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WIPO Arbitration and
La Société Nationale des Chemins de Fer Belges v. WIID NET
Case No. D2004-0197
1. The Parties
The Complainant is La Société Nationale des Chemins de Fer Belges, Brussels, Belgium, represented by Gevers & Partners S.A., Belgium.
The Respondent is WIID NET, St. Barthelemy Cedex,
97097 GP, France.
2. The Domain Name and Registrar
The disputed domain name <thalys.info> is registered
with Network Solutions, Inc., ("the Registrar").
3. Procedural History
a) The Complainant filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") by email on March 16, 2004, and as a hardcopy on April 14, 2004.
b) On March 17, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue.
On March 17, 2004, 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 for the administrative, billing, and technical contact. Furthermore, the Registrar confirmed that it will not change the status of the domain name registration except as provided in Paragraph 3 of the UDRP.
c) On April 15, 2004, the Center verified that the Complaint satisfies 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").
d) In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint via email and courier, and the proceedings commenced on April 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 5, 2004.
Having received no response from the Respondent within the time specified in the notification of the Complaint, on May 6, 2004, the Center notified the Respondent's default to both parties.
e) On May 13, 2004, the Center appointed Christian Schalk as the sole panelist in this matter. 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 paragraph 7 of the Rules.
On May 13, 2004, the parties were notified that Mr. Schalk had been appointed and that a decision was, save exceptional circumstances, to be forwarded to the Center by May 27, 2004.
f) The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules. Payment was properly made. The Panel agrees with the Center's assessment concerning the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. No response was filed by the Respondent.
g) The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found necessary to request any further information from the parties.
h) The language of the proceeding is English.
4. Factual Background
a) The Complainant is the national Belgian railway company. `Thalys SCRL' is the name of the subsidiary which handles the commercialization of the Thalys services.
Thalys is a high speed international service train which links cities in the northwest of France (for instance, Paris), Belgium (for instance, Brussels, Antwerp, Bruges, Gent) the Netherlands (for instance, Rotterdam, The Hague) and the western part of Germany (Aachen, Cologne and Düsseldorf) and Switzerland (Geneva). Technically, Thalys is a modified French `TGV' train (`TGV' stands for `high speed train') which is able to run under the different technical standards of the countries mentioned above.
b) The Complainant is owner of registrations of THALYS as a word mark and a device mark in various countries throughout Europe and in particular of the following registrations:
- European Community Trademark Registration No. 36020, application date April 1, 1996, registration date September 13, 2001, for THALYS device mark, covering goods and services in Int. Classes 12, 14, 16, 18, 24, 25, 28, 35, 38, 41 and 42
- International Trademark Registration No. 623372, dated July 25, 1994, for THALYS word mark covering goods and services in Int. Classes 12, 14, 16, 18, 24, 25, 28, 35, 38, 41 and 42 in the following countries: Austria, Switzerland, Germany, Spain, France Italy, Portugal, Belarus, Algeria, Morocco and Ukraine
- International Trademark Registration No. 625840, dated September 14, 1994, for THALYS device mark covering goods and services in Int. Classes 12, 14, 16, 18, 24, 25, 28, 35, 38, 41 and 42 in the following countries: Austria, Switzerland, Germany, Spain, France Italy, Portugal, Belarus, Algeria, Morocco and Ukraine
- Benelux Trademark Registration No. 544105 and 547505.
The Complainant's ownership of these trademarks has been evidenced by extracts from a trademark database.
c) Furthermore, the Complainant is owner of various THALYS - domain names such as <thalys.org>, <thalys.biz>, <thalys.be> and <thalys.de>.
d) The domain name <thalys.info> has been registered by the Respondent on October 5, 2001. This domain name registration was and has not been authorized by the Complainant.
e) After having learned about the registration of the disputed domain name by the Respondent, the Complainant's trademark attorney sent a cease and desist letter to the Respondent on March 31, 2003. In this letter the Respondent was informed that the Complainant has trademark rights in the term "THALYS". Furthermore, the Respondent was asked to contact the Complainant's attorney to initiate the transfer of the disputed domain name to the Complainant.
The Respondent did not show any reactions to this letter.
f) On April 23, 2003, the Complainant's attorney sent a second letter to the Respondent. In this letter the Respondent was informed that the Complainant has no intention to allow the violation of its trademark rights any further and therefore, the Respondent was requested to transfer the domain name at issue to the Complainant. The Respondent was asked to contact the Complainant's attorney via email until May 10, 2003, to receive directions on the transfer modalities for the disputed domain name.
On May 13, 2003, the administrative contact of the Respondent sent the following email to the Complainant's attorney in French language which has been translated by the Panel:
we acknowledge receipt of your letter of April 24 this year, but we have not received your letter of March 31, 2003 to which you refer.
We are indeed owner of the domain name THALYS.INFO.
Please read the following print out of the AFILIAS website on .INFO:
"All about .INFO
.INFO is the first unrestricted top level domain name since .COM. Everyone can register .INFO domain names. Everyone in the world is free to create and visit .INFO websites which opens a new era of evolution of the Internet."
Nevertheless, we understand that your client Thalys International BVBA and the SNCB eventually wish to have this name.
We are prepared to transfer the domain name to them if they compensate our technical expenditures. The amount of these technical expenditures is 10.000 Euros.
If your client accepts to pay us this compensation we will immediately initiate the procedure on which you will inform us, after payment has been done [by your client].
In the negative case, I suggest you to refrain from any legal procedure. Be informed that we are located in the department of Guadeloupe and therefore, the tribunals of Basse Terre would be competent to deal with this case. It is certain that this procedure, which outcome would be uncertain, will lead your client to an enormous waste of money. Be informed also that the courts in our department have currently a backlock of 2 to 3 years for all commercial litigations.
Please be informed to use for all [further] communication exclusively the email adress: [email address].
It is not secured that any communication sent via mail will be answered at all. Furthermore, it is futile to send eventual correspondence via registered mail or to use the services of a bailiff in order to secure delivery at "right hands". They will be all systematically rejected from our side [...]."
g) In the documents submitted to the Panel, there are three printouts of a website.
On the first, where neither a date nor an URL is mentioned there is a banner which says "THIS WEB SITE IS CURRENTLY UNDER CONSTRUCTION".
The other two printouts differ only from the date of printout. The first is from February 23, 2004, and the second from April 15, 2004.
Each of this two websites indicates:
EST A VENDRE
IS FOR SALE
Contact: [email address]
5. Parties' Contentions
a) The Complainant contends that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant alleges that the disputed domain name differs from the Complainant's THALYS trademarks only by inclusion of the generic and functional top level domain ".com". However, the addition of the generic and functional top level domain ".info" in the designation <thalys.info> provides a similar impression and does not clearly distinguish between the respective designations in meaning, appearance, sound or overall impression.
The Complainant submits that the THALYS word mark is contained within the Top Level Domain of <thalys.info>. In his opinion, confusion often occurs where the entirety of one mark is contained within the other. The addition or variation in a mark of less conspicuous, weak and common elements may aggravate confusion by furthering the suggestion that the Respondent's trademark is a variation for an extension of the trademark owner's existing companies, divisions, brands or products. The Complainant contends that in accordance to European case law, the confusion against which the trademark laws protect is the erroneous assumption that there is a common endorser, source or affiliation between the respective products or services. For this reason, the Complainant concludes, that the addition of the generic and functional top level domain ".info" as in the disputed domain name is common in everyday usage. Therefore, the domain name at issue would therefore, easily taken as merely as a derivative website to "www.thalys.com", which is the Complainant's official website.
Furthermore, the Complainant alleges that the trademark THALYS should benefit from a large scope of protection because of its very distinctive character since THALYS is a word invented by the Complainant which has no real meaning.
b) The Complainant contends, that the Respondent has no legitimate interest in respect of the disputed domain name since to his knowledge, the Respondent is neither a licensee nor is he authorized to make any use whatsoever of the Complainant's trademark or trade name. In his opinion, there are no prior trademark registrations in the name of the Respondent for any trademark that incorporates the term THALYS, or the like.
The Complainant alleges, that to the Complainant's knowledge, the Respondent does not operate any business under any trademark that incorporates the term THALYS, or the like. Moreover, the Respondent's name or the name of the administrative or technical contact does not incorporate the element THALYS in any way.
The Complainant contends that to his knowledge, the Respondent's sole interest in the term `THALYS' is in the registration and offer for sale of the disputed domain name to the Complainant.
c) The Complainant contends that the Respondent registered the disputed domain name in bad faith because the Respondent knew or should have known of the registration and use of the Complainant's trademarks prior to registering the domain name due to the pre-existing registrations of the THALYS trademarks and the other THALYS domain names.
The Complainant submits that the use of the THALYS trademark to identify the Complainant's goods and services was intensively published throughout France. Therefore, it is the opinion of the Complainant that the Respondent was well aware of the THALYS trademark due to its publicity, many registrations and the Complainant's maintenance of numerous websites dedicated to the services sold under the THALYS trademark, including the nearly identical websites "www.thalys.com", "www.thalys.biz", "www.thalys.org", "www.thalys.be" and "www.thalys.de".
The Complainant alleges that the important presence of THALYS on the Internet may also be demonstrated through search engines such as "www.google.com", where the searches revealed at least on the first four pages only references to the Complainant.
Moreover, the Complainant argues that the trademark THALYS is a well known trademark in the European Union including France where the Respondent lives. The THALYS trademark is recognized by all consumers, even if they are not interested in the Complainant's activities. The Complainant cites statistics from a Thalys website which indicates that during the 20 months following its launching date (June 2, 1996), five million passengers traveled with the Thalys train. Furthermore, the Complainant cites a poll from 2001, which says that 60% of all French residents stated in December 2000, that they know the Thalys train which had been also the second most spontaneously cited train after the TGV.
For these reasons, the Complainant concludes that it can be reasonably assumed that the Respondent knowingly and purposefully chose and registered the disputed domain name which in the Complainant's opinion is identical or confusingly similar to the Complainant's trademarks.
d) The Complainant contends, that the disputed domain name is being used in bad faith. The Complainant cites the correspondence with the Respondent which has been outlined in the factual background above. Furthermore, the Complainant refers to a printout of the "www.thalys.info" website on February 23, 2004. The Complainant alleges that this website is detrimental to the Complainant's interests since it tarnishes the reputation of the Complainant because customers could believe that the Complainant is no longer able to provide specific information on the services they propose and may be encounters financial difficulties.
Therefore, the Complainant considers that these circumstances explain that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or to a Complainant's competitor, for valuable consideration in excess of the documented out -of- pocket costs directly related to the domain name at issue.
e) Furthermore, the Complainant asserts that the fact that on the website accessible under the disputed domain name appeared first the banner "THIS WEBSITE IS CURRENTLY UNDER CONTRUCTION" and on the present website the message
"IS FOR SALE
Contact: [email address]"
has to be regarded as passive holding of the disputed domain name. It is the Complainant's opinion that this constitutes bad faith use of a domain name in accordance with numerous decision rendered under UDRP proceedings.
The Respondent did not reply to the Complainant's contentions. Except the email
of May 13, 2003, which has been brought before the Panel as an annex
to the Complaint, the Respondent has not given any statements in this case.
6. Discussion and Findings
The jurisdiction of the Panel is limited. National law is not determinative for the purpose of decisions under this policy. The Panel shall 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 it deems applicable (Paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The domain name holder has no "rights or legitimate interest in respect of the domain name"; and
C. The domain "has been registered and is being used in bad faith."
It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (Paragraph 2(a) of the Rules).
In this case, the Panel is satisfied that Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Since the Respondent has not contested the allegations of the Complainant,
the Panel shall decide on the basis of the Complainant's submissions, and all
inferences that can reasonably be drawn there from (see: Bayerische Motorenwerke
AG v. Dariusz Herman, Herman DOMCREATE et co., (WIPO
Case No. DNAME2004-00001).
A. Identical or Confusingly Similar
a) The Panel finds that the Complainant is owner of THALYS as a word mark in Algeria, Austria, Belarus, France, Germany, Italy, Morroco, Portugal, Spain and Ukraine and that the Complainant is also owner of a THALYS device mark in the European Union and some Eastern European and North African countries.
b) Ignoring, as the Panel is entitled to do, the generic ".info"
Top Level Domain, the disputed domain name is identical with the Complainant's
word mark (see also: Deutsche Post AG v. MailMij LLC (WIPO
Case No. D2003-0128). Even if the ".info" Top Level Domain would
be regarded as a element which distincts the disputed domain name from the Complainant's
trademark, the result would be the same since many cases under the Policy have
held that "essential" or "virtual" identity is sufficient
for the purposes of the policy (see also: Köstrizer Schwarzbierbrauerei
v. Macros-Telekom Corp., (WIPO
Case No. D2001-0936), Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,
(WIPO Case No. D2001-0615) with further
c) Therefore, the Panel finds that the domain name at issue is identical with the Complainant's THALYS word mark. For this reason, it is not necessary to decide whether the domain name at issue is confusingly similar or nearly identical with the THALYS device mark.
B. Rights or Legitimate Interests
The Policy paragraph 4(c) provides that any of the following circumstances, in particular but without limitation, shall demonstrate rights or legitimate interests to the domain name for the purposes of paragraph 4(ii);
a). "before any notice to you of the dispute, your use of, or demonstrable preparation 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
b). you (as an individual or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
c). you are making a legitimate non-commercial 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.
The Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:
a) The Complainant has not authorized the Respondent to use its trademark nor
to register the disputed domain name which is identical with one of the Complainant's
trademarks. Furthermore, the Respondent is not known by the domain name at issue
and does not offer goods or services under the THALYS trademark. The Respondent
has also not acquired trademark or service mark rights for THALYS and is not
making any legitimate noncommercial or fair use of the disputed domain name.
These circumstances are sufficient to constitute a prima facie showing by Complainant
of absence of rights or legitimate interest in the disputed domain name on the
part of the Respondent. The evidentiary burden, therefore, shifts to the Respondent
to show by concrete evidence that it does have rights or legitmate interest
in that name. (see Köstrizer Schwarzbierbrauerei v. Macros-Telecom Corp.,
(WIPO Case No. D2001-0936), Do
The Hustle, LLC v. Tropic Web, (WIPO
Case No. D2000-0624) with further references).
b) The result would be the same even in case the Respondent would have replied to the Complaint in time and would have repeated at least what he wrote in his email of May 13, 2003.
The Panel agrees that in principle everyone is free to register domain names.
The question then would be whether the mere registration of the domain name
would be sufficient to establish rights or legitimate interests (see also:
Educational Testing Service v. TOEFL, (WIPO
Case No. D2000-0044) where the Panel of this case finds that this would
not be the case since otherwise all registrants would have such rights and interests
and no Complainant could succeed on a claim of abusive registration. Construing
the Policy so as to avoid an illogical result, the Panel of this case finds
that mere registration does not establish rights or legitimate interests in
a domain name). However, this question does not need to be decided in this case,
because the Respondent has registered a domain name which is identical with
a trademark of the Complainant. According to the material before the Panel and
in absence of a response to the Complaint the Panel finds that the THALYS -
trademark is also a wellknown trademark at least in France where the Respondent
lives. Furthermore, the Respondent offered the disputed domain name for sale
on the "www.thalys.info" website and asked the Complainant for Euro
10.000 as a price for the transfer of this domain name. This price is in excess
of out of pocket cost and can not constitute a bona fide offering of services
in the meaning of paragraph 4(c)(i) of the Policy (see also Jack Wolfskin
Ausrüstung für Draussen GmbH & Co. KGaA v. Get Register, (WIPO
Case No. D2003-0976), Educational Testing Service v. TOEFL, (WIPO
Case No. D2000-0044).
Moreover, the Respondent told the Complainant that he would be willing to transfer the domain name at issue to him after having received Euro 10.000.- from the Complainant. Otherwise the Complainant would have to wait for years until a court would perhaps decide this case in the favour of the Complainant. Such a behaviour where the disputed domain name is kept like a hostage and the trademark owner is prevented from using it unless he pays Euro 10.000 like a ransom money is also an argument against admitting any legitimate interests of the Respondent in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the domain name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) stets forth four nonexclusive criterias for Complainant to show bad faith registration and use of domain names:
1) 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 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
2) 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
3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location of a product.
a) The Respondent offers the domain name at issue for sale on a website to the general public. Furthermore after having contacted twice by the Complainant's attorney, the Respondent asked for Euro 10.000.- as a price for transferring the disputed domain name to the Complainant.
Offers to sell to the public at large domain names that are identical or confusingly similar of trademarks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
b) According to the material before the Panel and in absence of a response to the Complaint, the Panel finds that the Respondent when he registered the disputed domain name, was aware of the Complainant's trademark. There are polls from the year the Respondent registered the disputed domain name which say that a majority of french men know the Thalys train. Furthermore, simple searches in a common search engine like Google, which is accessible for everyone and free of charge, revealed many hits mentioning the Thalys train and the services related to this train. The Complainant is also owner of THALYS - domain names under various gTLDs (except the gTLD ".info") and ccTLDs.
c) Therefore, the Panel finds, that there are enough evidence to believe that the Respondent must have been aware of the Complainant and his trademark rights in THALYS at the time when he registered the domain name. Moreover, even after the Respondent had been contacted by the Complainant's attorney which made him aware of the Complainant's trademark rights, he continued to offer the disputed domain name for sale.
d) All these facts lead the Panel to the conclusion that the Respondent in this case registered the disputed domain name primarily for the purpose of selling it to anyone, prepared to pay a price exceeding his direct cost related to the domain name, especially to the Complainant.
e) No use has been made of the disputed domain name other than to offer it
for sale. The use requirement has been found not to require positive action,
inaction being within the concept (see Laboratoire Pharmafarm (SAS) v. M.
Sivaramakrishan, (WIPO Case No. D2001-0615)
with further references).
f) Therefore, the Panel finds that the disputed domain name has been registered
and used by the Respondent in bad faith.
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 <thalys.info>
be transferred to the Complainant.
Dated: May 27, 2004