La Société Nationale des Chemins de Fer Belges v. Benoît Wilmotte

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 christophenoel@yahoo.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

A. Complainant

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.

B. Respondent

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.

7. Decision

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.

Alain Strowel

Sole Panelist

Dated: June 3, 2001

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