Decision for dispute CAC-UDRP-107212

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns the following trademark registrations for SANEF:

• French trademark number 4712040, registered on 14 December 2020 in classes 09, 16, 25, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45; and
• European Union trademark number 008310831, registered 27 January 2010 in classes 09, 16, 25, 35, 36, 37, 38, 39, 41, 42, 43, 44, and 45.

The Complainant was created in 1963. It is a major actor in the field of motorway management. Its name is the acronym of “Société des Autoroutes du Nord et de l'Est de la France”. It is known as “SANEF” by the public.

The Complainant owns various trademarks registrations for SANEF, that predate the registration of the disputed domain name. The SANEF mark is affixed to signs on French motorways and is highly visible to users of French motorways.

The disputed domain name was registered on 5 December 2024.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it. 

The Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It reproduces the Complainant's trademark SANEF plus the word “peage”, which describes the Complainant's sector of activity.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and states:

1. the Complainant has trademark rights for SANEF since 2009;
2. the Respondent has no authorisation to use the mark, SANEF, nor register a domain name including its trademark;
3. the Respondent is making no legitimate use of the disputed domain name, which resolves to an active website that features the Complainant’s mark, reproduces the Complainant website's look and feel, and purports to check whether a user has outstanding motorway tolls;
4. the website will mislead the Complainant's customers into believing that they are accessing the Complainant’s website, which cannot be considered a bona fide offering of services or a fair use;
5. the Respondent chose to hide its identity, indicating a bad faith registration;
6. a Google search with the key words Host Master / Njalla Okta LLC leads to no result in relation to the contested domain name's root <SANEFPEAGE>; and
7. CAC-UDRP Case No.107045, SANEF v Host Master (Njalla Okta LLC) acknowledges the lack of legitimate interested of this Respondent.

The Complainant asserts that the disputed domain name was registered and is being used in bad faith and states:

1. the Respondent chose a domain name that is confusingly similar to the Complainant’s trademarks;
2. the disputed domain name incorporates the Complainant's name and trademark, SANEF, plus a generic word descriptive of the Complainant’s activity;
3. the Complainant’s trademarks were known, or at least should have been known to the Respondent, see WIPO, Case No. D2022-4169, SANEF v SANEF ALBERTIS in relation to the domain name <groupe-sanef.com>;
4. the Respondent merely registered the disputed domain name to prevent the Complainant registering as a domain name its trademark plus the most common used term “peage” and extension “.com”.;
5. the website associated with the disputed domain name closely resembles the Complainant’s legitimate platform for payment for motorways and will mislead the Complainant's customers into believing that they are accessing the Complainant’s website;
6. it is very likely that the Respondent also is responsible for the sending of courier, letters requesting people to log into the contested domain name website to pay a toll corresponding to a journey that has not been paid, giving information enabling this journey to be paid, and stating that failure to do so would result in surcharges being levied; and
7. the website found at the disputed domain name is being used for phishing or spoofing scams by appearing to be a legitimate website operated, maintained, and monitored by the Complainan

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name has been registered and used in bad faith.

Identical or confusingly similar

The disputed domain name incorporates the Complainant’s trademark SANEF. The addition of the French word “peage”, which is a word closely associated with the Complainant’s business, does not prevent the disputed domain name being confusingly similar to the Complainant’s distinctive mark.

The generic top level suffix ".com" is a standard registration requirement and can be disregarded when considering whether a disputed domain name is confusingly similar to a trademark in which the Complainant has rights. (See WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A).

The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and the requirements of Paragraph 4(a)(i) of the Policy have been met.

No rights or legitimate interests

The Complainant has provided evidence of its rights in the trademark, SANEF that predate the registration of the disputed domain name. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name and the burden of proof now shifts to the Respondent to show that it has relevant rights (see WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd).

The Respondent has not filed a Response, nor submitted any evidence to show any rights or a legitimate interest in the disputed domain. The evidence submitted by the Complainant indicates that the website using the disputed domain name displays the Complainant’s trademark and is being used for fraudulent purposes and not for any legitimate or non-commercial fair use.

The Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been met.

Registered and being used in bad faith

The Complainant’s trademark has been in use since at least 2010 and is highly visible on French motorways. The most likely explanation for registering the combination of the Complainant’s SANEF trademark and the word “peage” in the disputed domain name is that the Respondent knew of the Complainant and its rights and registered the disputed domain name in bad faith to trick internet users into thinking they were dealing with the Complainant.

The Respondent has been named as the respondent and has lost in numerous UDRP proceedings. See, CAC-UDRP Case No. 106195: “The Respondent has repeatedly been involved in, and lost, domain name disputes based on a similar pattern as this case concerning typo squatting of well-known trademarks. It is concluded that the Respondent makes bad faith use of the disputed domain name.”. See also CAC-UDRP Case No. 107045, SANEF v Host Master / Njalla Okta LLC.

The website associated with the disputed domain name pretends to be the Complainant’s legitimate website for payment for motorways tolls. The Respondent appears to intend, in bad faith, to mislead the Complainant's customers into believing that they were accessing the Complainant’s legitimate website.

The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been met.