WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alstom v. Netpeak Case No. D2009-1447 1. The Parties
The Complainant is Alstom of Levallois Perret, France, represented by Dreyfus & associés, France.
The Respondent is Netpeak of Odessa, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2009. On October 27, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On October 28, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 November 3, 2009 In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2009. The Respondent did not reply to the Complainant's contentions and did not submit any formal response. Accordingly, the Center notified the Respondent's default on November 24, 2009.
The Center appointed Dawn Osborne as the sole panelist in this matter on December 1, 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 multinational company dealing in power generation services and rail transport infrastructure with registered trade marks for ALSTOM and ALSTHOM. The original company was called Alsthom in 1928. GEC Alsthom was formed in 1989. In 1998 the company changed its name from GEC Alsthom to Alstom.
The Complainant noticed that the Respondent owned the Domain Name on January 20, 2009. The Domain Name directs to a web site displaying some information about railway and train history together with commercial links. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
1. The Complainant is a global leader in power generation and rail transport infrasctructure around the world including the Ukraine. It has supplied more than 25% of the world's installed power generation capacity and has an 18% share in rail transportation worldwide. It had an order book of 23.5 billion Euros in 2007/2008 and employs 76,000 people in 70 countries serving customers worldwide.
2. The Complainant's predecessor was born in 1928 from the merger of two French Companies. In 1989 GEC Alsthom was formed from CGE known as Alsthom and GEC. By this time the company was renowned worldwide. In 1998 the company changed its name from GEC Alsthom to Alstom. The Complainant owns all the ALSTOM and ALSTHOM trade marks.
3. The Complainant owns International and Community Trade Mark Registrations for ALSTOM and also owns a large domain name portfolio which includes domain names containing ALSTOM and ALSTHOM. ALSTOM is not only the name of the Complainant but also its leading brand. The Complainant's trade mark and company name are well-known worldwide.
4. The Complainant noticed that the Domain Name had been registered on January 20, 2009. The Domain Name pointed to a web site displaying some information about railway and train history and contained commercial links.
5. A cease and desist letter was returned to the Complainant marked address unknown. Several follow up emails were sent but no reply received.
6. Alstom and Alsthom are distinctive terms which are almost identical and confusingly similar. The addition of “gec” is not sufficient to avoid confusing similarity. On the contrary it increases likelihood of confusion as it corresponds to the Complainant's former trading name. Internet users are likely to assume there is a connection between the Domain Name and the Complainant. As such the Domain Name is almost identical or at least confusingly similar with the Complainant's mark.
7. The Respondent is not affiliated with the Complainant in any way and has no authorisation to register or use the Complainant's marks. Respondent has no prior rights or legitimate interests in the Domain Name. The Complainant's use predates the Respondent's registration by many years. The Respondent is not commonly known as Alstom, Alsthom or GEC Alsthom. The Domain Name resolves to a web site which contains commercial links and information on railway history. Such a use which intentionally trades on the fame of another cannot be bona fide.
8. Since the Domain Name is so similar to the Complainant's famous mark and former trade name Respondent cannot pretend it was attempting to engage in a legitimate activity when it registered the Domain Name.
9. It is clear that the Respondent chose the name to refer to the Complainant's former trade name. GEC Alsthom has no other meaning. The content consisting of railway history and commercial links to the Complainant's competitors shows that the Respondent knew about the Complainant and its prior rights and registered the Domain Name in bad faith.
10. The Respondent used a privacy shield, never responded to the Complainant and gave a false WhoIs physical address. This is also evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions or provide a formal Response. It did send informal emails to the Center requesting USD 1000 for transfer of the Domain Name. It also apparently attempted to change the contact details, including the registrant details, on the publicly available WhoIs. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(1) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Apart from the “.com” suffix which is not taken into account for the purposes of the Policy, the Domain Name consist of the Complainant's ALSTOM registered mark and the prefix “gec” and an additional “h” to form the Complainant's previous trading name. The addition of “gec” and the extra “h”does not serve to distinguish the Domain Name from the Complainant's mark, but indeed compounds the likelihood of confusion between the Domain Name and the Complainant's trade mark because of the use of the Complainant's prior name. The Panel finds that the domain name is confusingly similar to the Complainant's registered trade mark ALSTOM and as such satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) which may apply to its favour) and does not appear to have any rights or legitimate interests in the domain name. The Complainant has indicated that it has not endorsed the Respondent in any way and the Respondent's business has no obvious connection with the designation “gecalsthom”. As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The reference to railway history on the web site linked to the Domain Name shows that the Respondent is aware of the Complainant and its business and by registering the name and using it for commercial purposes the Respondent is seeking to take advantage of the Complainant's trade mark.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including “circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;” (paragraph 4(b)(i)) and “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on [its] web site or location.” (paragraph 4(b)(iv)).
The Domain Name has been used to link to commercial sites competing with the Complainant's business. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its web site. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
Additionally, the Respondent requested money for transfer of the Domain Name. As such the Panel, therefore, finds that bad faith has also been demonstrated under section 4(b)(i) 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
Dawn Osborne
Sole Panelist
Dated: December 15, 2009
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