Complainant is Alstom, France, represented by Lynde & Associes, France.
Respondent is New Ventures Services, Corp, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (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 July 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2019. On August 29, 2019, the Center received an email communications by a third party.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 9, 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
Complainant is a company domiciled in France that is active in the transport infrastructures business.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name “Alstom”, inter alia, the following with protection e.g. for the territory of the United States:
- Word/device mark ALSTOM, United States Patent and Trademark Office (USPTO), registration number: 4236513, registration date: November 6, 2012, status: active;
- Word/device mark ALSTOM, USPTO, registration number: 4311549, registration date: April 2, 2013, status: active;
- Word/device mark ALSTOM, World Intellectual Property Office (WIPO), registration number: 706292, registration date: August 28, 1998, status: active;
- Word/device mark ALSTOM, WIPO, registration number: 706360, registration date: August 28, 1998, status: active.
Complainant, furthermore, has evidenced to be the registered owner of various domain names relating to the ALSTOM trademark, e.g. the domain name which resolves to a website at “www.” promoting Complainant’s business and services.
Respondent, according to the WhoIs information for the disputed domain name, is domiciled in the United States. The disputed domain name was first registered on October 26, 2017. By the time of the rendering of this decision, the disputed domain name does not resolve to any accessible content on the Internet. Complainant, however, has provided evidence that, at some point before the filing of this Complaint, the disputed domain name redirected to a standardized Pay-Per-Click (PPC) website with hyperlinks to a variety of third-parties’ websites including Complainant. According to the evidence on the file showing communications of Complainant’s representative with the counsel of whom appears to be the previous registrant of the disputed domain name, it seems that the disputed domain name was acquired by the Respondent around October or November 2018.
Between January 2018 and May 2019, Complainant sent a number of cease and desist letters and accompanying communication to Respondent under the (from time to time changing) contact information provided for in the WhoIs information of the disputed domain name. In June 2018, Respondent’s legal representative offered to Complainant to acquire the disputed domain name for an amount of CAD 50,000 (Canadian Dollars).
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to be a global leader in the world of transport infrastructures, employing more than 36,000 professionals in more than 60 countries worldwide, with the United States -where Respondent apparently is domiciled being a key country within the Alstom group of companies.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s ALSTOM trademark as it wholly and identically reproduces the latter. The fact that the disputed domain name, by the same time, also includes the well-known acronym and trademark GEC of “General Electric Company”, is not in contrast to such finding. Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant has not authorized, licensed or permitted Respondent to register or use a domain name incorporating the ALSTOM trademark, (2) Respondent is not commonly known by the name “Alstom” and there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, and (3) Complainant sent several cease and desist letters to Respondent before filing this Complaint which all remained unanswered. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the disputed domain name not only incorporates Complainant’s ALSTOM trademark, but also the reputed GEC trademark belonging to General Electric Company with whom Complainant has established two joint ventures and with whom it jointly owns numerous domain names including both the ALSTOM as well as the GEC trademark, (2) the disputed domain name was registered or acquired primarily for the purpose of selling it as indicated on the disputed domain name’s WhoIs extract, (3) the disputed domain name merely resolves to a parking page containing commercial links to either Complainant or third-party companies related to Complainant’s field of activity, and (4) Respondent did not answer to any of Complainant’s cease and desist letters and pre-procedural communication. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the ALSTOM trademark in which Complainant has rights.
The disputed domain name incorporates Complainant’s ALSTOM trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12), that where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party trademarks is insufficient in itself to avoid the finding of confusing similarity to the complainant’s trademark under the first element. Accordingly, the addition of the GEC trademark does not dispel the confusing similarity arising from the incorporation of Complainant’s ALSTOM trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s ALSTOM trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Alstom”. Finally, Respondent has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain name at some point before the filing of this Complaint obviously resolved to a typical PPC website showing a variety of hyperlinks to third-parties’ websites (including Complainant) for the obvious purpose of generating pay-per-click revenues. UDRP panels agree that using a domain name to host a PPC website does not present a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s trademark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The fact that the disputed domain name not only wholly incorporates Complainant’s ALSTOM trademark, but also the GEC trademark of Complainant’s joint venture partner General Electric Company, is a clear indication that Respondent was fully aware of Complainant and its ALSTOM trademark and directly targeted the very same when registering or acquiring the disputed domain name; there is no other plausible explanation apparent as to why Respondent needed to rely on these two trademarks combined in one domain name. Moreover, resolving the disputed domain name to a typical PPC website which shows a variety of hyperlinks redirecting, in turn, to numerous commercially active third-parties’ websites (including Complainant) for the obvious purpose of generating pay-per-click revenues is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s ALSTOM trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraphs 4(b)(i) as well as 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false WhoIs contact information since the Notification of Complaint sent to Respondent via DHL on August 8, 2019 could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the conclusion of a bad faith registration and use of the disputed domain name. Finally, the fact that, by the time of the rendering of this decision, the disputed domain name does not resolve to an active website does not prevent a finding of bad faith.
Accordingly, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: September 20, 2019
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