domain Privacy, WIPO Case No. D2011-0447).

Furthermore, the disputed domain name has been offered for sale by the Respondent at a price (USD 20,000) that substantially exceeds the Respondent’s documented out-of-pocket costs. This Panel therefore concludes that the disputed domain name was registered and is being used for the purpose of commercial sale (see Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076; Intesa Sampaolo S.p.A. and Cassa di Risparmio di Terni e Narni S.p.A. v. Carit Inc. WIPO Case No. D2010-0338; PHD Group Pty Ltd, Barrett Property Group Pty Ltd., Barrett Property Group Western Region Pty Ltd., BPS Group Pty Ltd., BPG Access Pty Ltd., RSS Property Holdings Pty Ltd. V. Abedellatif Shatila, WIPO Case No. D2010-0812).

Also, this Panel finds that the Respondent intentionally registered and used the disputed domain name for commercial gain and that the Respondent’s actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website at the disputed domain name is associated, fostered or recommended by the Complainant. Such misleading behaviour is reinforced by the reproduction of the Trademark on the website at the disputed domain name and is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Moreover, the Respondent, by offering tourism services which are also offered by the Complainant, is clearly a direct competitor of the Complainant. Thus, the Respondent appears to have registered the disputed domain name with the intention of disrupting the business of the Complainant. This is confirmed by the evidence submitted by the Complainant as it appears that typing in an Internet browser the key words “sncf” and “Egypt”, both Complainant’s and Respondent’s websites appear in the results list. This is evidence of bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

As a result, this Panel infers from such behavior that the Respondent’s purpose in registering the disputed domain name appears to have been to capitalize on the reputation and goodwill of the Complainant’s Trademark, and thus generate unjustified revenues.

In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under the Policy.

7. Decision

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 names <sncfglobal.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: April 7, 2014