WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alstom v. Industrial Tests, Inc. Case No. D2009-1702 1. The Parties
The Complainant is Alstom, Levallois Perret, France, represented by Dreyfus & associés, France.
The Respondent is Industrial Tests, Inc., California, United States of America, represented by Vierra Magen Marcus & Deniro LLP, United States of America. 2. The Domain Names and Registrar
The disputed domain names:
are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2009. On December 14, 2009, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the disputed domain names. On December 15, 2009, 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 December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2010. The Response was filed with the Center on January 8, 2010.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 22, 2010. 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.
On February 3, 2010, the Complainant made a supplemental filing which the Panel, in its sole discretion, has chosen to accept. 4. Factual Background
The Complainant is a French multi-national company that employs more than 81,500 people in 70 countries in the field of power generation and rail transport infrastructure. It has multiple longstanding trade mark registrations for marks including the word “alstom”.
The Respondent is a small United States company that services and supplies spare parts for electrical generating equipment, including equipment manufactured by the Complainant. The Respondent has abandoned any claim to the disputed domain names except for the disputed domain name , on which this decision is therefore focused. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical, or confusingly similar, to its registered mark and that the addition of the generic term “service” to a fanciful mark does not preclude such a finding; that the Respondent has no rights or legitimate interests in the use of the disputed domain name which, although it at first directed to a site offering the Respondent's services, now directs to a “parking page” with commercial links in several fields; that the registration of multiple domain names including the Complainant's mark (12 such domain names) evinces an intention to profit from the confusion created by the disputed domain name, which profit is now being made from a parking page including pay-per-click commercial links, and that these together constitute evidence of registration in bad faith. The Complainant notes that the Respondent is the owner of 2,100 domain names, most including a well-known mark. B. Respondent
The Respondent, without prejudice, does not contend that the disputed domain name is identical or confusingly similar to the Complainant's trademark. However, it contends that it has a legitimate interest in the use of the disputed domain name in that it has been using the domain name, and only ever intended to use the domain name, descriptively; that is, to describe its services in relation to the Complainant's products. The Respondent claims that 10 of its domain name registrations including the Complainant's mark were registered after the initiation of the current dispute, and defensively, and that it attempted to abandon these registrations after legal advice that multiple registrations could evince bad faith. The Respondent also claims that the redirection of the disputed domain name to a parking site was a consequence of the dispute and can also not be taken as evidence of bad faith. 6. Discussion and Findings
As previously stated, the Respondent has abandoned any claim to the disputed domain names except for the disputed domain name . It is not necessary to review the facts with respect to the remaining 11 domain names (other than to note that they all include the Complainant's ALSTOM mark). See Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207. A. Identical or Confusingly Similar
The Respondent does not contest the Complainant's claim that the disputed domain name is identical or confusingly similar to the Complainant's marks.
The Complainant is the owner of numerous ALSTOM trademarks across the world.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The crux of this case rests in whether the Respondent has a legitimate interest in the disputed domain name as descriptive of its services in relation to the products of the Complainant. Relevant considerations outlined in panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 are summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Dealing with descriptive use by resellers, the Overview claims: “A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
The application of these considerations to this case is finely balanced. On the Panel's assessment of the evidence, it is the case that the Respondent has bona fide been offering services relating to the Complaint's products. In this Panel's view the general requirement that the site be used to sell only the Complainant's goods is not dispositive in the particular circumstances of this case, because that consideration springs principally from the concern to prevent “bait and switch” tactics on resale sites and the Respondent is not operating a resale site per se. Rather, the Respondent is (or was) operating a site in which it offers services relating to the Complainant's goods, but not the good themselves. It may not assist the Respondent's case that it may also be offering services related to other goods through a domain name which is based on and descriptive of the Complainant's brand only. However, on the other hand, the Panel considers it likely that Internet users who find themselves directed to the Respondent's site may well be uninterested in the servicing of any brand of equipment except that which they already own. Moreover, when they arrive at the site, at least the site to which the disputed domain name was originally attached, the nature of the services offered by the Respondent, and the fact that the Respondent is not necessarily in any type of contractual relationship with the Complainant, is made clear precisely by the variety of products in relation to which it is apparent that the Respondent offers its testing services. Indeed, the history and nature of the Respondent's business is made clear on the site. On balance, the Panel accepts the claim of the Complainant that the parking site has been developed merely for the purpose of holding the disputed domain name while this dispute is resolved (and obviously, if the use of the disputed domain name was to become subsequently abusive, that may well be a highly relevant consideration in any future proceeding that may be brought by the Complainant).
Perhaps the most difficult of the requirements for descriptive use in their application to this rather particular case is the fact that the Respondent has registered multiple domain names in a way that might be interpreted as an attempt to prevent the Complainant from registering domain names appropriate to their business. This might seem to be evidence of both a lack of legitimate interest and of bad faith. In the Respondent's favour, is the fact that the Complainant already had a strong on-line presence by the time the disputed domain names were registered and so it is hard to believe that the pattern of twelve registrations of itself prevented the Complainant from the legitimate conduct of its business on-line. The Respondent also claims to have been using the disputed domain name “for many years” apparently without complaint. Moreover, the Respondent has expressed apparent contrition and abandoned 11 of the disputed domain names. In the Complainant's favour is the sheer number of the Respondent's registrations associated with famous marks and the suggestion that this might constitute a pattern of attempting to “corner the market in domain names that reflect [a] trademark”. Moreover, most of the marks that the Respondent is abandoning are marks for which it is much more difficult to make the case of descriptive use than it is the disputed domain name. On balance, it seems plausible to this Panel that the disputed domain names, as a whole, were registered with the purpose of attracting Internet users interested in the Complainant's products to the Respondent's site for the purpose of alerting them to the Respondent's testing services, and that some of those disputed domain names, including the only disputed domain name still in issue, constituted legitimate descriptive use, though most did not.
On balance, the Panel does not find the fact that the Complainant has attempted to cancel domain names including other famous marks and the term “service” since the commencement of this dispute, a fact relied upon by the Complainant in its supplementary filing, dispositive of the issue of whether the one, originally registered disputed domain name in this case constituted a legitimate descriptive use by the Respondent of testing services offered in relation to the Complainant's goods.
Given the finely balanced application of the requirements for descriptive use in this case, and the fact that the burden of proof for an absence of legitimate interest rests with the Complainant, the Panel finds that, in relation to the single domain name , the Complainant has not established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Given the Panel's finding in relation to the second element of paragraph 4(a) of the Policy, it is not necessary to consider the element of bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied in relation to the disputed domain name .
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.
Michael J. Spence
Sole Panelist
Date: February 6, 2010
Full & Egal Universal Law Academy