The Complainant is ALSTOM of Saint-Ouen, France, represented by Lynde & Associes, France.
The Respondents are Alan Farzami (the “First Respondent”) and, Royal Lepage Realty Inc. (the “Second Respondent”) of Thornill, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2017. On October 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are 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 Respondents of the Complaint, and the proceedings commenced on October 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 10, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 15, 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 established in 1928 specializing in the construction and provision of transport infrastructure. It has had a long-time presence in Canada and has been involved in the manufacturing of subway cars, rolling stock and transport infrastructure systems for customers in Canada and elsewhere in North America.
The Complainant is the owner of numerous trade mark registrations of the word mark ALSTOM (the “ALSTOM Mark”). In particular the ALSTOM Mark has been registered since 1998 (including International trade mark No.706292 registered on August 28, 1998, and Canada trade mark No.TMA562412 filed on September 30, 1998 and registered on May 23, 2002) covering goods and services relating to civil engineering and the supply of transport infrastructure including “building construction”.
The Domain Name was registered on July 2, 2014. It resolves to a website (“Respondents’ Website”) that purports to promote a business known as “Alstom Construction Inc.” which appears to offer homebuilding services.
Prior to the filing of this Complaint the Complainant wrote to both the First and Second Respondents. The First Respondent replied, stating that Alstom Construction Inc. was a registered company in Ontario that specialized in construction and renovation. The Complainant then contacted the Ontario Ministry of Government Services to request the cancellation of the company name “Alstom Construction Inc.”. The Ontario Ministry of Government Services was unable to establish contact with Alstom Construction Inc. and on May 12, 2017, cancelled the company registration for Alstom Construction Inc. The registration of the Domain Name was subsequently renewed in July 2017.
The Second Respondent also replied to the Complainant, indicating that the First Respondent was briefly registered as a real estate representative with the Second Respondent in 2014, however, the Second Respondent had no awareness of the First Respondent’s registration of the Domain Name, has no interest in the Domain Name and at no time consented to the registration of the Domain Name in its name. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s ALSTOM Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ALSTOM Mark. It holds several registrations for the ALSTOM Mark around the world and in particular Canada, the location of the Respondents. The Complainant has a long history in Canada and the goods and services it provides are well known in Canada and throughout the world.
Neither of the Respondents is commonly known by the Domain Name nor have they conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondents to use the ALSTOM Mark. There is no noncommercial use of the Domain Name. The Domain Name is used by the First Respondent to operate a website that purports to promote the business of Alstom Construction Inc., however, this company was cancelled in May 2017. The present use of the Domain Name does not amount to a bona fide offering of goods and services from the Domain Name.
Given the reputation of the Complainant’s well-known ALSTOM Mark, it is inconceivable that the First Respondent registered the Domain Name unaware of the Complainant’s rights. The First Respondent registered the Domain Name in the name of the Second Respondent without its permission or awareness. Finally, despite the cancellation of the company registration for Alstom Construction Ltd, the First Respondent renewed the Domain Name and continues to use the Domain Name to promote the services of a non-existent company. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
In this proceeding the Second Respondent has written to the Complainant, denying that it is the owner of the Domain Name or has any connection with the Domain Name. Similar situations have arisen in Banca Intesa S.p.A. v. Hilary Ammann,WIPO Case No. D2006-0496 and AXA SA v. Michael A Watters,WIPO Case No. D2012-0376 in which the persons apparently in control of the disputed domain names (in this case the First Respondent) used the then respondents’ respective names and addresses, without authority, to register the dispute domain names.
While it is likely that the Domain Name was registered by the First Respondent who supplied the Second Respondent’s details without the Second Respondent’s knowledge or authorization, the Rules state that the respondent in a UDRP proceeding is the holder of the domain name registration (against which a complaint is filed). In this proceeding, the holder of the Domain Name, according to the information transmitted by the Registrar, is both the First and Second Respondents and therefore, pursuant to the Rules and the Policy, the Second Respondent remains a proper nominal Respondent in the proceeding. The Panel acknowledges that Second Respondent otherwise has no connection to or control over the Domain Name. A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ALSTOM Mark, having registrations for the ALSTOM Mark as a trade mark throughout the world.
Disregarding the generic Top-Level Domain (“.com”) for the purposes of the comparison the Panel notes that the Domain Name wholly incorporates the ALSTOM Mark and adds the descriptive word “construction”. Prior UDRP Panels have found that “when a domain name wholly incorporates a complainant’s trade mark that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. Furthermore prior UDRP Panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant.” See The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884 and Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The addition of the word “construction”, which in any event is descriptive of many of the services offered by the Complainant, does not operate to distinguish the Domain Name from the ALSTOM Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ALSTOM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.”
Neither of the Respondents is affiliated with the Complainant in any way. Neither of the Respondents has been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ALSTOM Mark or a mark similar to the ALSTOM Mark. There is no evidence that the either of the Respondents is commonly known by the Domain Name or any similar name. There is no evidence that either Respondent has used the Domain Name for a legitimate noncommercial use.
The Second Respondent denies any interest in the Domain Name and suggests that it was registered without its knowledge.
The First Respondent appears to use the Domain Name to promote a company, Alstom Construction Inc. that presently does not exist and, given the inability of the Ontario Ministry of Government Services to make contact with the company at its registered address, may never have been active or provided services. In the absence of any evidence from the First Respondent as to whether Alstom Construction Inc. has provided goods and services under its name, the Panel finds that the Complainant has established a prima facie case that the First Respondent has not used or made 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.
The Complainant has established a prima facie case that both Respondents lack rights or legitimate interests in the Domain Name. The Respondents have had an opportunity to rebut the presumption that they lack rights or legitimate interests but have chosen not to do so, indeed the Second Respondent has implicitly conceded that this is the case. The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As the Second Respondent has no connection to the Domain Name, its details having been added to the registration by the First Respondent without its consent or permission, I will limit my findings on bad faith to the First Respondent.
For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that the First 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The First Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the First Respondent has engaged in a pattern of such conduct; or
(iii) The First Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the First Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 First Respondent’s website or location or of a product or service on the First Respondent’s website or location.
The Panel finds on the balance of probabilities that the Domain Name was registered and used by the First Respondent in bad faith. At the time of registration the Complainant was a well-established company in Canada with the ALSTOM Mark registered for services including “building construction”. The First Respondent registered a domain name that consisted of the ALSTOM Mark and a word that described some of the services offered by the Complainant. It did so using the contact details of the Second Respondent without the Second Respondent’s authorization or awareness. While the Domain Name did correspond to a registered company name and resolved to a website that purported to offer building construction services:
a) Given the inability of the Ontario Ministry of Government Services to establish contact with Alstom Construction Inc. (and subsequent cancellation of the company registration), it is unclear whether Alstom Construction Inc. was ever an active trading entity; and
b) Even if Alstom Construction Inc. was an active trading entity its provision of services would, prima facie, have interfered with the Complainant’s ALSTOM Mark.
Furthermore the fact that the First Respondent renewed the Domain Name in July 2017 and continues to promote the building services of Alstom Construction Inc., despite the cancellation of the registration of the company in May 2017 is a relevant factor in considering the legitimacy of the First Respondent’s conduct with respect to the registration of the Domain Name and establishment of Alstom Construction Inc.
The First Respondent has been provided with an opportunity to rebut the Complainant’s claims of the First Respondent’s bad faith, including providing an explanation of:
- why it registered the Domain Name and company name Alstom Construction Inc.;
- whether Alstom Construction Inc. ever provided any bona fide services;
- why it provided the Second Respondent’s details as a co-registrant of the Domain Name without its awareness or permission;
- any relevant circumstances surrounding the deregistration of Alstom Construction Inc.; and
- why it renewed the Domain Name and continues to use it to promote the services of what appears to be a non-existent company.
The First Respondent has failed to provide any such explanation. The Panel finds that, considering the totality of circumstances, the First Respondent registered and used the Domain Name in bad faith to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Therefore, the Panel finds that the First Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: November 19, 2017
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