WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ALSTOM v. STOCKMARKET DOMAINS Case No. D2008-1542 1. The Parties
The Complainant is ALSTOM, of France, represented by Dreyfus & Associés of France.
The Respondent is STOCKMARKET DOMAINS of United Kingdom of Great Britain and Northern Ireland. 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 October 8, 2008. On October 9, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name at issue. On October 9, 2008, GoD, Inc. 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”or “UDRP”), 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 October 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 10, 2008.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 20, 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 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 is the owner of numerous ALSTOM trademarks protected throughout the world and in particular in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The disputed domain name was registered on April 30, 2008 by Respondent. The disputed domain name directs to a parking page offered by GoD, Inc.
Before filing the Complaint, the Complainant sent a cease and desist letter by email and registered letter dated June 9, 2008, to the Respondent in which the Complainant has invoked its trademarks rights and asked the Respondent to amicably transfer the disputed domain name. The Respondent never answered the cease and desist letter nor Complainant's reminders. As no amicable settlement was found, the Complainant filed the Complaint. 5. Parties' Contentions A. Complainant
The Complainant argues the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the owner of numerous ALSTOM trademarks protected throughout the world. The Complainant produced evidence of numerous ALSTOM trademark registrations, including international and community trademarks as well as trademark registrations in the United Kingdom.
The Complainant demonstrated to the Panel that its ALSTOM trademarks are well established in the United Kingdom, country where the Respondent is established.
The disputed domain name reproduces in its entirety the trademark “ALSTOM” with the addition of the descriptive elements “projects”, share”, and “market”.
The mere adjunction of the elements “projects”, “share”, and “market” is not sufficient to distinguish said domain name from the Complainant's ALSTOM trademarks.
In many UDRP decisions, the panel considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark (Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; AT&T Corp v. William Gormally,WIPO Case No. D2005-0758).
The terms “projects”, “share”, and “market” are common English terms, and several UDRP decisions have recognized that adding one or more generic words is generally insufficient to make a domain name distinctive such that it would not be confusingly similar to the relevant mark (Alstom v. FM Laughna, WIPO Case No. D2007-1736; Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565).
The term “alstom” is the first part of the disputed domain name. As the first word, the term attracts primary attention.
These elements increases the likelihood of confusion between the disputed domain name and the Complainant and its trademarks.
Therefore, the disputed domain name is confusingly similar with Complainant's trademarks ALSTOM.
The extension “.info” is not to be taken into consideration when examining the identity or confusingly similarity between the Complainant's marks and the disputed domain name.
It has been held in numerous decisions that the addition of the gTLD extension does not by itself prevent likelihood of confusion (Accor S.A. v. ,WIPO Case No. D2007-1257; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) merely because it is necessary for the registration of the domain name itself.
As a result, it clearly appears that the domain name is confusingly similar to the numerous trademarks owned by the Complainant.
Therefore, the condition of paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests
The Respondent is in no way affiliated with the Complainant. The Complainant has not authorized the Respondent to use its trademarks,
Respondent does not appear to have any prior rights or legitimate interest in the domain name, nor to have used the term “alstom” in any way before or after Complainant started its business, nor to be known under the name “alstom” or any similar term.
The trademark “ALSTOM” is well-known. Therefore, the strict reproduction of it constitutes what appears to be an obvious intent to misleadingly divert the Internet consumers.
In fact, the domain name in dispute is confusingly similar to the trademarks of the Complainant, and the Respondent has provided no evidence that it was intending to develop a legitimate activity.
All the more, the Respondent has not answered to the Complainant's cease and desist letter and its reminders.
For all the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith. C. 1. Registration in bad faith
It is obvious from the record that the Respondent knew or must have known the Complainant at the time it registered the domain name.
Indeed, it appears that the Complainant is a well-known worldwide company, in particular in the United Kingdom where the Respondent is located.
The Respondent has provided no reason to choose this domain name, the Panel thus infers that it attempted to create an association with the mark in order to attract users to its website. By so using this domain name, the Respondent takes advantage of the reputation of the Complainant.
From the record it appears that the Respondent was necessarily aware of the Complainant's trademark ALSTOM before it registered the disputed domain name. Indeed, the Complainant has been using it all over the world for many years.
A mere search for “ALSTOM” on Google or any other search engine would have revealed the existence of the Complainant to the Respondent. Indeed, almost all the results of said searches conducted by the Panel using Google relate to the Complainant's websites or to websites referring to the Complainant.
Therefore, the Respondent must have been aware of the existence of the Complainant and its trademarks at the time it registered the domain name.
In conclusion, the Panel is of the opinion that the disputed domain name was registered in bad faith. C. 2. Use in bad faith
The Respondent did also use the domain name in bad faith.
The use of a domain name which reproduces a well-known trademark cannot be considered to be legitimate (Costco Wholesale Corporation and Costco Wholesale Membership Inc v. Yezican Industries and Domains By Proxy, Inc,WIPO Case No. D2007-0638; Cellular One Group v Paul Brien,WIPO Case No. D2000-0028; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Bell South Intellectual Property Corp. v. Melo aka Thomas Stergios,WIPO Case No. DTV2001-0013).
Moreover, the disputed domain name directs to a parking page containing sponsored links which are related to the commercial activity of the Complainant.
It is evident that the Respondent has registered the disputed domain name with the intent to make profit with the Complainant's trademarks. The Respondent benefits from the traffic that the website generates. Numerous UDRP decisions confirm that a Respondent is responsible for the content of the website generated by domain sponsor's technology (Grundfos A/S v.Texas International Property Associates,WIPO Case No. D2007-1448; McDonald's Corporation v. Zuscom, WIPO Case No. D2007-1353).
Also, the lack of reply to the Complainant's cease and desist letter and its reminders form an additional evidence of the Respondent's bad faith (Banque Transatlantique S.A. v. DOTSCOPE,WIPO Case No. D2004-1100).
In conclusion, in view of the above, the Panel is of the opinion that the Respondent did both register and use the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. 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.
Flip Jan Claude Petillion
Sole Panelist
Dated: December 4, 2008
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