WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. LinkdotNet
Case No. D2008-0979
1. The Parties
The Complainant is Alstom, Levallois Perret, France, represented by Cabinet Dreyfus & associés, France.
The Respondent is LinkdotNet, Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 30, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 30, 2008, eNom 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 July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2008.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 8, 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
The Complainant is a French company involved in power generation and rail transport infrastructure around the world. The Complainant employs 45,000 people in 70 countries, including Egypt where the Complainant is present since the early 1930s.
The Complainant is the owner of numerous registered trademarks for the mark ALSTOM, including in the United States of America, the People's Republic of China, Russian Federation, and Egypt where the Respondent resides.
The Respondent has registered the domain name on April 5, 2005. The disputed domain name is currently inactive.
By e-mail, registered mail, and fax dated December 18, 2007, the Complainant requested that the Respondent transfers the disputed domain name to the Complainant on the basis of the Complainant's trademark rights in the mark ALSTOM. The Respondent did not reply to this request.
5. Parties' Contentions
A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the Complainant's trade marks as it fully includes its trade mark ALSTOM.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion, the Complainant states that
- the Respondent's non-use of the domain name does not constitute a fair use of the disputed domain name;
- the Respondent is not affiliated with the Complainant in any way and has not authorized the Respondent to use or register a domain name incorporating its trademark ALSTOM;
- the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant's trade mark in a domain name or in any other manner;
- there is no evidence that the Respondent has been commonly known under the disputed domain name and that the Respondent has not acquired any trade mark or service mark rights in the word “Alstom”.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that
- the Complainant's trademark ALSTOM is a well-known, world-wide, particularly in Egypt where the Respondent resides;
- the Respondent was fully aware of the Complainant's ALSTOM trade mark when registering the disputed domain name;
- the Respondent had no other reason to choose the disputed domain name than profiting from the reputation of the Complainant's trademark ALSTOM;
- that the use of a domain name which reproduces a famous mark cannot be legitimate;
- the disputed domain name resolves to an inactive website, and, therefore, the Respondent can not reasonably pretend that he was intending to develop a legitimate activity.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trade mark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-l480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the Complainant's distinctive trade mark ALSTOM. The fact that the words “hvro”, a misspelling of the word “hydro”, and the word “soc” are added to the Complainant's trade mark does not eliminate the similarity between the trade mark and the disputed domain name. The word “hydro” is descriptive in relation to the hydro power plants offered by the Complainant. The term “soc” is an abbreviation for “system-on-a-chip” or “system on chip” which refers to integrating all components of a computer or other electronic system into a single integrated circuit (chip) and has, therefore, also a descriptive meaning in relation to the products offered by the Complainant. In numerous cases, it has been held that a domain name that wholly incorporated the distinctive part of a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy, despite the addition of descriptive words.
Furthermore, it is well established that the specific top level of a domain name such as “.com”, “.org”, or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the trade mark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the consensus view among panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant's trade mark. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy or any other circumstances giving rise to a right or legitimate interest in the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The present case involves the trademark ALSTOM which is widelywell-known around the world, including in Egypt where the Respondent resides and the Complainant is present since the 1930s. It is, therefore, apparent that the Respondent was aware of the Complainant's trademark ALSTOM before it registered the disputed domain name.
The Panel is also convinced that the Respondent registered the domain name in bad faith. The Respondent has registered a domain name which consists of the Complainant's highly distinctive trade mark ALSTOM and the terms “hvro” which is obviously a misspelling of the term “hydro” and the abbreviation “soc”, both having a descriptive meaning in connection with the products sold by the Complainant.
The fact that the website is inactive does not prevent from this assertion. In contrary, inaction itself can constitute “use in bad faith”, where the domain name comprises a name which can only sensibly refer to the Complainant or where there is no obvious possible justification for the selection of the domain name.
The Respondent's default in this proceeding reinforces an inference of bad faith. If the Respondent acquired the domain name in good faith and had a good faith basis for using the domain name, it should have asserted so.
However, the Respondent did not yet actively use the disputed domain name. Although it is well established that passive holding of a domain name may equal active use (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131), such finding requires the Panel to examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are
(i) The Complainant's trade mark has been used worldwide for many years. It is, therefore, apparent that the Respondent has registered the domain name in order to create an association with the mark as a means of attracting users to its future website.
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. The Registration of a widely known trade mark by a party with no connection to the owner of the trade mark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
(iii) Furthermore, the Respondent has neither responded to the Complainant's letters nor to the Complaint and has not denied the Complainant's contentions in any way.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and constitute an infringement of the Complainant's rights. In light of these particular circumstances, the Panel concludes that the Respondent's passive holding of the domain name, in this particular case, satisfies the requirements of paragraph 4(a)(iii) of the Policy and that the domain name is being used in bad faith by the Respondent.
The Panel, therefore, concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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.
Torsten Bettinger
Sole Panelist
Dated: August 21, 2008
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