The Complainant is Alstom of Saint-Ouen, France, represented by Lynde & Associes, France.
The Respondent is Chen Ki of Singapore. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 6, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2017.
The Center appointed Michael D. Cover as the sole panelist in this matter on August 16, 2017. 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 created in 1928. The Complainant employs 32,000 people in over 60 countries around the world. Of these, 3,200 are employed in Asia, including over 200 in Singapore, Singapore being the location of the Respondent. The Complainant has 5 offices on Singapore. The Complainant’s order intake for the first 9 months of 2015/16 reached EUR 6.3 billion, which equates annually to EUR 8.4 billion.
The Complainant is the proprietor of trademark registrations of ALSTOM in many jurisdictions throughout the world. In particular, the Complainant is the proprietor of an International Trademark Registration No. 706292 ALSTOM, registered in various Classes. This trademark registration dates from August 28, 1998 and was based on a corresponding French Trademark Registration dating from April, 1998.
The Complainant is also the proprietor of a European Union Trademark Registration dated June 16, 2017 for ALSTOM ACOMIS, which in turn is based on another French Trademark Registration dating from June 1, 2016.
The Disputed Domain Name was registered on November 26, 2016. The Disputed Domain Name resolves to a website which states that “ is coming soon”.
The Complainant’s representative sent a cease and desist letter to the Respondent dated March 8, 2017. The Respondent replied in an email dated March 17, 2017, in which the Respondent offered to sell the Disputed Domain Name to the Complainant for USD 2,800. Further email exchanges followed, in which the representative of the Complainant pointed out that a payment of anything other than refunding the registration fees would be excessive and the Respondent made a last and final offer, on May 30, 2017 to sell the Disputed Domain Name to the Complainant for USD 1,300. 5. Parties’ Contentions A. Complainant
Trademark Rights and Identical or Confusingly Similar
The Complainant concludes that the Disputed Domain Name is confusingly similar to its trademark ALSTOM ACOMIS, in which it has rights.
The Complainant points out that the Disputed Domain Name wholly and identically reproduces the ALSTOM ACOMIS trademark of the Complainant.
The Complainant notes that it has been held in numerous decisions that the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into account when considering similarity between relevant trademarks and disputed domain names.
Rights or Legitimate Interests
The Complainant submits that the Respondent has failed to demonstrate any rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Complainant notes that the Respondent is not affiliated in any way with the Complainant and that the Respondent has not been authorized, licensed or permitted to use a domain name incorporating the Complainant’s trademarks.
The Complainant continues that the Respondent is not commonly known under the names ALSTOM or ALSTOM ACOMIS and that this was not mentioned in the pre-administrative proceeding email exchanges or the website to which the Disputed Domain Name resolves.
The Complainant notes that the Respondent could hardly be ignorant of the well-known trademarks of the Complainant and that, during the pre-administrative proceeding email exchanges the Respondent refused to transfer the Disputed Domain Name to the Complainant, except for consideration for a huge amount of monetary compensation.
In the light of these submissions, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Registered or Used in Bad Faith
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith.
In particular, the Complainant notes that it would be impossible to adopt a name incorporating the Complainant’s trademarks without infringing them and that it would be very unlikely for a third party to adopt any sign incorporating those trademarks in good faith, particularly where the trademarks are well-known, which the Complainant submits is the case in this instance.
The Complainant also notes that the Respondent acquired the Disputed Domain Name for the purpose of selling it and points to the email exchanges already noted in this Decision. The Complainant adds that many UDRP decisions recognize that the offer of a domain name for sale was a clear sign of bad faith.
The Complainant goes on to state that the Respondent has not made demonstrable preparations to use the Disputed Domain Name and that, in fact, this is an instance of passive holding, in view of the Disputed Domain Name resolving to a website under construction. The Complainant notes that UDRP Panels have consistently held that passive holding of domain names should be considered bad faith.
In addition, the Complainant argues that the Respondent has submitted false or incomplete contact information when registering the Disputed Domain Name.
The Complainant concludes that the Disputed Domain Names has been registered and is being used in bad faith.
Remedy Requested
The Complainant requests that the Panel decides that the Disputed Domain Name should be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Substantive Issues
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established registered rights in its ALSTOM and ALSTOM ACOMIS trademarks. The Complainant owns a number of registered trademarks consisting of or including both these elements. Substantial use has clearly taken place over many years of the trademark ALSTOM. The Disputed Domain Name incorporates the Complainant’s trademark ALSTOM in its entirety. The Complainant has also built up common law rights in its ALSTOM trademark over many years.
The Panel also considers that the Disputed Domain Name is identical to the Complainant’s trademark ALSTOM ACOMIS. The term “Alstomacomis” is the dominant feature of the Disputed Domain Name. It is well established the addition of a gTLD element, such as “.com” is not sufficient to avoid confusing similarity.
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks ALSTOM and ALSTOM ACOMIS and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Name. The Respondent is not licensed, permitted or otherwise authorized to use the Complainant’s trademarks ALSTOM and/ or ALSTOM ACOMIS. The Respondent has not made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, has not been commonly known by the Disputed Domain Name and has not been making legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Disputed Domain Name resolves to a “parking website” from which does not arise rights or legitimate interests in the Disputed Domain Name in favor of the Respondent.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant on this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. The Panel finds that the Respondent, by using the Disputed Domain Name, has acquired the Disputed Domain Name primarily for the purpose of selling it to the Complainant, who is the owner of the relevant trademark, for valuable consideration in excess of the out‑of-pocket costs directly related to the Disputed Domain Name. This is evidence of the registration and use of a domain name in bad faith.
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: August 25, 2017
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