WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. FM Laughna
Case No. D2007-1736
1. The Parties
The Complainant is Alstom, Levallois Perret, France, represented by Cabinet Dreyfus & Associ�s, France.
The Respondent is FM Laughna, Easton, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2007. On November 26, 2007, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On November 26, 2007, GoD, Inc. transmitted by email to the Center its verification response advising of new registrant information. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 28, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied 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”).
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 December 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on January 7, 2008. 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.
Although the Complaint was initially brought against Domains by Proxy (a domain name privacy service), in response to the request from the Center, the Registrar confirmed that the disputed domain name is held in the name of FM Laughna. For similar reasons given by the Panel in Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638, the Panel has therefore accepted FM Laughna as the proper respondent in these proceedings.
4. Factual Background
As there is no Response, the following facts are not contested.
The Complainant is a French Company incorporated under French law.
The Complainant is a global leader in power generation and rail transport infrastructure. It serves the energy market through its activities in the field of power generation and the transport market through its activities in rail and marine.
The Complainant has supplied more than 25% of the world’s installed power generation capacity and has an 18% market share in rail transportation worldwide. It provides turnkey integrated power plant solutions and associated services for a wide variety of energy sources, including hydro, gas and coal. It also built the world’s largest luxury cruise liner, the Queen Mary 2.
The Complainant employs 65,000 people in 70 countries, serving customers worldwide. Those locations include several in the United States of America, where the Respondent is apparently based.
The Complainant provided evidence that, as at September 17, 2007, the disputed domain name reverted to a Godaddy advertising page providing commercial links related to cars.
The Complainant also sent a cease and desist letter by e-mail and registered letter dated August 30, 2006, to the Respondent, asking for the transfer of the disputed domain name. Despite many reminders, the Complainant did not receive any substantive answer. The only evidence of a communication to the Complainant in response to these communications was a copy of an email, apparently from the Respondent, dated May 2, 2007 (a copy of which was attached to the Complainant). In that email, the Respondent stated only that “I am contacting you in accordance with the below [an email from the Complainant’s representative regarding “the possible cancellation of your privacy service for ALTOMPARTS.COM.”] You might recall that last year I also received a similar notice and also promptly contacted you at that time.”
Evidence in the case file indicates that, at the date of the Panel’s appointment, the disputed domain name reverted to a rudimentary website. At the top of the webpage, was a statement that “This is a free Starter Web Page courtesy of GoD.” Immediately below that statement, in large type, is the statement “The Continuing Story of Al Stomparts” next to a small photograph of a mountaineer apparently at the top of a mountain. In smaller type, there is then the statement “Although there are many mountains in the world, there is only one Al Stomparts, mountaineer extraordinaire. This website will chronicle the many jouney’s [sic] and adventures of this climber. More to come soon.” The disputed domain name reverted to that same webpage at the date of this decision.
5. Parties’ Contentions
A. Complainant
The following is summarized from the Complaint, in relation to each of the three matters which the Complainant must prove under paragraph 4(a) of the Policy.
Identical or confusingly similar
The disputed domain name is confusingly similar to the numerous trademarks registered by the Complainant.
The Complainant is the owner of numerous trademarks ALSTOM throughout the world among them five American trademarks. The disputed domain name entirely incorporates the Complainant’s trademark and trade name ALSTOM with the addition of the term “parts”.
The addition of the term “parts”, a generic term, does not serve to distinguish the disputed domain name from the Complainant’s trademark. On the contrary, it emphasizes the confusion regarding the connection between “Alstom” and transport infrastructure. Numerous decisions under the Policy have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute. (PepsiCo, Inc. v. Kieran McGarry,WIPO Case No. D2005-0629.)
It has also been held in numerous decisions that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the relevant marks and the disputed domain name.
Rights or legitimate interests
The Respondent has no rights or legitimate interests in respect of the domain name in dispute under Paragraph 4(a)(ii) of the Policy.
The Complainant submits that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating those trademarks.
Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name.
And finally, the Respondent is not making any legitimate non-commercial or fair use of the domain name, as it leads the internet users to a page providing commercial links in the field of transport and auto parts.
The Respondent barely answered the Complainant’s cease and desist and its reminders. The Respondent has not otherwise demonstrated any right or legitimate interest regarding the disputed domain name.
Bad faith
The Complainant contends that the disputed domain name was registered and has been used in bad faith.
It seems obvious that the Respondent knew or must have known the Complainant at the time it registered the disputed domain name. The Complainant is well-known worldwide. Besides, a simple search via Google or any other search engine using the keyword “ALSTOM” or “ALSTOM Parts” demonstrates that all results relate to the Complainant’s websites or business.
In addition, in a recent WIPO UDRP decision the then Panel found that the Complainant’s trademarks are “not only well-known in Australia, where the Respondent resides, but around the world” (Alstom v. Cameron Jackson,WIPO Case No. D2007-1022).
Therefore, it seems quite difficult to believe that the Respondent was not aware of the existence of the Complainant at the time it registered the disputed domain name. In fact, the addition of the term “parts” on the Complainant’s trademark ALSTOM clearly indicates that the Respondent had the Complainant in mind while registering the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
To succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant provided substantial evidence of its registered rights in the trademark ALSTOM.
The Panel finds that the disputed domain name is confusingly similar to that mark.
The Complainant’s mark is wholly and exactly incorporated in the disputed domain name, with the addition only of the generic word “parts”. The Complainant’s mark appears to be distinctive and widely known. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such a trademark for purposes of the Policy, despite the addition of common or generic words. (See for example, Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Playboy Enterprises International, Inc. v. Hector Rodriguez,WIPO Case No. D2000-1016.)
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances which, if established by the Respondent, demonstrate its rights to or legitimate interests in the disputed domain name. The Respondent has provided no evidence of such rights, in response to the Complainant’s contentions that the Respondent lacks them.
The only available evidence in this respect is the content of the Respondent’s website. However, the Complainant’s evidence of that website, as it was before notification to the Respondent of this dispute, was that it was being used in connection with the advertising of auto parts – none of which apparently related to the term or mark ALSTOM. As such, the disputed domain name appears to have then been used to misdirect Internet traffic that may have been looking for the Complainant. The Respondent has provided no evidence to the contrary.
At the date this dispute was formally notified by the Center, the Respondent’s website had changed. As noted above (under ‘Factual Background’) the website then purportedly related to the “mountaineer extraordinaire” “Al Stomparts”. But this does not suggest to the Panel that the Respondent has made a fair use within the meaning of paragraph 4(c)(ii) of the Policy, or had suddenly changed its activity such that it might have some other type of legitimate interest. Rather, the Panel considers that it suggests the opposite. The change to the website came after notification of this dispute. The content of the website appears to have taken little effort to create. There is no evidence in the case file that “Al Stomparts” is a real person. As such, it appears to the Panel more likely that this change to the website was merely an attempt to create a veneer of legitimacy, where it was otherwise lacking.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of a domain name in bad faith, including that:
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
The Panel finds that this is what the Respondent has done. As noted above, the disputed domain name is confusingly similar to the Complainant’s mark. The Complainant provided evidence of the disputed domain name being used, until recently, in connection with the advertising of commercial products. As found by a previous Panel (Alstom v. Cameron Jackson,WIPO Case No. D2007-1022) the Complainant’s marks are well-known around the world. As such, it seems unlikely that the Respondent was unaware of the Complainant and its mark. Being aware of the Complainant’s mark, it is likely that the Respondent had the relevant intention to benefit from any confusion with the mark, for the purpose of paragraph 4(b)(iv) of the Policy.
This finding of bad faith is supported by other evidence in this case. In particular, the Complainant provided evidence of having written a cease and desist letter to the Respondent’s privacy service (Domains by Proxy, Inc.) on August 30, 2006, which the Complainant subsequently followed up on April 16, 2007. Subsequently, it appears that the Respondent’s email address was disclosed to the Complainant, and the Complainant sent a further communication to the Respondent on May 1, 2007 about there being a “potential legal issue with this domain regarding trademark infringement.” A brief email was received in response from the Respondent (noted above). But there is no evidence of any further communication from the Respondent. As such, the Respondent failed to give any substantive reply to the Complainant’s cease and desist letter, either because he sought to avoid communications in connection with the disputed domain name, or simply chose not to reply. Some previous Panels have found that that failure to acknowledge or reply to a cease and desist letter may in certain circumstances be evidence of bad faith (Ebay, Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632.)
7. Decision
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, be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: January 21, 2008
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