WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alstom v. Oleg Y Shavilov Case No. D2009-1727 1. The Parties
The Complainant is Alstom (hereinafter the Complainant) of Levallois-Perret, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Oleg Y Shavilov of Cheboksary, Russian Federation. 2. The Domain Name and Registrar
The Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2009. On December 17, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed Domain Name. On December 18, 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 for the administrative, billing, and technical contact.
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 December 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 12, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on January 20, 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. 4. Factual Background
The Complainant is a company incorporated under French law which is a global leader in power generation and rail transport infrastructure.
The Complainant is the owner of several trademarks registrations consisting in the sign ALSTOM (hereinafter “the Trademark”) such as the International Trademark Registration No. 931242 registered on March 1, 2007 in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42 and 45; the Community Trademark Registration No. 948729 filed on September 30, 1998 and registered on August 8, 2001 in classes 1, 2, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42; the International Trademark Registration No. 706292, registered on August 28, 2008 designating the Russian Federation, where the Respondent is based, in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
The Complainant is furthermore the registrant of several domain names consisting in or including the sign “alstom” such as registered on January 20, 1998; registered on June 15, 1998; registered on April 1, 2000.
The Respondent registered the Domain Name on January 5, 2009. 5. Parties' Contentions A. Complainant
The Complainant points out that Alstom is the world leader in the field of power generation and rail transport infrastructures, providing integrated power plant, power production services and air quality control systems for a wide variety of energy sources and also developing, manufacturing, and marketing systems and equipment for the railway market.
The Complainant informs the Panel that the disputed Domain Name was owned by Alstom until the end of 2008 and that it was deleted by the Complainant “for reasons related to the management of domain names' portfolio”. Since, at the beginning of 2009, the Complainant discovered that the Domain Name had been registered by the Respondent and was used in connection with a parking page displaying commercial links related to the field of energy, the Complainant sent a letter of cease-and-desist by e-mail and registered mail to the Respondent, but the letter was returned to the Complainant with the mention “insufficient address”.
The Complainant contends that the Domain Name is confusingly similar to trademarks and domain names in which Complainant has rights as it reproduces the well-known trademark ALSTOM in its entirety.
The Complainant highlights that the mere addition of the generic term “energysystems” is not sufficient to distinguish the Domain Name from the Complainant's Trademark, also in light of the fact that the term “energysystems” is descriptive of the Complainant's field of activity.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states 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 ALSTOM trademark or to seek registration of any domain name incorporating the mentioned Trademark.
The Complainant also states that the Respondent has no prior rights or legitimate interests in the disputed Domain Name, since the Respondent has never used the term “alstom” in any way, nor has been known under the name “alstom” or any similar term.
The Complainant points out that the Respondent has never used the disputed Domain Name in connection with a bona fide offering of goods and services, since the Domain Name was since its registration used in connection with a parking page displaying commercial links redirecting Internet users to web sites promoting services of competitors in the field of energy, which is the Complainant's core business, and then redirected to a website dedicated to energy and astronomy.
The Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent has no rights or legitimate interest in the Domain Name.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent was aware of the Complainant's Trademark at the time of the registration of the Domain Name, since, as acknowledged by previous panels, the Trademark ALSTOM is well-known worldwide and, in light of a nuclear agreement with the Russian company Atomenergoproekt in 2008 and of the partnership agreement with the Russian rail manufacturer Transmashholding, is also widely known in the Russian Federation.
In view of the above, according to the Complainant, the Respondent registered the Domain Name in order to capitalize on the Complainant's long history, leading the general public and the members of the trade community to believe that the Domain Name enjoys endorsement or originates from the Complainant.
As to the circumstances evidencing bad faith in the use of the Domain Name, the Complainant states that the Respondent used the Domain Name, at the beginning, in connection with a webpage displaying commercial links mainly related to the energy field, and then redirecting it to a web page dedicated to power and astronomic systems, taking advantage of the Complainant's reputation and good will in order to attract Internet users to its website.
The Complainant also informs the Panel that the Respondent did not reply in any form or whatsoever to the Complainant's letter of cease-and-desist and to the email reminders and that the Respondent's contact information appear to be erroneous since the registered letter was returned to Complainant with the mention “insufficient address”. B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Domain Name Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the Trademark owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature.
Therefore, the mere addition of the words “energy” and “systems” does not exclude confusing similarity between the Domain Name and the Complainant's trade mark.
It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D 2007-0565,(addition of the term “software” to the trademark AUCHAN).
More in particular, the words “energy” and “systems” should be regarded along the lines of the interpretation adopted in all the prior decisions mentioned above especially as they are likely to increase the likelihood of confusion, identifying the Complainant's business in the fields of power, energy and transport infrastructure.
As stated in Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877, concerning the domain name, , “The disputed domain name incorporates Complainant's widely known registered trademark ALSTOM with a descriptive term that aptly identifies principal services of Complainant. It is well-settled that the addition of either “.com” or apt descriptive terms is insufficient to avoid a find of confusingly similarly”. See along these lines Alstom v. FM Laughna,WIPO Case No. D2007-1736, regarding the domain name , stating: “The addition of the term “parts”, a generic term, does not serve to distinguish the disputed domain name from the Complainant's trademark. On the contrary, it emphasizes the confusion regarding the connection between “Alstom” and transport infrastructure”.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (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; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant's prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name.
The Panel notes that, according to the documental evidence provided by the Complainant, the disputed Domain Name was since its registration pointing to a sponsored pay-per-click website mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the disputed Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, where the panel found that the respondent's use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent's website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent's registration and use of the disputed domain name for its website”. See also, among others, Alstom v. FM Laughna, supra, where the panel stated “the Respondent is not making any legitimate non-commercial or fair use of the domain name, as it leads the internet users to a page providing commercial links in the field of transport and auto parts”.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the Complainant's Trademark, highlighted in several panel decisions, and of the partnership of the Complainant with Russian companies since many years, the Respondent was, more likely than not, aware of the Complainant's Trademark when the Domain Name was registered.
The Panel shares the view of a number of panels finding “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “it is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
See along these lines Alstom v. FM Laughna, supra, where it was stated that “It seems obvious that the Respondent knew or must have known the Complainant at the time it registered the disputed domain name. The Complainant is well-known worldwide. Besides, a simple search via Google or any other search engine using the keyword “ALSTOM” or “ALSTOM Parts” demonstrates that all results relate to the Complainant's websites or business. (…) Therefore, it seems quite difficult to believe that the Respondent was not aware of the existence of the Complainant at the time it registered the disputed domain name. In fact, the addition of the term “parts” on the Complainant's trademark ALSTOM clearly indicates that the Respondent had the Complainant in mind while registering the disputed domain name.”
With reference to the use of the Domain Name in bad faith, the Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, might have been and may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent has profited in the past by earning pay-per-click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry's Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no response to the cease and desist letter apparently received by the Respondent via email.
The Panel also considers the incomplete information provided by the Respondent on the WhoIs as an additional circumstance evidencing the bad faith of the Respondent, concurring with the views expressed inter alia in Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352 stating that the use of false contact information by the respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775). See on these lines Süd-Chemie AG v. , WIPO Case No. D2000-0376, finding bad faith use and registration where the complainant “was unsuccessful in its attempts to contact the Respondent by using the contact details in the Registrar's registry”.
In view of the above, the Panel finds that the Domain Name was registered and is 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 Name , be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: February 4, 2010
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