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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Nationale des Chemins de fer Belges v. Mr. Vincent Maton and Mr. Benoît Wilmotte
Case No. D2001-0340
1. The Parties
The Complainant is La Société Nationale des Chemins de fer Belges, Société anonyme de droit public, Rue de France, 85, B - 1060 Brussels, represented by the Bureau Gevers S.A. (Holidaystraat, 5 at B - 1831 Diegem; Mr. Christophe Noël is acting for the Bureau Gevers).
The Respondent is Mr. Vincent Maton, and Organization, Technical, Zone, Administrative Contact, Mr. Benoît Wilmotte, Rue de l’Arbre Bénit, 107, B - 1050 Brussels.
2. The Domain Names and Registrar
The three disputed domain names are <thalyscope.com>, <thalyscope.org> and <thalyscope.net>.
The Register.com, Inc. is the Registrar.
3. Procedural History
The stages of the administrative proceeding are the following:
a. The Complainant initiated the proceeding by filing a complaint in electronic format on March 8, 2001, and by mail on March 13, 2001. This original complaint was filed against Mr. Benoît Wilmotte (hereafter: the original Respondent). The Acknowledgement of Receipt of the WIPO Arbitration and Mediation Center ("WIPO") is dated March 13, 2001. Payment by the Complainant of the requisite filing fees accompanied the mailing. According to the representative of the Complainant, a copy of the original complaint was also sent to the Registrar.
b. On March 15, 2001, WIPO addressed a Request for Registrar Verification to Register.com, in order to confirm, among other things, that the specified domain names are registered with this registrar and that the original Respondent is the current registrant of the domain names.
c. On March 21, 2001, Register.com confirmed that the three domain names had been registered through its services, but that Mr. Vincent Maton was the current registrant of the disputed domain names. Customers of Register.com have access to Domain Manager, an on-line utility that allows them to modify their domain name registration (i.e., contact information, IP address, dns changes) directly. Therefore the WHOIS contact information can be changed. However, these modifications in the contact information do not change the registrant in the records of Register.com. Customers are required to fill out the appropriate Registrant Transfer forms with the notarized signature and/or identification photo of the registrant. This procedure for making a change was not followed in the present case, thus Mr. Vincent Maton has to be considered as the registrant of the disputed domain names.
According to Register.com, the Uniform Domain Name Dispute Resolution Policy (hereafter: the "Policy") is applicable to the disputed domain names, but Register.com contested having received a copy of the Complaint.
d. Further to this, WIPO sent, on March 27, 2001, a Deficiency Notification to the representative of the Complainant, asking for an amended complaint with the correct indication of the name of the Respondent.
e. The representative of the Complainant addressed an Amended Complaint (on March 29, 2001, in electronic format and on March 30, 2001, by fax) stating that the Complaint filed by the Complainant was directed both to Mr. Benoît Wilmotte (the original Respondent) and Mr. Vincent Maton (the current registrant of the disputed domain names).
f. On April 3, 2001, the Notification of Complaint and Commencement of Administrative Proceeding was addressed to the Respondent by WIPO.
g. On April 25, 2001, WIPO transmitted notification to the Respondent of its default in responding to the Complaint addressed on April 3, 2001. No reply was received by WIPO.
h. On May 17, 2001, the undersigned transmitted by fax the Statement of Acceptance and Declaration of Impartiality and Independence to WIPO.
On May 21, 2001, the notification of Appointment of Administrative Panel was sent to both the Complainant and the Respondent. WIPO notified the Panel that, barring exceptional circumstances, the date scheduled for the issuance of the Panel’s decision is June 3, 2001.
i. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).
j. The proceedings were conducted in English.
4. Factual Background
The Complainant has provided a copy of its Benelux trademark n° 0609751 of September 11, 1996, on the word "thalyscope" (registration for classes 16 (books, newspapers etc.), 35 (advertising, etc.) and 38 (telecommunications); date of expiration: September 11, 2006), as well as of its International registration n° 686.304 covering the German and French territories. The Complainant states that the trademark is valid and that the transfer of the above trademark from the original owner ("Image Transfer Industries SPRL) to the Complainant (by an act registered on December 10, 1997) respects all legal conditions. The validity of the Complainant’s trademark registration for "thalyscope" has not been contested by the Respondent, and the Panel accepts as an undisputed fact that the Complainant is the holder of a valid trademark registration for "thalyscope".
The three disputed domain names were registered in English on March 9, 2000. According to the registrar, Mr. Vincent Maton is the registered owner of the disputed domain names and Mr. Benoît Wilmotte is indicated in Register.com’s WHOIS database as the Organization, Technical, Zone, Administrative Contact.
After having discovered that "thalyscope" was registered as a domain name in the ".com", ".net" and ".org" GTLDs, the Complainant tried to reach the Respondent by registered mail (in October and November 2000) and by e-mail. A copy of the e-mail sent by the representative of the Complainant is not submitted, but the Complainant produced a copy of an e-mail sent by wilmotte.benoi(@netbel.be to email@example.com (Mr. Christophe Noel handles the case of the Complainant). This e-mail apparently sent on January 27, 2001, contains the following message: "Alors disons 10.000 dollars pour les trois noms de domaine (thalyscope.com, .org et .net), frais de transfer (sic) et de transaction à votre char (sic). Si vous ne désirez pas acheter les trois, le prix reste inchangé. Benoit" (Panelist’s translation: "Then let us say 10.000 dollars for the three domain names (thalyscope.com, .org and .net), including the costs of transfer and of transaction which are chargeable to you. If you do not want to buy the three, the price remains unchanged. Benoit").
The Policy approved by ICANN on October 24, 1999 was implemented by Register.com on December 1, 1999, as indicated on its website. This Policy requires that domain name registrants submit to a mandatory administrative proceeding by an approved dispute resolution service provider, such as WIPO. The Respondent has not contested that it is properly before the Administrative Panel.
5. Parties’ Contentions
The Complainant states that, with the French, Dutch and German railways, it provides the very well-known Thalys rail network service. The Thalys is a high-speed train that goes through Northwest Europe (Paris, Brussels, Amsterdam and Cologne, as well as The Hague, Schiphol, Charles de Gaulle Airport, etc.). The Thalys offers a wide range of on-board services to its customers, among which is a practical guide offering information on the Thalys and the cities it serves. This guide called "Thalyscope" is available free of charge in the trains. It is well known by people who travel by Thalys.
The Complainant further explains that it has a web site dedicated to its activities, namely www.thalys.com. The Complainant decided more recently to open a web site for each of the services proposed. When it intended to launch a web site under the domain name "thalyscope", the Complainant discovered that this domain name was already registered.
The Complainant indicates that the trademark "Thalyscope" (see above), as well as the trademark "Thalys" also owned by the Complainant (see Benelux registrations No 547.505 and 544.105), have a very distinctive character (Thalys is a word invented by Complainant and which has no real meaning). All these trademarks were registered between 1994 and 1997; they are all intensively used in Belgium where the Respondent has an address.
The Complainant supports the view that, when registering the domain name in March 2000, the Respondent knowingly and purposefully chose a name which is identical (or confusingly similar) to the Complainant’s trademarks, which are already registered and in use. Moreover, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as the Respondent is not a licensee and is not otherwise authorized to make any use whatsoever of the Complainant’s trademarks. The Complainant further claims that the Respondent has shown bad faith, as he tried to sell the registered domain names for 10.000 dollars, and has provided no evidence whatsoever of any actual or contemplated use in good faith of the domain names.
The Complainant requests that the domain names <thalyscope.com>, <thalyscope.org> and <thalyscope.net> be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy distinguishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief.
These elements are that:
"(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith."
It is essential that the dispute resolution proceedings respect the due process requirements. That means that the respondents must have received adequate notice of proceedings initiated against them, and a reasonable opportunity to respond. In the present case, the Panel considers that WIPO took all the necessary steps to notify the Respondent of the filing of the Complaint and initiation of these proceedings.
The Respondent has defaulted in providing a response to the allegations of the Complainant (in fact, its sole response is the e-mail sent before the initiation of the proceedings with a proposal of price for the transfer of the disputed domain names), which allows the Panel to draw some conclusions on the basis of the Complainant’s undisputed allegations.
(i) The Panel finds that the Complainant is the owner of the trademark "Thalyscope" (see details in points 4 and 5 above). In the absence of a challenge to the distinctive character of the trademark "Thalyscope" by the Respondent, the Panel considers that it is a valid trademark.
The domain name registered by the Respondent is identical to the Complainant’s registered trademark, with the exception of the added generic top-level domain names ".com", ".org" and ".net". Moreover, the disputed domain names might be confusingly similar to the other trademark of the Complainant, "Thalys".
The Complainant has therefore met the burden of proving that the Respondent is the registrant of domain names which are identical or confusingly similar to the trademark(s) owned by the Complainant.
(ii) There is no evidence on record that would indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain names. Indeed the Respondent has only registered these domain names and has apparently offered to sell them. The Respondent has not engaged in any action that could show that it has a legitimate interest (such as the opening of a web site under these domain names in order to offer products or services, or to express its opinion on the services rendered by the Complainant). The mere offering of the domain names for sale to the representative of the Complainant (by e-mail) does not constitute a right or legitimate interest in these names.
In light of the Respondent’s default and silence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
(iii) Considering the third element, the registration and use in bad faith, the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (paragraph 4(b)). For example: circumstances indicating that the domain name has been registered or acquired by a respondent "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 (…) for valuable consideration in excess of (the respondent’s) documented out-of-pocket costs directly related to the domain name" (Paragraph 4(b)(i)).
As there is no evidence on record that the Respondent has undertaken any act regarding the disputed domain names other than to offer them for sale, the Panel concludes that the offering for sale was the Respondent’s purpose for the registration.
In the present case, the offering for sale of the domain names (to the representative of the trademark owner for a price of 10.000 dollars, obviously in excess of out-of-pocket costs) establishes that the registration and use were in bad faith, pursuant to the Policy (paragraph 4(b)(i)).
Moreover, were the offering for sale of the domain names not established, the presence of bad faith could be found in something else: inaction which is within the concept of "being used in bad faith", as supported by the actual provision of Paragraph 4(b) of the Policy. It has already been concluded by other Panels that the Respondent’s failure to respond to the Complaint allows the inference that the evidence would not have been favorable to the Respondent.
Therefore, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.
The Complainant has thus established the three elements necessary for the finding that the Respondent has engaged in abusive domain name registration.
Based on its findings that the Respondent has engaged in an abusive registration of the domain names <thalyscope.com>, <thalyscope.org> and <thalyscope.net> within the meaning of Paragraph 4(a) of the Policy, the Panel directs the registar to transfer these three domain names to the Complainant, Société Nationale des Chemins de fer Belges.
Dated: June 3, 2001