Complainant is Alstom, France, represented by Lynde & Associes, France.
Respondent is jeremiah poole, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 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 Complainant on October 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 30, 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 Respondent of the Complaint, and the proceedings commenced on November 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on November 27, 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. 4. Factual Background Complainant is a French multinational corporation founded in 1928 that offers a wide variety of services related to transport infrastructures under the ALSTOM trademark (“Complainant’s Mark”). Complainant employs 34,000 employees in 60 countries around the world. It has had commercial presence in Canada, which is Respondent’s purported domicile, for over 80 years, operating service and manufacturing facilities in major cities such as Ottawa, Toronto, and Montreal. Complainant also owns at least two trademark registrations for its ALSTOM mark in Canada: registration numbers TMA585660 (registered on July 21, 2003) and TMA562412 (registered on May 23, 2002). At least two other UDRP panels have found that Complainant’s Mark is well known. See ALSTOM v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO)WIPO Case No. D2010-1150; Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd.,WIPO Case No. DCO2016-0030. Complainant also owns various domain names incorporating its ALSTOM mark, including The disputed domain name Complainant contends that the disputed domain name is confusingly similar to Complainant’s ALSTOM mark because it reproduces identically the ALSTOM mark. Complainant argues that the addition of the terms “grid” and “co” in the disputed domain name is insufficient to distinguish it from Complainant’s Mark since “grid” is a descriptive term and “co” is an abbreviation of the descriptive term “company.” Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it falsely suggests an affiliation with Complainant. Furthermore, Complainant alleges that there is no evidence that Respondent has used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services because there is no evidence that the company purportedly operating the disputed domain name exists. Complainant alleges that there is no other entity called “Alstom Grid” listed in the corporate register in Ohio, United States, the location where the alleged company operates according to the disputed domain name’s website, apart from Complainant’s former US subsidiary. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had knowledge of Complainant’s rights in the ALSTOM mark given its worldwide notoriety, the complete incorporation of the ALSTOM mark in the disputed domain name, and that the website to which the disputed domain name resolves promotes an entity that allegedly offers services highly similar to those offered by Complainant under its ALSTOM mark. Complainant further argues that Respondent has submitted no evidence of actual or contemplated good-faith use, has taken active steps to conceal his identity by providing false contact details, and there is no plausible good faith use to which the disputed domain name could be put. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant 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) 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. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the ALSTOM mark through its various national registrations. With Complainant’s rights in the ALSTOM mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is furthermore well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here 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.” See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008 -0923. Here, Complainant’s ALSTOM mark is fully and identically incorporated in the disputed domain name. The inclusion of the dictionary term “grid” and the abbreviation for the dictionary term “company,” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s ALSTOM mark. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. Complainant has presented evidence showing that Respondent has registered the disputed domain name to create a false association with Complainant given the confusing similarity of the disputed domain name to Complainant’s Mark, and using it with the intent of misleadingly diverting consumers to a website allegedly owned and operated by an entity associated with Complainant for commercial gain. The evidence on record shows that the disputed domain name purports to offer transport infrastructure services and products in direct competition with the services offered by Complainant in connection with its ALSTOM Mark. Respondent is clearly using Complainant's ALSTOM Mark to misleadingly divert consumers to his website for ostensible commercial gain, based on the confusion caused by his use of the ALSTOM Mark without authorization. Clearly, the disputed domain name is not being used in furtherance of a legitimate noncommercial or fair use. Furthermore, Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case, particularly regarding Complainant’s contention that it has never authorized, licensed, or permitted Respondent to use any of Complainant’s Mark in any way. Furthermore, there is no evidence on record suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Complainant provided ample evidence to show the widespread use and numerous Canadian registrations of the ALSTOM Mark that long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the ALSTOM Mark when he registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s ALSTOM mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Furthermore, Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Furthermore, the website at the disputed domain name at least purports to be a business that offers services identical or competitive with those offered under Complainant’s Mark, even though there are clear indications that the site is a façade and there is likely no actual functioning business operation behind the disputed domain name. Therefore, Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s ALSTOM mark, but also an attempt to misleadingly divert consumers for its own commercial gain, and/or an attempt to otherwise profit from unauthorized use of Complainant’s Mark through the disputed domain name. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) 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, Brian J. Winterfeldt
Sole Panelist
Date: December 14, 2020
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