The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Contact Privacy Inc. Customer 1247978400, Canada / Tammy Gillen, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 2, 2020. The Center verified that the Complaint, together with the amended 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 September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2020. The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on November 5, 2020. 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. The proceeding is conducted in English, this being the language of the disputed domain name’s registration agreement, as confirmed by the Registrar. 4. Factual Background The Complainant, initially formed in France in 1928, is a global leader in rail transportation. The Complainant has manufactured and put in place high-speed trains including the AGV, TGV, Eurostar, Avelia Liberty, and New Pendolino, in addition to suburban, regional, and metro trains, tramways, and locomotives all over the world. The Complainant also develops and markets solutions for the railway sector, including signaling products, and systems. In the US, where the Respondent indicates having its address, the Complainant has provided mobility solutions to both private and public operators in New York, Boston, Baltimore, Washington, D.C., Atlanta, Philadelphia, and San Francisco, US. The Complainant holds trademark rights over the term “Alstom” in numerous countries around the world. The Complainant’s ALSTOM trademark registrations include the following: - International Trademark Registration No. 706292 registered on August 28, 1998, designating (among others) Algeria, China, Cuba, Germany, Egypt, Democratic People’s Republic of Korea, Japan, Mexico, Morocco, Russian Federation, Thailand, Viet Nam, and the United Kingdom; - European Union Trade Mark (“EUTM”) Registration No. 000948729 registered on August 8, 2001; and - US Trademark Registration No. 4570546 registered on July 22, 2014. The disputed domain name was registered on August 17, 2020, and has been used in emails originating from (“[...]@alstonngroup.com”). These emails are falsely attributed to the Complainant. 5. Parties’ Contentions A. Complainant In summary, the Complainant contends as follows: (i) a number of UDRP decisions have regarded the ALSTOM mark to be either famous or well-known; (ii) the disputed domain name is a typosquatting of the Complainant’s ALSTOM mark; (iii) the Respondent used “alstonn” in the disputed domain name to create confusion with the Complainant’s ALSTOM mark; (iv) the word “group” is devoid of any distinctive character and does not dispel the confusing similarity between the disputed domain name and the Complainant’s ALSTOM mark; (v) it is generally accepted that the “.com” suffix is irrelevant when assessing confusing similarity pursuant to paragraph 4(a)(i) of the Policy; (vi) the Complainant has not authorized, licensed, or permitted the Respondent to register or use a domain name incorporating the ALSTOM mark; (vii) to the best of the Complainant’s knowledge, the Respondent did not apply for or obtained any trademark registration encompassing the term “alstonn”; (viii) considering that the Respondent has been using the disputed domain name’s email server to send fraudulent requests on the Complainant’s behalf, it cannot reasonably be considered that it would have rights or legitimate interests in the disputed domain name; (ix) under a similar pattern of scam, two prior UDRP panels found the Respondent to lack rights and legitimate interests in the domain names (x) in view of the well-known character of the ALSTOM mark, it is virtually impossible that the Respondent was not aware of the Complainant’s activities at the time it registered the dispute domain name; (xi) UDRP panels have consistently held that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known mark by an unaffiliated entity in and of itself establishes bad faith for the purposes of the Policy; (xii) the fact that the Respondent used the disputed domain name’s email server to send bogus payment requests to the Complainant’s providers, on the Complainant’s behalf, is further indication of the Respondent’s bad faith under the Policy; (xiii) because the Respondent has used an email address that differs from the name shown on WhoIs, it is very likely that the disputed domain name’s registrant of record is either false or an impersonation of someone else; (xiv) the Respondent’s scam scheme uses an email address that matches the Complainant’s manufacturing facility in Grain Valley, Missouri, US; and, (xv) considering that the Respondent has been making fraudulent payment requests on the Complainant’s behalf, in order to obtain money transfers from the Complainant’s suppliers, it is obvious that the dispute domain name is being used in bad faith. B. Respondent The Respondent did not reply to the Complaint. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name). The Complainant owns numerous trademark registrations for ALSTOM worldwide, including US trademark registration No. 4570546 (registered on July 22, 2014), EUTM registration No. 000948729 (registered on August 8, 2001), and International trademark registration No. 706292 (registered on August 28, 1998), all of which predate registration (on August 17, 2020) of the disputed domain name. From a visual standpoint, the disputed domain name is confusingly similar to the Complainant’s mark as the double “n” in “alstonn” optically resembles the letter “m” of the mark ALSTOM, especially where the Complainant’s mark appears in lower case as is frequently typed in an Internet search engine. From an aural viewpoint, the disputed domain name is also confusingly similar to the Complainant’s mark as “alstonn” is phonetically close to ALSTOM. From a conceptual standpoint, the disputed domain name’s confusing similarity with the Complainant’s mark is even more telling as the term ‘“alstonn” is an obvious misspelling of the mark ALSTOM. See section 1.9 of the WIPO Overview 3.0 (a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element). The Panel finds that the inclusion of the descriptive term “group” does not dispel the confusing similarity of the disputed domain name with the Complainant’s mark. Likewise, the generic Top-Level Domain (“gTLD”) “.com” is a non-distinctive string that is immaterial to the instant comparison. Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights. The Complainant has passed the first threshold of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “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 [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you [the respondent] of the dispute, your [the respondent’s] 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 [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or (iii) you [the respondent] are making a 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.” As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Complainant represents not having authorized the Respondent to register or use a domain name incorporating the ALSTOM mark. The Complainant also submits that the Respondent is not commonly known by the disputed domain name. The Complainant has produced evidence showing that the Respondent has used the disputed domain name in email communications impersonating the Complainant to make fraudulent payment requests to the Complainant’s providers. This use, the Complainant argues, cannot give rise to rights or legitimate interests in the disputed domain name. In adopting the consensus view, the Panel considers that the disputed domain name’s use for scamming purposes negates rights and legitimate interests on the Respondent. See section 2.13.1 of the WIPO Overview 3.0 (UDRP panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent). In sum, the Panel holds that the Respondent lacks rights and legitimate interests in the disputed domain name within the purview of the Policy. The Complainant has fulfilled the second limb of Policy, paragraph 4(a). C. Registered and Used in Bad Faith Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use: “(i) circumstances indicating that you [the respondent] have registered or acquired the 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) you [the respondent] have registered the 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 you [the respondent] have engaged in a pattern of such conduct; or (iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.” First off, the Panel acknowledges that “Alstom” has no meaning other than as a trademark of the Complainant. See Alstom v. Telecom Tech Corp./ Private Registration, WIPO Case No. D2011-1658 (ALSTOM has no dictionary meaning, except as referring to the Complainant’s mark). In fact, the Complainant’s original name was “Alsthom”, which was coined from the names of the constituents Société Alsacienne de Constructions Mécaniques and Compagnie Française Thomson Houston. The “Alsthom” name was changed to “Alstom” in 1998.1 Having been coined by the Complainant, the ALSTOM mark enjoys the broadest scope of protection against third-part use.2 The Panel also takes notice that the Complainant’s ALSTOM mark is well known internationally. See Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Flor Walden,WIPO Case No. D2020-0127 (the Complainant’s ALSTOM trademarks are well-known internationally for transports infrastructures products and services). Against this backdrop, the Panel finds that the disputed domain name’s registration and use exhibits opportunistic bad faith as the Respondent took unfair advantage of the goodwill and notoriety attaching to the ALSTOM mark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark). This conclusion is buttressed by the fact that the disputed domain name is a typosquatting of the Complainant’s mark, and typosquatting, in turn, is a form of cybersquatting. See Alstom v. Contact Privacy Inc. Customer 1244065242 / Michelle Chung, Chung Limited Co,WIPO Case No. D2019-2718 (this appears to be a classic example of typosquatting in which the respondent has sought to take advantage of the renown attaching to the ALSTOM mark and to confuse Internet users who seek to reach the Complainant’s real Internet site at the domain name Additionally, the Panel finds that the Respondent’s email impersonation scam further supports a finding that the disputed domain name has been used in bad faith within the realm of the Policy. See section 3.4 of the WIPO Overview 3.0 (the use of a disputed domain name to send deceptive emails, e.g., to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers, constitutes bad faith). For the reasons stated above, the Panel is persuaded that the disputed domain name was registered in bad faith and has been used in bad faith. The Complainant has discharged its burden in relation to 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 Reynaldo Urtiaga Escobar 1 See “what is Alstom” at “www.findwords.info/term/alstom" 2 A coined mark is at the strongest end of the spectrum (sometimes called a hierarchy of marks) because it is inherently distinctive. See INTA’s Fact Sheet on “Trademark Strength” at “www.inta.org/fact-sheets/trademark-strength/”
Sole Panelist
Date: November 20, 2020
Full & Egal Universal Law Academy