The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Richard Lopez, Marines Supply Inc, Argentina. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 13, 2021, 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 April 15, 2021. 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021. The Center appointed David H. Bernstein as the sole panelist in this matter on May 19, 2021. 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 French limited liability corporation, founded in 1928. The Complainant and its affiliates employ 34,000 people across 60 countries. The Complainant specializes in rail transport infrastructure; as evinced by the Wikipedia page enclosed in Annex 12 of the Complaint, the Complainant has also been involved in energy generation and transmission. The Complainant and its affiliates use the trademark ALSTOM to denote their products and services. The Complainant owns numerous trademark registrations for ALSTOM internationally, including in Argentina and Panama, the countries where the Respondent has addresses. Those registrations include: Argentinian Trademark Registration No. 3021941 for ALSTOM, filed on August 9, 2010, and registered on June 22, 2011, in class 9, and Argentinian Trademark Registration No. 3107328 for ALSTOM, filed on August 9, 2011, and registered on February 28, 2012, in class 12; and Panamanian Trademark Registration Nos. 18059 and No. 18060 for ALSTOM, filed on January 26, 2000, in classes 7, 9, and 11. The Complainant owns and operates the “www.alstom.com” website, registered on January 20, 1998, at which it provides information about the Complainant, its services, and relevant news updates. The Complainant also owns the domain name The Respondent registered the disputed domain name on November 24, 2020. At the time of the filing of the initial Complaint, the disputed domain name resolved to a parking page containing links primarily related to energy. The parking page stated at the bottom: “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers.” Since at least April 16, 2021, the disputed domain name has not resolved to an active web page. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its ALSTOM mark by wholly and identically reproducing the mark with the only difference being one letter in the generic Top-Level Domain (“gTLD”), substituting the “o” in “.com” for an “a” in “.cam.” As such, the Complainant contends that the disputed domain name is an example of typosquatting. The Complainant contends that the Respondent intentionally picked the disputed domain name to take advantage of the Complainant’s international reputation and spoof the Complainant’s domain name. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that it has never authorized a third party to register domain names on its behalf and that the Respondent is in no way affiliated with the Complainant. Additionally, the Complainant avers that it is unlikely the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services because the personal name, company name, and address provided to the Registrar are inconsistent with the actual persons and company listed at the provided address. The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent was highly likely to be aware of the Complainant’s mark and activities when it registered the disputed domain name and that the Respondent thus sought to take unfair advantage of the Complainant’s significant reputation by creating a likelihood of confusion. The Complainant also contends that the Respondent likely acted in bad faith by registering the disputed domain name via an anonymization company and then by providing false contact information to the Registrar. B. Respondent The Respondent did not reply to the Complainant’s contentions.1 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of evidence in order to obtain transfer of the disputed domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interest in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses the potential impact of the Respondent’s default: “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, notwithstanding the Respondent’s failure to respond to the Complaint, the burden remains on the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar The Complainant has clearly established that it has rights in the ALSTOM trademark by submitting evidence of its ownership of registrations for the ALSTOM mark in various national and international jurisdictions. See WIPO Overview 3.0, section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”). The disputed domain name is confusingly similar to the Complainant’s ALSTOM trademark given that the disputed domain name Although the gTLD is generally not relevant to a finding of identity or confusing similarity because the gTLD “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test,” WIPO Overview 3.0, section 1.11.1, the Panel may consider the gTLD in those cases where it has relevance to the analysis. One such example is where the gTLD itself contains a term incorporated in the trademark, WIPO Overview 3.0, section 1.11.3 (“Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD ‘mark’ and a mark ‘TRADEMARK’, the domain name The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s ALSTOM mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant has the burden of making a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once this burden is met, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (though the burden of proof remains on the Complainant at all times). See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. If the Respondent does not satisfy its burden of coming forward with some evidence to rebut the Complainant’s prima facie showing, or if the Respondent fails to file a response at all, the Complainant’s prima facie showing will be sufficient to meet its burden of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. Moroccan Financial Board v. Abdullah Riahi,WIPO Case No. D2011-0751. The Complainant has made the requisite prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has demonstrated that it owns the ALSTOM trademark worldwide and that it has not granted the Respondent any right to use that mark. There is no content on the Respondent’s website that hints at any rights or legitimate interests. The Respondent has not submitted any Response. As such, the Complainant’s prima facie showing is unrebutted. For these reasons, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has established that the disputed domain name is an example of typosquatting, with the typographical error in this case in the gTLD itself rather than in the trademark. The Respondent’s effort to deceive Internet users with a spoofed domain name fully reproducing the Complainant’s distinctive trademark is itself sufficient to support a finding of bad faith registration and use. See Arnold Clark Automobiles Limited v. Domain Administrator, Fundacion Privacy Services Ltd,WIPO Case No. D2021-1080. Bad faith use and registration also may be established under paragraph 4(b)(iv) of the Policy if the Complainant can show that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location.” Prior to deactivating the parking page, the Respondent was using the disputed domain name to host energy-related links under the ALSTOM trademark, which likely would confuse consumers since the Complainant had been involved in energy generation and transmission. By using the Complainant’s famous trademark as the distinctive element of the disputed domain name, and providing advertising links related to the trademark meaning of the term ALSTOM GROUP rather than any dictionary meaning of that term (of which there is none), the Respondent created a risk of confusion that the visitors to the website will initially expect to access a website operated by the Complainant (or by one of its subsidiaries). It is also possible that the Internet user will believe that the linked websites are associated with or endorsed by the Complainant. See generallyAsian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. The fact that the parking page links were automatically generated by a third party rather than specifically selected by the Respondent is immaterial. “[N]either the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith,” WIPO Overview 3.0, section 3.5. If the Respondent wanted to prevent automatically generated links that could cause confusion, it should have used negative keywords to suppress links related to the Complainant and its business. Cf. id. Furthermore, the fact that the Respondent registered the disputed domain name through a privacy service (in the absence of any explanation of why use of a privacy service might be appropriate in the specific case) and provided false contact information to the Registrar is further indication that the disputed domain name was registered and used in bad faith. See BPCE v. Whois Agent, Whois Privacy Protection Service, Inc. / Desmarchelier Herve,WIPO Case No. D2019-1575. The Panel therefore concludes that the Complainant has satisfied the requirements of 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 disputed domain name David H. Bernstein 1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email, fax, and (DHL) courier. The Center’s email appears to have been delivered to the Respondent as the Center did not receive any notice that the email address was invalid or that the message could not be delivered. The Center’s fax could not be delivered because of a problem with the telephone line or detached connection and the Center received a non-delivery report. The courier package sent to Respondent Richard Lopez could not be delivered because the address that the Respondent provided was not a valid address, but the package addressed to Respondent WhoisGuard Protected, WhoisGuard, Inc was successfully delivered. Although it is not clear whether the Respondent received actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Sole Panelist
Date: June 2, 2021
Full & Egal Universal Law Academy