The Complainant is Alstom S.A, France, represented by Lynde & Associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain names and are registered with Dynadot, 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 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 31, 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.
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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2019.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on September 2, 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 is a company operating in the world of transport infrastructures. The Complainant holds trademark registrations in a large number of jurisdictions for the term ALSTOM. Those registrations include International Registration No 706292 for ALSTOM registered on August 28, 1998, covering 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 designating notably Austria, Benelux, China, Germany, Egypt, Democratic People’s Republic of Korea, Morocco, Portugal, Russian Federation, Viet Nam, United Kingdom and Norway. The same word mark was registered with the European Union Trademark Office, on August 8, 2001, Registration No 948729 in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42. The Complainant also has a number of device mark registrations containing the term ALSTOM.
Further, the Complainant filed trademark applications with the European Union Trademark Office for ALSTOM IS MOBILITY (No 18065604) and ALSTOM MOBILITY BY NATURE (No 018065602) on May 15, 2019 for goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
The Complainant also holds the registration for a substantial number of domain names referable to its trademarks: see e.g. ; ; ; ; and . The Complainant also asserts that it holds the following domain names: ; and . The Complainant also controls a considerable number of company and trade names that include “Alstom”: for instance, ALSTOM Transport; ALSTOM Power and ALSTOM Management.
The Complainant seeks to consolidate proceedings in relation to the two disputed domain names, which were both registered on May 15, 2019, with a privacy shield provider (Super Privacy Service LTD c/o Dynadot). A request was emailed by the Complainant to the Registrar and the web page host DAN.COM to block access to the websites to which the two disputed domain names resolved. The Registrar rejected the request and the Complainant was referred to the UDRP instead. A request for identification of the Registrants was also rejected, the Registrar indicating that it would not release customer or account information without the express permission of the customer or when required by law. Upon receiving a reminder, DAN.COM responded, agreeing to delete the disputed domain names from its marketplace. A cease and desist letter sent by the Complainant to the Respondent via the latter’s anonymized email address has remained unanswered.
However, two new homepages have been generated and show that each of the disputed domain names is for sale for USD 990.
The disputed domain names were registered on May 15, 2019. 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain names are either identical to its trademark applications for ALSTOM IS MOBILITY and ALSTOM MOBILITY BY NATURE, or are confusingly similar to its registered ALSTOM word mark. The Complainant’s trademarks will be perceived and recognized directly by Internet users in the disputed domain names, even more so given the fame that attaches to the ALSTOM trademarks according to the Complainant.
The Complainant points out that the Respondent has not been authorized in any way to register or use a domain name containing its trademarks. Nor is the Respondent, according to the Complainant’s knowledge, known by the name ALSTOM, or an applicant for or trademark registrant for the terms ALSTOM, ALSTOM MOBILITY BY NATURE or ALSTOM THIS IS MOBILITY. The Respondent also did not respond to the Complainant’s cease and desist letter, so has failed to establish in any way that it has rights to the disputed domain names.
The Complainant submits that in accordance with prior Panel decisions, all the circumstances of the case are relevant to determining bad faith. In the first instance, the disputed domain names incorporate the Complainant’s registered and applied for ALSTOM trademarks in their entirety. The disputed domain names were acquired long after the ALSTOM trademarks, according to the Complainant’s submission, became well known, so it is unimaginable that the Respondent was unaware of the Complainant’s activities at that time. Further, the application for registration of the disputed domain names was filed on May 15, 2019, the day of filing of the Complainant’s trademark applications for ALSTOM THIS IS MOBILITY and ALSTOM MOBILITY BY NATURE.
Further, the Complainant asserts that the Respondent registered the disputed domain names for the purpose of selling them. The initial webpages to which the disputed domain names resolved offered them for sale, and this was later reiterated. According to the Complainant, the offering for sale of disputed domain names is well recognized as an act of bad faith. The sale price is also said to be nearly 20 times more than the average price for a domain name. Finally, the Complainant points out that passive holding, without demonstrable preparations for use of a disputed domain name, under circumstances where there is no evidence of any fair and legitimate use and the domain names at issue are offered for sale, is indicative of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Consolidation
In this case consolidation of the proceedings in relation to the two disputed domain names and is warranted. Both disputed domain names were registered on the same date with the same registrar. In each case, the latter is effectively a privacy shield provider, and its responses to the Complainant’s requests in relation to both domain names have been unitary. Both domain names were registered on the same date of filing of the trademark applications of the Complainant for ALSTOM THIS IS MOBILITY and ALSTOM MOBILITY BY NATURE. These two applied for marks are identically reflected in each of the disputed domain names. In the circumstances, it is reasonable to infer that the controlling interest behind both disputed domain names is one and the same person or entity. A. Identical or Confusingly Similar
The disputed domain names are each respectively identical to the trademarks applied for by the Complainant on May 15, 2019. However, there is no clear evidence put before the Panel other than the applications that the Complainant has registered trademark rights in the two phrases concerned. In the circumstances this is nonetheless not an impediment to a finding of confusing similarity, as both of the disputed domain names incorporate the distinctive ALSTOM trademark in an immediately visible and recognizable form. That mark appears as the first and most prominent part of the disputed domain names and is unmistakable. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore the Panel holds that the disputed domain names are confusingly similar to the ALSTOM registered trademarks of the Complainant. B. Rights or Legitimate Interests
The Respondent has not been authorized by the Complainant to use the ALSTOM trademarks in any manner, or incorporate them in a domain name for registration. There is no evidence that the Respondent is known by the disputed domain names or has made any legitimate trademark use of those domain names or the ALSTOM trademarks in any circumstances. The Respondent has also not availed itself of the opportunity to justify its actions by pointing to any putative rights or interests in a Response and has not replied to the cease and desist letter of the Complainant in any way. The fact that the Respondent has sought to sell the disputed domain names for a substantial sum and also registered those disputed domain names in identical terms and on the same date as the application for trademark registration by the Complainant of the terms ALSTOM THIS IS MOBILITY and ALSTOM MOBILITY BY NATURE, are further suggestive not of legitimate interests or rights, but of a scheme to derive unfair advantage from the well-established reputation the Complainant has in its ALSTOM marks and related activities.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
At the time of registration of the disputed domain names, the ALSTOM trademarks were already very well established in many global markets. They are highly distinctive marks. Furthermore, the Respondent happens to have applied to register as domain names terms identical to two applications for trademark registration filed on the same day by the Complainant. Moreover, the references to mobility in the disputed domain names further reinforce the likelihood of confusion of the two disputed domain names with the ALSTOM trademark since that term refers to a principal activity of the Complainant. This all suggests that the Respondent was perfectly aware of the goodwill and rights of the Complainant when registering the disputed domain names. The Respondent has then sought to sell the disputed domain names for a fairly substantial sum, and has deployed the disputed domain names in a manner exclusively suited to that purpose. The Respondent has not sought to make a legitimate use of the disputed domain names, nor has it asserted that it has any legitimate interests or rights in the ALSTOM trademarks or the disputed domain names. The disputed domain names have effectively been held only for the purpose of inducing the Complainant to pay a substantial above-cost price for them.
Therefore, the Panel holds that the disputed domain names were registered and are being used in bad faith. 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 names, and , be transferred to the Complainant.
William A. Van Caenegem
Sole Panelist
Date: September 16, 2019
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