The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is OOO “Terminal-Alstom”, Russian Federation. 2. The Domain Name(s) and Registrar(s)
The disputed domain name (the “Disputed Domain Name”) is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2019, 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. On August 5, 2019, the Center sent an email communication in English and Russian regarding the language of the proceedings.
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 in both English and Russian, and the proceedings commenced on August 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2019.
The Center appointed Mariya Koval as the sole panelist in this matter on September 10, 2019. 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, founded in 1928, is a French multinational company operating worldwide in rail transport markets and is active in the fields of passenger transportation, signaling, and locomotives. The Complainant is a global leader in transport infrastructure and employs 34,000 professionals in more than 60 countries. Russian Federation is one of the key countries in which the Complainant operates – e.g. the Complainant is the largest Russian manufacturer of rolling stock, rolling stock components, car castings, and diesel engines.
The Complainant is the owner of numerous registrations for its ALSTOM Trademark (the “ALSTOM Trademark”) in jurisdictions around the world, among which there are the following ones:
- International Registration No. 706292 for ALSTOM, registered on August 28, 1998, in respect of goods and services in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, and 42;
- European Union Trademark Registration No. 948729 for ALSTOM, registered on August 8, 2001, in respect of goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, and 42.
In addition, the Complainant is the owner of a number of companies under the trade name “Alstom”, such as ALSTOM Transport Technologies, ALSTOM Power Systems, ALSTOM Holdings, ALSTOM Shipworks, ALSTOM APTIS, etc.
Since 1998 the Complainant operates, among others, the domain name for the promotion of its goods and services.
The Disputed Domain Name was registered on August 25, 2015. At the date of this decision, the Disputed Domain Name does not resolve to any active website. According to the evidence presented by the Complainant (Annex 6), the Disputed Domain Name has been inactive from the date of its registration. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it first heard about the Respondent in 2014,when the Respondent registered another domain name, which also reproduced the Complainant’s ALSTOM Trademark, . In 2015, the Complainant revealed (Annex 7) that the Respondent’s company “Terminal-Alstom” has no real and effective establishment at the address mentioned on the Russian Company Register (which is the same as the one appearing on the WhoIs extract of the Disputed Domain Name), nor any other postal address. This report also revealed that the company “Terminal Alstom” has in fact no economic activity.
On May 19, 2015, the Complainant sent a first cease and desist letter to the company “Terminal Alstom”, requesting that it change its corporate name and to cancel the domain name . In spite of the Respondent acknowledging receipt of this letter, it did not reply. Further, in 2015, the Respondent registered the Disputed Domain Name, which reproduces Complainant’s ALSTOM Trademark. In 2017, the Complainant sent a second cease and desist letter with the proposal of amicable settlement and a request for the transfer of the Disputed Domain Name to the Complainant. The Respondent did not respond.
The Complainant contends that the Disputed Domain Name is confusingly similar to its ALSTOM Trademark as it completely reproduces the Complainant’s ALSTOM Trademark. The Complainant’s ALSTOM Trademark is preceded in the Disputed Domain Name by the element “t”, which does not have any meaning for the public, and the Complainant’s Trademark remains directly recognizable in the Disputed Domain Name.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the fact that the Respondent is not affiliated in any way to the Complainant. The Respondent is not authorized, licensed or permitted by the Complainant to register or use a domain name incorporating the Complainant’s Trademark. To the best of Complainant’s knowledge, the Respondent did not apply for or obtain any trademark registrations consisting of the word “Alstom”. According to the Russian Federation Company Register, the Respondent was incorporated after the filing of the ALSTOM Trademark by the Complainant. Moreover, the Complainant notes that, according to its investigation report, the Respondent never had any effective economic activity under the name “Alstom” or “T-Alstom”.
The Complainant also contends that the Respondent has registered and is using the Disputed Domain Name in bad faith in view of the following:
- the Disputed Domain Name completely incorporates the Complainant’s ALSTOM Trademark and was registered after the ALSTOM Trademark became well-known;
- the Respondent was indeed aware about the Complainant’s ALSTOM Trademark when it registered the Disputed Domain Name;
- the Respondent never had any real and effective establishment at the address indicated in the WhoIs extract of the Disputed Domain Name and it does not operate under the name “t-alstom”;
- the Respondent has not made demonstrable preparations to use the Disputed Domain Name and there is no evidence that any fair and legitimate use of the Disputed Domain Name has been made since it was registered;
- the registration and use of the Disputed Domain Name takes unfair advantage of the ALSTOM denomination’s significant reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant to succeed must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. 6.1. Language of Proceedings
The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian. In accordance with the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. At the same time, this paragraph empowers the Panel to determine the language of the proceeding having regard to all the circumstances of the administrative proceeding.
The Disputed Domain Name comprises Latin script. The Respondent, having received notice of the proceeding in both English and Russian, did not file any response. Having received the Center’s communication regarding the language of the proceeding, also in both English and Russian, the Respondent again did not make any submissions regarding the language of the proceeding.
Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel considered all circumstances of this case, namely, the failure of the Respondent’s objection to English as the language of the proceedings; the Respondent’s decision not to respond to the Complaint, although being notified both in English and Russian and the Respondent’s choice of English words for the Disputed Domain Name. In light of the above circumstances, the Panel concludes in accordance with paragraph 11(a) of the Rules that English shall be the language of this proceeding. Translation of the Complaint and other materials would cause unnecessary delay of this proceeding. A. Identical or Confusingly Similar
The Complainant has properly asserted its rights in the ALSTOM Trademark due to the long use and number of registrations globally, including in the Russian Federation. Moreover, previous UDRP panels acknowledged the ALSTOM Trademark as well-known, see, e.g., ALSTOM v. STOCKMARKET DOMAINS,WIPO Case No. D2008-1542; ALSTOM v. Daniel Bailey,WIPO Case No. D2010-1150.
The Disputed Domain Name incorporates the ALSTOM Trademark in its entirety with addition of the hyphen and a letter “t”, combined with the generic Top-Level-Domain (“gTLD”) suffix “.com”. The gTLD “.com” typically is not taken into account for purposes of considering the first element under the Policy. Futhermore, the use of a hyphen in the Disputed Domain Name is irrelevant in a finding of confusing similarity, see e.g. Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd.,WIPO Case No. D2010-2107 (“In the present case, the Panel finds that… adding a hyphen between the two words “maharaja” and “express” in the disputed domain name are insignificant modifications that do not reduce the confusing similarity between the disputed domain name and the Complainant’s mark”).
Addition of the letter “t” to the Disputed Domain Name does not in any way give the distinctive character to the Disputed Domain Name and consequently does not change the impression of the dominant element in it, namely “alstom”. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”). Also, pursuant to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM Trademark and that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In accordance with the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has used its ALSTOM Trademark and its domain name ˂˃ since 1998 that is long before the Respondent registered the Disputed Domain Name in 2015.
The Complainant has not authorized, licensed, or permitted the Respondent in any way to register or use the Disputed Domain Name or to use its ALSTOM Trademark. Therefore, the Panel finds that there is a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Thus, the burden is on the Respondent to produce evidence to rebut this presumption.
Furthermore, the Panel finds that, taking into account that the website under the Disputed Domain Name is inactive since its registration, there are no indications that the Respondent has made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services and/or that it intends to make a legitimate, noncommercial or fair use of the Disputed Domain Name. Moreover, as evidence (Annex 7) presented by the Complainant witness, no effective economic activity has been conducted by the Respondent since its incorporation.
Moreover, the Respondent did not respond to the Complainant’s two cease and desist letters (one of which was sent in respect of another domain name incorporated the ALSTOM Trademark) and also to this Complaint, and therefore it has failed to take these opportunities to present evidence to demonstrate its rights or legitimate interests in the Disputed Domain Name.
The Panel also finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name.
In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the Complainant has satisfied the requirements of the second element of the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of circumstances, which are not exhaustive, that indicate bad faith conduct on the part of the respondent, namely:
(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that the Complainant registered its ALSTOM Trademark for the first time more than 20 years prior to the registration of the Disputed Domain Name.
In the Panel’s opinion, the Respondent knew about the Complainant’s Trademark and business at the time of registration of the Disputed Domain Name. This is supported by the Respondent’s previous registration of the domain name . Based on the case file, the Panel finds that the Respondent had the ALSTOM Trademark in mind and intentionally targeted the Complainant when it registered the Disputed Domain Name.
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Disputed Domain Name completely reproduces the Complainant’s well-known ALSTOM Trademark. In accordance with the WIPO Overview 3.0, section 3.1.4, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Furthermore, the Respondent did not file any response and did not take any efforts for justification of its actions with respect to the Disputed Domain Name registration and use.
Here, the Disputed Domain Name is confusingly similar to the Complainant’s well-known ALSTOM Trademark and was likely registered with the primary intention to disrupt the Complainant’s business or to confuse consumers. The Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, is evidently deceptive for consumers.
Considering the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. Therefore, the Complainant succeeds under the third element 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 Disputed Domain Name be transferred to the Complainant.
Mariya Koval
Sole Panelist
Date: September 23, 2019
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