The Complainants are Société Nationale des Chemins de Fer Français SNCF, SNCF International of Paris, France (together the “Complainant” ), represented by Cabinet Santarelli, France.
The Respondent is Zhao Ke of China.
The disputed domain name <sncfinternational.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.
The disputed domain name <sncfinternational.net> is registered with Hangzhou E-Business Services Co., Ltd. (together the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2011. On September 7, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 8, 2011, Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 13, 2011, Hangzhou E-Business Services Co., Ltd. disclosing registrant and contact information for the disputed domain name <sncfinternational.net> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 13, 2011 requesting the Complainant to submit an amendment to the Complaint regarding the Respondents’ Consolidation. The Complainant filed an amendment to the Complaint on September 16, 2011. On September 16, 2011, Hangzhou E-Business Services Co., Ltd. confirmed with the Center the registrant information restored to the Respondent’s information listed in the Complaint. On September 16, 2011, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On September 16, 2011, the Respondent requested Chinese be the language of the proceeding. On September 26, 2011, the Complainant requested English be the language of the proceeding. On September 27, 2011, the Center granted an extension to the Respondent’s language submission due date to September 28, 2011. The Respondent did not make further comment on the language of the proceeding by the specified due date.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 18, 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.
The Complainants, Société Nationale des Chemins de Fer Français SNCF and SNCF International, are companies incorporated in France. SNCF International is a wholly owned subsidiary of Société Nationale des Chemins de Fer Français SNCF.
The Complainant Société Nationale des Chemins de Fer Français SNCF is the owner of several registrations in France and worldwide for the word and logo trade marks SNCF (the “Trade Marks”).
The Complainant SNCF International is also the registered owner of a registration in France for the trade mark SNCF INTERNATIONAL (the “SNCF INTERNATIONAL Trade Mark”).
The Respondent is an individual apparently with an address in China.
The disputed domain names were registered on February 28, 2010 and February 28, 2011, respectively.
The Complainant made the following submissions in the Complaint.
The Complainant Société Nationale des Chemins de Fer Français SNCF is the French State railway company which operates all of France passenger’s railway system. The Complainant SNCF International markets the French railways' experience to rail networks and operators throughout the world.
Usually known as “SNCF”, the Complainant operates France’s national rail services, including the TGV, France's high speed rail network. SNCF is widely recognized in Europe and around the world as an entity involved in transportation and travel businesses. The Complainant’s online services are offered through the website “www.voyages-sncf.com”, a leading ebusiness websites in Europe.
SNCF employs more than 241,000 people in 120 countries across the globe and had a turnover of 17.8 billion Euros in 2009. The rail network consists of about 32,000 km of route, among which 1,800 km are high speed lines and 14,500 km electrified. About 14,000 trains are operated daily by SNCF, and around 1 billion passengers are annually transported by SNCF.
The company name SNCF has been registered in the French commercial register since 1955 and its acronym has been in use since 1937.
The disputed domain names incorporate the Trade Marks in their entirety and the addition of the geographic word “international” does not serve to prevent the disputed domain names from being confusingly similar to the Trade Marks.
The Respondent has no rights or legitimate interests in the disputed domain names. SNCF is not a generic term but is the acronym corresponding to the Complainant and the Trade Marks. It is not a common name in French or English. The Respondent has not provided evidence of legitimate registration or use of the disputed domain names. The Respondent has not been licensed, or otherwise authorised by the Complainant in any way to use the Trade Marks. The disputed domain names are resolved to third party parking websites with paid links (the “Websites”), and the use of the disputed domain names comprising the Trade Marks by the Respondent in this manner does not give rise to rights and legitimate interests.
The Websites contain French language references and links regarding the travel world. They are therefore targeted to French language speakers. Such links could lead Internet users believe that the Websites are either maintained by the Complainant or by a third party who is linked with the Complainant. The Trade Marks have been reproduced on the website to which the <sncfinternational.net> domain name has been resolved. Complainant contends that both of the disputed domain names are offered for sale. Furthermore, in response to the cease and desist letter sent by the Complainant’s representatives, the Respondent has offered to sell the disputed domain name <sncfinternational.com> to the Complainant for USD500, an amount far exceeding the reasonable registration costs for the disputed domain name. The Complainant has also suggested in correspondence with the Complainant’s representatives that it would be easier and faster to pay the Respondent for the disputed domain name <sncfinternational.com> rather than commencing UDRP proceedings.
For all of the above reasons, the disputed domain names have been registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreements for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Websites do not contain any words in the Chinese language;
(2) The exchanges between the parties have been entirely in English;
(3) This therefore demonstrates that the Respondent understands and is able to communicate in English;
(4) The Complainant is a French company and will therefore not understand Chinese language;
(5) English is widely used worldwide and is the first language of the Internet;
(6) Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding;
(7) The Respondent accepts US dollars as the currency for payment for the transfer of the disputed domain names;
(8) The Respondent has already been the Respondent in respect of a UDRP decision which was handed down in English (E. Remy Martin & Co and CLS Rémy Cointreau SAS v. Ke Zhao, WIPO Case No. D2011-0523).
The Respondent has requested that Chinese be the language of the proceeding in accordance with the Rules.
Xiamen eName Network Technology Corporation Limited dba eName Corp and Hangzhou E-Business Services Co., Ltd. have transmitted to the Center their verification responses confirming that the language of the registration agreements for the disputed domain names is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, for the reasons specified by the Complainant in its submissions (and referred to above) regarding the language of the proceeding, it appears the Respondent is in fact proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In making its determination regarding the language of the proceeding, the Panel has also taken into account the fact the Respondent has chosen not to file a Response.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English.
The Panel finds that the Complainants have rights in the Trade Marks and the SNCF INTERNATIONAL Trade Mark acquired through use and registration which predate by many decades the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Each of the disputed domain names comprises the Trade Marks in their entirety, together with the non distinctive geographical suffix “international”, which does not serve to distinguish the disputed domain names from the Trade Marks in any way. Furthermore, both of the disputed domain names contain the SNCF INTERNATIONAL Trade Mark in its entirety.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and the SNCF INTERNATIONAL Trade Mark, and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that the Complainants have authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks or the SNCF INTERNATIONAL Trade Mark. The Complainants have prior rights in the Trade Marks and the SNCF INTERNATIONAL Trade Mark which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Whilst the Panel notes that use of a domain name in respect of a website offering sponsored commercial links can sometimes, in certain circumstances, particularly where the trade mark in question is not well known or otherwise comprises generic or commonly used words or phrases, amount to a bona fide offering of goods or services. However, in all the circumstances of this case, and given also the Panel’s findings below in respect of bad faith, the Respondent would need to provide compelling reasons as to why such use is in all the circumstances justified. This is particularly so where the disputed domain names contain well known trade marks, as is the case in this proceeding.
The Respondent has chosen not to file a Response and there is no evidence that the Respondent has established a legitimate business of registering domain names comprising arguably generic, or in any event, less well known, words in order to set up websites containing sponsored links. To the contrary, the evidence suggests the Respondent is an opportunist who has registered the disputed domain names comprising the Complainant’s well known trade marks in order to profit either by selling them or by using them to attract consumers to the Websites for commercial gain. In all the circumstances the Panel concludes that such conduct does not amount to a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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.”
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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.”
The Panel has no hesitation in finding that the Respondent has engaged in a pattern of conduct of registering the disputed domain names comprising the Complainant’s well known trade marks, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Websites, or alternatively, in order to offer them for sale at prices far exceeding the Respondent’s reasonable registration costs. The Panel finds such use of the Trade Marks and the SNCF INTERNATIONAL Trade Mark in this manner is clear evidence of bad faith.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under both paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Complainant has also submitted evidence that the Respondent has engaged in a pattern of registering domain names comprising well known trade marks of other entities, and has been the unsuccessful Respondent in respect of a previous UDRP proceeding. The evidence also shows the Respondent has attempted to change the WhoIs registrant and contact details in respect of the disputed domain names following filing of the Complaint. In all the circumstances, the Panel finds such conduct amounts to further evidence of bad faith.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further evidence of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <sncfinternational.com> and <sncfinternational.net> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 5, 2011