WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alstom v. Value-Domain Com Case No. D2009-1249 1. The Parties
The Complainant is Alstom, Levallois Perret, France, represented by Dreyfus & associés, France.
The Respondent is Value-Domain Com, Osaka-shi, Japan. 2. The Domain Names and Registrars
The disputed domain name is registered with Key-Systems GmbH dba and 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 September 22, 2009. On September 23, 2009, the Center transmitted by email to Key-Systems GmbH dba and eNom a request for registrar verification in connection with the disputed domain names. On September 23, 2009 and September 24, 2009, Key-Systems GmbH dba and eNom transmitted by email to the Center their verification responses respectively confirming that the Respondent is listed as the registrant and providing the contact details. On September 29, 2009, the Center transmitted an email to the parties in both English and Japanese regarding the language of proceeding of the disputed domain name . On October 2, 2009, the Complainant requested English be the language of proceeding while the Respondent did not comment on the language of proceeding by the due date or at a later point. 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 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 3, 2009.
The Center appointed Masato Dogauchi as the sole panelist in this matter on November 9, 2009. 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, doing business with its affiliates in mainly power generation and transportation market all around the world, including in Japan. For instance, it has supplied more than 25% of the world's installed power generation capacity and has an 18% market share in rail transportation worldwide. One of its affiliates, Alstom K.K., a Japanese company founded in 1907, has its headquarters in Kobe and several branches in Japan, and has been playing a significant role in the above markets in Japan.
The Complainant is the owner of the registered trademarks of a character string ALSTOM worldwide, among others, as follows:
- ALSTOM, International trademark No. 931242 registered on March 1, 2007;
- ALSTOM, French trademark No. 063449805 registered on September 8, 2008;
- ALSTOM, Japanese trademark No. 4768275 registered on April 30, 2004.
The Respondent registered the disputed domain name with eNom on August 26, 2008 and the disputed domain name with Key-Systems GmbH dba on May 24, 2009. According to DomainTools, a WhoIs database search, the address of the Respondent is in Osaka, Japan.
Incidentally, in respect of the domain name , the Complainant originally owned it but cancelled it at the end of 2008. After that, although someone registered it, on March 20, 2009, the Complainant obtained a cancellation of the domain name by sending a cease and desist letter, and the domain name became available to the public. Subsequently, the Respondent registered it.
The Complainant sent a cease and desist letter to the Respondent on March 17, 2009 asking for amicable transfer of . Despite several reminders, the Respondent never replied. The Complainant did not send a cease and desist letter to the Respondent in respect of . 5. Parties' Contentions A. Complainant
With regard to the first requirement (paragraph 4(a)(i) of the Policy) that the domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights, the Complainant asserts that the disputed domain names are identical or at least confusingly similar to the Complainant's trademarks, and that such incorporation of said trademarks in their entirety should be sufficient to establish this first requirement. It also asserts that mere adjunction of the gTLD, “.com” does not change the likelihood of confusion. According to the Complainant, the adjunction of the generic term “flowsystems” and “sig” respectively is not sufficient to distinguish the disputed domain names from the Complainant's trademarks since the term ALSTOM is a distinctive term without any meaning in any language. In addition, the terms “flowsystems” and “sig” could be understood by Internet users as “flow systems” and the abbreviation of “signaling”, and these words asserted indicate the Complainant's business.
With regard to the second requirement (paragraph 4(a)(ii) of the Policy) that the Respondent has no rights or legitimate interests in respect of the domain names, the Complainant asserts that the Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorized by the Complainant to register and use the Complainant's trademarks or to seek registration of any domain name incorporating the trademarks. According to the Complainant, the Respondent is not known under the name Alstom or any similar term and has never used the disputed domain names in connection with a bona fide offering of goods and services.
With regard to the third requirement (paragraph 4(a)(iii) of the Policy) that the domain names were registered and used in bad faith, the Complainant asserts that it seems obvious that the Respondent knew or must have known of the trademarks of the Complainant at the time it registered the domain names, since the trademarks are well-known throughout the world including in Japan. In respect of the “used in bad faith” requirement, according to the Complainant, the Respondent has used the domain name to redirect Internet users to a website in Japanese and English which reproduced the denomination “ALSTOM POWER” and mentioned “Copyright (c) ALSTOM Power All Rights Reserved”. It is further asserted that the domain name pointed toward a webpage displaying commercial links, including those of the activities of the Complainant and its competitors, and the Respondent most likely profited from putting these links up. With regard to the domain name , the Complainant asserts that the Respondent has used it to redirect Internet users to a dating website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
As the registration agreements of the disputed domain names incorporate the Policy, this proceeding is to be examined in accordance with the Policy, the Rules and Supplemental Rules.
This Panel was properly appointed in accordance with the Policy and has jurisdiction to decide the dispute over the domain name. Furthermore, while the Panel notes the registration agreements were written in English in relation to the disputed domain name and in Japanese in relation to the disputed domain name , the Panel considers the appropriate language of proceedings to be English in accordance with paragraph 11 of the Rules. This is so, as the Panel notes the Respondent has been able to register one of the disputed domain names using an English registration agreement. Furthermore, even though requested in Japanese, the Respondent has not objected the language of proceeding to be English.
The Panel has found that the procedural steps taken by the Center are in compliance with the provisions of the Rules. Notwithstanding the fact that the Respondent did not submit any statement within the time periods under the Rules, the Panel may proceed to a decision based on the Complaint in accordance with paragraph 14 of the Rules.
With regard to the merits of the case, according to the paragraph 4(a)(i) to (iii) of the Policy, the Complainant must prove that each of the following three elements are present:
- The domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights (Identical or Confusingly Similar); and
- The Respondent has no rights or legitimate interests in respect of the domain names (Rights or Legitimate Interests); and
- The domain names were registered and used in bad faith (Registered and Used in Bad Faith).
The Panel will verify these elements on the basis of the evidence submitted by the Complainant only, since the Respondent did not respond nor submit any other materials. A. Identical or Confusingly Similar
The Complainant has proved to have rights in the trademarks “ALSTOM” which are registered worldwide including in Japan.
The disputed domain names and only differ from the trademark “ALSTOM” in that (a) the term “alstom” incorporated in them are written in small letters; (b) the term “flowsystems-” is added before the term “alstom” in the former case and the term “-sig” is added after the term “alstom” in the latter case; (c) the gTLD “.com” is added to them.
With regard to (a) and (c) above, according to the consistent practice under the UDRP, the difference of capital letters and small letters and mere addition of the gTLD “.com” are irrelevant in determining the Identical or Confusingly Similar requirement.
The issue to be deliberately considered is whether the addition mentioned in (b) above would sufficiently make the domain names different from the Complainant's trademarks or not.
According to previous UDRP decisions, panels have considered that incorporation of trademarks in their entirety is in general sufficient to establish that the disputed domain names were identical or confusingly similar to the complainant's registered trademarks (for instance, Alstom Bouygues v. Webmaster,WIPO Case No. D2008-0281; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758).
In addition, according to previous UDRP decisions, mere addition of common or generic terms should be, in general, insufficient to make a disputed domain name distinctive such that it was not confusingly similar to the complainant's registered trademark . (For instance, Alstom v. FM Laughna,WIPO Case No. D2007-1736; Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565). Here, in the case of the disputed domain name , “flowsystems” may be divided into two parts: “flow” and “systems”. These words are common or generic terms. Accordingly, this domain name can be held to be confusingly similar in this respect too.
In the case of the disputed domain name , “sig” is not a common or generic term. This can be an abbreviation of many possible words such as “signature”, “signal”, “special-interest group”. The word “signaling” as the Complainant suggests is also one of the candidates. This means the addition of such a string of three letters cannot make the domain name to be sufficiently distinguishable from the Complainant's registered trademarks.
Accordingly, the Panel concludes that the domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
There is no evidence which shows that the Complainant has authorized the Respondent to register or use the trademarks ALSTOM as a domain name. The Panel is satisfied on the current record that the Complainant has at least made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain names which the Respondent has not rebutted.
The Panel concludes also in view of the Panel's findings below, that the Respondent has no rights or legitimate interests in respect of the domain names. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, both bad faith registration and bad faith use must be established.
With regard to bad faith registration of both disputed domain names, the facts that the Complainant has used the name Alstom and has registered the trademarks for many years worldwide including in Japan are proven by the documents submitted by the Complainant. Considering that the registered address of the Respondent of the domain names is in Japan, it is reasonable to assume that the Respondent had prior knowledge of the name and mark of ALSTOM when the Respondent registered the disputed domain names on August 26, 2008 regarding and on May 24, 2009 regarding . It can also be pointed out that, since the word “alstom” is not a generic but a unique word, the registration in bad faith in this case can be inserted taking into account the fame of the Complainant in Japan and in the absence of a Response by the Respondent (Alstom v. sv-alstom,WIPO Case No. D2008-0611).
In respect of the domain name , the following facts should be noted: the Complainant owned it but cancelled it at the end of 2008. After that, although some one else registered it, on March 20, 2009, the Complaint obtained the cancellation by sending a cease and desist letter; the domain name became avaible to the public; and subsequently, the Respondent registered it on May 24, 2009. These facts suggest that the Respondent may have known of these facts and registered the domain name in bad faith.
Furthermore, there is no evidence showing the Respondent's legitimate rights to the name “alstom”. The Panel concludes in the circumstances that the Respondent registered the domain names in bad faith.
With regard to the use in bad faith, on the other hand, it is well established by the submitted documents by the Complainant the following facts:
(a) In respect of the domain name ,
- The Respondent has used it to redirect Internet users to a website in Japanese and English which reproduced the denomination “ALSTOM POWER”.
- On the website it was mentioned that “Copyright (c) ALSTOM Power All Rights Reserved”, which was untrue.
- The domain name pointed to a website displaying commercial links, including those of the activities of the Complainant and its competitors.
- The Complainant sent a cease and desist letter to the Respondent on March 17, 2009 asking for amicable transfer of the domain name, and, despite several reminders, the Respondent never replied.
- No website is displayed at this domain name at present (This fact is apparent to the Panel).
(b) In respect of the domain name ,
- The Respondent has used it to redirect Internet users toward a dating website containing sponsored links (The fact that the website contains sponsored link is apparent to the Panel).
With regard to the domain name , the fact that the Respondent does not use the domain name at present does not itself prevent a finding of bad faith. The fact of the past use is sufficient to determine the Respondent's use in bad faith. In order to determine whether the Respondent is acting in bad faith or not, all the circumstances of the case must be examined (for instance, 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). The above facts suggest that the Respondent was not conducting legitimate commercial or noncommercial business under the domain name.
Further, the lack of reply to the Complainant's cease and desist letter and its reminders is taken into account by this Panel in determining the use in bad faith(for instance, The Hongkong and Shangai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915).
With regard to the disputed domain name , the fact that it directs to a dating website containing sponsored links shows that the Respondent uses the domain name with the intent to make profit with the Complainant's trademarks, which cannot be deemed as legitimate business. This further demonstrates the Respondent's use in bad faith in this case.
Although the Complainant did not send a cease and desist letter to the Respondent in relation to the disputed domain name , there is no response from the Respondent to this Complaint. In the circumstances, there seems to be no reasonable reasons for the Respondent to use the domain name in good faith.
All of the above facts lead to the determination that the Respondent does use the disputed domain names in bath faith.
Accordingly, the Panel concludes that the domain names were registered and are being used in bad faith. 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 names, and be transferred to the Complainant.
Masato Dogauchi
Sole Panelist
Dated: November 23, 2009
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