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WIPO-UDRP Entscheid
D2010-0513

Fallnummer
D2010-0513
Kläger
SNCF - Société Nationale des Chemins de Fer Français
Beklagter
Transure Enterprise Ltd /Above.com Domain Privacy
Entscheider
Treis, Michael
Betroffene Domain(s)
Status
Geschlossen
Entscheidung
Transfer
Entscheidungsdatum
04.06.2010

WIPO Domain Name Decision: D2010-0513

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SNCF - Société Nationale des Chemins de Fer Français v. Transure Enterprise Ltd /Above.com Domain Privacy

Case No. D2010-0513

1. The Parties

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

The Respondent is Transure Enterprise Ltd of Tortola, Virgin Islands, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland; Above.com Domain Privacy of Beaumaris, Australia.

2. The Domain Name and Registrar

The disputed Domain Name <12-15-sncf.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2010. On April 6, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On April 8, 2010, Above.com, Inc. 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. The Center sent an email communication to the Complainant on April 8, 2010 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 amendment to the Complaint on April 12, 2010. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 4, 2010.

The Center appointed Michael Treis as the sole panelist in this matter on May 12, 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

The Complainant in this instance is Société Nationale des Chemins de Fer Français (SNCF), which operates the passenger railway system of France. SNCF was also the sole company operating of rail services for freight until 2006. The company name SNCF was registered in the French commercial register in 1955.

The Complainant owns the French trademarks for SNCF (word; No. 063424107) and SNCF (device; No. 053344303) claimed for goods and services in classes 12, 16, 18, 24, 25, 28, 35, 37, 39, 41, 42 and 43. The Complainant owns also the French trademark CARTE 12-25 ÇA CALME! (word and device; No. 083573077) for goods and services in classes 16, 35 and 39 (the “12-25 mark”). Further, the Complainant owns international Registrations for the mark SNCF (word & device; No. 878372; No. 1001673) covering various countries claimed for goods and services in classes 9, 12, 16, 18, 24, 25, 28, 35, 36, 38, 39, 41, 42 and 43.

The Complainant has registered numerous domain names including the element SNCF alone or in combination with the element 12.25, in particular <sncf.com>, <sncf.fr>, <www12-25-sncf.com>, <1225-sncf.eu>, <12-25-sncf.eu>, <carte1225.eu>, <carte1225-sncf.eu>, <25-sncf.com>, <1225sncf.com> and <sncf-12-25.com>.

The Respondent in this case is Above.com Domain Privacy / Transure Enterprise Ltd.

The Complainant had filed another complaint against the Respondent on September 7, 2009. In that case, the panel ordered that the domain name <transiliensncf.com> be transferred to the Complainant (Société Nationale des Chemins de Fer Français v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-1185 <transiliensncf.com>).

The disputed Domain Name in the present case, <12-15-sncf.com>, was registered on December 1, 2009. Registrant of this Domain Name is the Respondent. The disputed Domain Name is used for a website which contains a number of links to other websites offering travel services.

In December 2009, the Complainant sent a cease and desist email to the Respondent, requesting the Respondent to immediately transfer the Domain Name to the Complainant. The Respondent replied that the disputed domain is in fact owned by a Mr. Smith and that the cease-and-desist e-mail had been forwarded to that person. On February 5, 2010 Mr. Smith offered to transfer the disputed Domain Name against payment of USD 500 [Annex 17.2 of the Complaint]. As to the knowledge of the Panel, there was no further correspondence between the parties.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed Domain Name <12-25-sncf.com> is quasi-identical to its Domain Name <12-25-sncf.eu> and very similar to other domain names owned by the Complainant.

The Complainant states that the disputed Domain Name <12-15-sncf.com> is composed of the well-known trademark and company name SNCF as well as the element “12-15” which is quasi-identical to the element “12-25”. The Complainant asserts rights to this combination of a number and the acronym SNCF because of its trademark CARTE 12-25 ÇA CALME and its well-known season ticket services named “Carte 12-25”. The Complainant claims that the replacement of the number “1” by the number “2” is not sufficient to avoid a likelihood of confusion between the disputed Domain Name and the trademark as well as the domain name rights of the Complainant. In support of this claim, the Complainant cites the cases Société Nationale des Chemins de Fer Français v. Miguel Casajuana, WIPO Case No. D2008-1593 (<voyagesncf.com>) and Société Nationale des Chemins de Fer Français v. Damian Miller/Miller Inc., WIPO Case No. D2009-0891 (<voyqges-sncf.com>). In the latter case, the Panel exposed that “[t]his substitution cannot prevent a finding of confusing similarity between the Trademarks and the Domain Name”.

Further, the Complainant asserts that the Domain Name <12-15-sncf.com> constitutes an example of typosquatting which is considered by the current case law as a reservation of a domain name done with bad faith. He considers that the Respondent simply reproduced its trademarks, business name and domain names.

The Complainant further claims that the Respondent was aware of the existence of the Complainant's trademarks when he registered the disputed Domain Name. The Complainant states that this is obvious because SNCF is a famous trademark and company name.

The Complainant claims that the Respondent has no right to use the acronym “SNCF” alone or in combination with the element “12-15”. The Complainant submits that the Respondent has no registered trademark for SNCF. The Complainant claims also that the Respondent neither has any activity under the name SNCF nor “12-15 SNCF” nor any activity in relation with transport. The Respondent is a company which provides services in relation with domain names and parking activities.

The Complainant contends that the lack of a real website, the use of the trademark SNCF as a commercial link without any authorisation of the Complainant, combined with numbers which are confusingly similar to the ones used by the Complainant obviously confirms the lack of any right or legitimate interest of the Respondent on the disputed Domain Name.

The Complainant states that its business name SNCF does not refer to any common word, neither in English nor in French and concludes that the Respondent has not registered the disputed Domain Name by chance or coincidence.

The Complainant asserts that the Respondent uses the disputed Domain Name only as a website which contains commercial links to websites of third parties, including some links to travel, and that he reproduces the trademark and well-known company name “SNCF”. The Complainant considers this as evidence of the Respondent's bad faith.

The Complainant also submits that the anonymous character of the registration of the disputed Domain Name and the attempt of the alleged owner of the registration, a Mr. Smith, to sell the disputed Domain Name to the Complainant proves the lack of legitimate rights and the bad faith of the reservation of the disputed Domain Name. The Complainant concludes that the Respondent is a cybersquatter and notes that it has been respondent in many cases before the Center for the same or similar kind of facts.

B. Respondent

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

6. Discussion and Findings

General

According to paragraph 4(a) UDRP, the Complainant must prove that

(i) The Domain Name 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 Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is required to prove that the disputed Domain Name

<12-15-sncf.com> is identical or confusingly similar to a trademark in which the Complainant has rights. In this instance, the Complainant has proven that he owns trademark rights in the “12-25 mark” as well as SNCF to which the disputed Domain Name is confusingly similar.

The disputed Domain Name contains the marks “12-15”and “SNCF”; in particular:

The disputed Domain Name comprises the number “12-15”. This is very similar to the number 12-25 which is an element of Complainant's French trademark CARTE 12-25 ÇA CALME (Reg. No. 083573077). In addition, the Complainant has domain names beginning with or including the number “12-25” or “1225” and its widely known trademark SNCF, among which the domain names <1225sncf.com> and <sncf-12-25.com>. This use shows that the number “12-25” fulfils the function of a trademark, in particular in combination with the element SNCF.

The element SNCF of the disputed Domain Name is identical with the trademark SNCF for which the Complainant has obtained French and International Registrations with protection in various countries.

The Panel agrees with the Complainant that the use of the identical trademark SNCF in combination with the number “12-15” which is almost identical with the trademark element “12-25” creates a likelihood of confusion between the disputed Domain Name and the Complainant's trademark. The Panel also finds that the use of the “.com” suffix within the disputed Domain Name constitutes an irrelevant distinction which does not alter the likelihood of confusion (Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709, <rollsroycecanada.com> and <rollsroycecanada.net> and Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053, <microsoft.org>).

Consequently, the Panel considers the disputed Domain Name as confusingly similar to the Complainant's trademarks. As a result, the Complainant has met the requirements of paragraph 4 (a)(i) of the UDRP.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the UDRP, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Paragraph 4(c) of the UDRP sets out three circumstances which, if proved by Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the disputed Domain Name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to Respondent, Respondent's use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services; or

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

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

The absence of rights or legitimate interests can be established in case the Complainant makes a prima facie showing (e.g. that the Complainant has rights in the name, the Respondent has no apparent rights to the domain name, and the Complainant has not given any permission to the Respondent to use or register the domain name). In case the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name or if he enters no Response, the Complaint succeeds under this head (see Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121 <julianbarnes.com> and Société Nationale des Chemins de Fer Français v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-1185 <transiliensncf.com>).

First, the Complainant has proven that he owns a trademark containing the mark “12-25” and various trademarks containing the mark SNCF which is widely known. Further, the Complainant has submitted that the Respondent has not registered any trademarks containing the mark SNCF, that he has no activity under the marks SNCF or “12-25” and that the disputed Domain Name does not correspond to the Respondent's name. The Complainant has also not provided the Respondent with any type of licence, contract or other permission or authorization to use the marks “12-25” or “SNCF” in any way or to register any domain name incorporating the same.

When the Respondent registered the disputed Domain Name in November 2009, he was aware of the Complainant's trademark rights in the mark SNCF because of his prior involvement in a case regarding these trademark rights (Société Nationale des Chemins de Fer Français v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-1185 <transiliensncf.com>). It cannot be considered as a coincidence that the Respondent registered the disputed Domain Name with the acronym SNCF, which is a very unusual acronym which does to this Panel's knowledge not refer to anything else than to the Complainant.

There is also no evidence whatsoever that that the Respondent has used the disputed Domain Name for a legitimate noncommercial or fair use, without any intention for commercial gain. Rather, the Complainant shows that the disputed Domain Name is used for a website consisting of various commercial links relating to travel and travel services in most cases, in particular in the field of the Complainant's activity. Therefore, it appears to be most likely that that the Respondent intended to use the disputed Domain Name for commercial gain and not for a legitimate noncommercial or fair use.

Because the Respondent has failed to respond to the Complainant's contentions, the contentions of the latter regarding the Respondent's absence of a right or legitimate interest in the disputed Domain Name remain unchallenged (see Nike Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 <nike-shoes.com>). Based on the facts set out by the Complainant and the absence of an explanation from the Respondent for its use of the Complainant's widely known marks and company name in its Domain Name, the Panel considers that the Respondent has no rights to or legitimate interests in the disputed Domain Name (see Merrill Lynch & Co., Inc. v. Andrew Miller, WIPO Case No. D2008-1496 <merrilllynchbank.net> and <wwwmerrilllynchbank.com> and Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 <guerlain.net>)

Consequently, the Panel finds that the Complainant has met its burden under paragraph 4(a)(ii) of the UDRP.

C. Registered and Used in Bad Faith

The final element under paragraph 4(a)(iii) of the UDRP requires the Complainant to prove that the disputed Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the UDPR sets out four instances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:

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

(ii) The Respondent 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other on-line locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or locations or of a product.

With regard to paragraph 4(b)(iv), the Complainant has evidenced through its Complaint and the accompanying Annexes that the disputed Domain Name is used for a website with sponsored links to websites relating in most cases to travel and travel services.

The Respondent was already aware about the Complainant's rights in the trademark SNCF because of the previous UDRP dispute with the Complainant (Société Nationale des Chemins de Fer Français v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-1185 <transiliensncf.com>). The Respondent adopted a confusingly similar Domain Name and used it to host commercial links to third-party websites including sites relating to travel, the Complainant's own field of activity. Such a conduct is inherently misleading, and there is a consensus among panels that the use of a confusingly similar domain name to lure Internet users to a site hosting links to providers of competing products or services is evidence of bad faith (see inter alia Société Nationale des Chemins de Fer Français v. Natasya Widjaja, WIPO Case No. D2009-1173 <velo-sncf.com>, Micro Electronics, Inc. v. J. Lee, WIPO Case No. D2005-1070 <entfederalcreditunion.com> and Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591 <muddproducts.com>).

Consequently, the Panel considers that the Respondent has registered and is using the disputed Domain Name with the intention to attract, for commercial gain, users to the Domain Name by creating a likelihood of confusion with the Complainant.

Furthermore, the Panel considers that the Respondent's pattern of cybersquatting gives further credit to the Complainant's assertion that the Domain Name was registered and being used in bad faith (see Merrill Lynch & Co., Inc. v. Andrew Miller, WIPO Case No. D2008-1496 <merrilllynchbank.net> and <merrilllynchbank.com>). The Respondent has already been found to have registered and used domain names in bad faith in 21 prior cases (see inter alia Pi-Design AG v. Above.com Domain Privacy /Transure Enterprise Ltd, WIPO Case No. D2010-0462 <wwwbodum.com>, Hardee's Food Systems Inc. v. Above.com Domain Privacy, WIPO Case No. D2010-0214 <hardeesrestaurant.com> and Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638 <tupies-swarowski.com>).

Such a pattern of conduct is evidence of bad faith registration and use (see inter alia Merrill Lynch & Co., Inc. v. Andrew Miller, WIPO Case No. D2008-1496 <merrilllynchbank.net> and <merrilllynchbank.com> and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584 <deloitt.com>).

As a result, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied the third requirement of paragraph 4(a)(iii) of the UDRP.

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 name <12-15-sncf.com> be transferred to the Complainant.

Michael Treis
Sole Panelist

Dated: June 4, 2010


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