WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. sv-alstom
Case No. D2008-0611
1. The Parties
The Complainant is ALSTOM, Levallois Perret, France, represented by Cabinet Dreyfus & Associ�s, Paris, France.
Respondent is sv-alstom, Ooitaken, Japan.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC, Virginia, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 21, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 21, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2008.
The Center appointed Haig Oghigian as the sole panelist in this matter on June 4, 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.
4. Factual Background
As there is no submission from the Respondent, the below facts are taken from the Complaint.
The Complainant is a global leader in power generation and rail transport infrastructure. It has supplied more than 25% of the world’s installed power generation capacity and has an 18% market share in rail transportation worldwide.
ALSTOM Japan widely covers Asian markets including China, Republic of Korea and Taiwan, Province of China in addition to the Japanese domestic market. It is celebrating this year the 101st anniversary of the Group’s presence in the country. Its activities in Japan cover the design, supply and service of equipment and systems for power plants and environmental control systems and related maintenance and after sales services.
The disputed domain name was created on July 19, 2004, and is currently inactive.
5. Parties’ Contentions
A. Complainant
The Complainant requested that the domain name be transferred to the Complainant.
In relation to the element in paragraph 4(a)(i) of the Policy, the Complainant asserts that it is the owner of Japanese trademark ALSTOM no 4375271 registered on April 14, 2000, and Japanese trademark ALSTOM no 4768275 registered on April 30, 2004.
The Complainant asserts it is the owner of numerous domain names reproducing its main trademark ALSTOM. ALSTOM is also the Complainant’s trade name.
The Complainant contends that the domain name in dispute reproduces precisely and totally the trademark and trade name ALSTOM in the second part of the domain name with the adjunction of “sv-” in the first part; “ALSTOM” is a distinctive term without any alternate meaning; and the mere addition to the domain name of “sv-” is not sufficient to avoid confusing similarity with the Complainant’s trademarks.
In relation to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use and register its trademarks, or to seek the registration of any domain name incorporating the Complainant’s trademark. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name.
In relation to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that according to the UDRP precedent, the Respondent’s knowledge of the Complainant’s trademark when he registered the disputed domain name constitutes evidence of bad faith. The Complainant further contends that the lack of active use, together with the registration of the disputed domain name, constitutes bad faith.
B. Respondent
The Respondent did not submit a Response and has made no communication in connection with the case
6. Discussion and Finding
Pursuant to paragraph 4(a) of the Policy, the Complaint must prove that each of the following three elements are present if the Complaint is to prevail:
(i) The Respondent’s 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 respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent has registered the domain name . Apart from the insertion of the adjunction “sv-”, this name is identical to, and encompasses the Complainant’s trademark ALSTOM in its entirety. The Panel is therefore satisfied that the domain name at issue is confusingly similar to the mark and Complainant has proven paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is commonly understood that a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. However, as such information is primarily within the knowledge of the respondent, once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
In this case the Panel finds that the Complainant has made a prima facie case showing that Respondent does not have rights or legitimate interests in the disputed domain name. More specifically, the Respondent is not affiliated with the Complainant in any way and has not been authorized to use the trademarks of the Complainant, or to seek registration of any domain name incorporating said trademarks. It is therefore up to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent to demonstrate its rights or legitimate interests, including:
(i) the use of, or demonstrable preparations 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
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial 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 disputed domain name is currently inactive and there is no evidence that it is being used for any offering of goods or services, or of any legitimate noncommercial or fair use of the domain name. In addition, there is also no evidence showing that it is commonly known by the domain name.
The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that a lack of active use does not automatically demonstrate bad faith. Previous panels have found that “in determining whether there is bad faith on the part of a respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Examples given by previous panels in similar cases, where there is a lack of active use of a disputed domain name, and where the respondent did not submit a response, suggest that the following elements may be taken into account when considering whether there is bad faith on the part of the respondent:
(i) whether it is possible to conceive a plausible circumstance in which the respondent could legitimately use the disputed domain name;
(ii) whether the respondent knew or should have known of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating that mark; and
(iii) whether there is evidence that the respondent is conducting any legitimate commercial or noncommercial business under the disputed domain name.
Given the extent of the Complainant’s world-wide business activities; its numerous trademark registrations for, and its wide reputation in, the mark ALSTOM, its long history in Japan; and the fact that the word “alstom” is not a generic word, under the facts of this case, it is not possible for the Panel to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name. It is also difficult to conceive that the Respondent did not know of the Complainant’s trademark rights at the time of registration of the domain name. Finally, as the domain name is inactive, there is no evidence that the Respondent is conducting any legitimate commercial or noncommercial business under the disputed domain name. All of this evidence indicates, and the Panel is satisfied, that the disputed domain name was registered and is being used in bad faith.
The Panel finds that paragraph 4(a)(iii) of the Policy is established.
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.
Haig Oghigian
Sole Panelist
Dated: June 18, 2008
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