WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de Fer Francais (SNCF) v. Dokoslov ltd
Case No. D2008-0402
1. The Parties
Complainant is Société Nationale des Chemins de Fer Francais (SNCF), Paris, France, represented by Cabinet Santarelli, France.
Respondent is Dokoslov ltd, Ouebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <tgvpro.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2008. On March 17, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On March 26, 2008 GoDaddy.com, Inc. 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”), 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2008.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 8, 2008. 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
Complainant operates a train and related transport and travel services business principally in France. It has registered trade marks for the word TGV and TGVPRO. Complainant’s trade mark rights in France for the trade mark TGV date back to 1978.
It is unclear what Respondent does. The Domain name was first registered on December 30, 2007.
5. Parties’ Contentions
A. Complainant
Complainant asserts that it is a well known company and TGV is a famous railway service. Complainant contends that the Domain Name is identical to Complainant’s trade marks TVGPRO and TVG of which the trade mark TVG is well known in France and abroad. It is asserted that their reproduction constitutes an infringement of the prior marks of Complainant to its detriment.
Complainant advises that Respondent has not been licensed, contracted or otherwise permitted by Complainant in any way to use the TGV and TGVPRO” trade marks or to register any domain name incorporating the TGV and TGVPRO trade marks.
The Domain Name does not resolve to a website and is not being used.
Complainant submits that Respondent is engaged in passive bad faith use of the Domain Name. In support of this it submits that it would be implausible that Respondent had no prior knowledge of the mark TGV prior to registering the Domain Name. Complainant also points out that there is no evidence that Respondent’s use or demonstrable preparations to use the Domain Name exist in connection with a bona fide offering of goods or services.
Further, Complainant relies on the existence of an e-mail received from Respondent dated March 13, 2008 stating that it would sell the Domain Name to someone else should Complainant refuse to pay. Complainant asserts that this is further evidence of bad faith.
Complainant finally says that the Domain Name was registered in order to prevent Complainant from reflecting its marks in a corresponding domain name and that as a state company it has a true legitimate interest in having a .com domain name reflecting its core trade marks.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The domain name registered by Respondent is identical or confusingly similar to a trade mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Preliminary Comment
Given that Respondent filed no Response nor sought further time in which to do so, the Panel is required to assess the evidence and submissions filed by the Complainant alone. In the absence of any dispute as to the accuracy and correctness of that information, the Panel must decide this proceeding on the basis of Complainant’s undisputed representations and draw such inferences it considers appropriate. The Panel considers that there is nothing in Complainant’s submissions or factual statements that are clearly contradictory.
A. Identical or Confusingly Similar
Complainant had used and registered the trade marks TGV and TGVPRO since in or about 1978 in relation to, inter alia, railway services. Indeed, Complainant asserts that it is a well known company and its TGV trade mark is identified with a famous railway service. None of these assertions are disputed and they are accepted.
Complainant contends that the Domain Name constitutes an infringement of its trade marks. It is found that the Domain Name is identical to the TGVPRO trade mark and confusingly similar to the TGV trade mark (differing only with regard to a largely descriptive element, the suffix “Pro”.
On this basis it is found that:
a) Complainant has trade mark rights in respect of the marks TGV and TGVPRO; and
b) The Domain Name is the same as or confusingly similar to the trade marks TGV and TGVPRO.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent has not been licensed, contracted or otherwise permitted by Complainant to use the TGV and TGVPRO trade marks or to register any domain name incorporating the TGV and TGVPRO trade marks. Instead, it appears that the Domain Name is simply being registered and put to one side and not used. There is no evidence that it has at any point resolved to a website.
Complainant argues there is no evidence that Respondent’s has made any use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. This submission, supported by the evidence provided by Complainant, is sufficient to raise a question as to whether Respondent might have rights or a legitimate interest in the Domain Name. This is particularly so given the apparent well-known nature of the TGV trade mark and the fact that Complainant has used this trade mark with its other TGVPRO trade mark. The Panel draws the inference that these trade marks appear to have no meaning apart from as a means to identify Complainant and its services.
In the absence of any effort to explain why it might have a right or legitimate interest in the Domain Name the Panel infers in the circumstances of this particular case, that no such a right or legitimate interest exists and that this element of the Policy is satisfied.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Complainant submits that Respondent is engaged in a form of passive bad faith use of the Domain Name and that it should be inferred that Respondent had prior knowledge of the mark TGV prior to registering the Domain Name.
It is now well established that both active use and passive holding of a domain name may amount to bad faith provided the circumstances indicate that the respondent had actual knowledge of the existence of the complainant’s rights.
It is reasonable in the present situation and again in the absence of any contest from Respondent that Respondent was or ought to have been aware of the existence of Complainant’s trade marks. The allegation that Respondent threatened that it would sell the Domain Name to someone else should Complainant refuse to pay is a further indicative factor which can and is taken into account.
On balance the Panel concludes that Complainant has established the third element 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 name <tgvpro.com> be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Dated: May 23, 2008