WIPO Domain Name Decision D2021-1155 for fr-alstom.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alstom v. Whois Privacy Protection Foundation / Johan Vasquez Case No. D2021-1155 1. The Parties

The Complainant is Alstom, France, represented by Lynde & Associes, France.

The Respondent is Whois Privacy Protection Foundation, Netherlands / Johan Vasquez, France. 2. The Domain Name and Registrar

The disputed domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2021, 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 23, 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 27, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2021.

The Center appointed Isabelle Leroux as the sole panelist in this matter on June 4, 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 company created in 1928. It is a global leader in the world of power generation, power transmission and rail infrastructure, employing over 38,000 people in more than 60 countries, in particular in France and in the Netherlands.

In France, the Complainant employs around 11,500 employees across its numerous sites and works with around 4,500 suppliers, playing a key role in the transport infrastructure sector.

The Complainant is the owner of several trademark registrations comprising the word “alstom” in numerous jurisdictions around the world, including the following trademark registrations:

- French trademark “ ” No. 98 727 762 of April 10, 1998, duly renewed, designating goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;

- French trademark “ALSTOM” No. 98 727 759 of April 10, 1998, duly renewed, designating goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;

- French trademark “ ” No. 98 727 757 of April 10, 1998, duly renewed, designating goods and services in classes 6, 7, 9, 11, 12, 19, 37, 39, 40 and 42;

- European Union Trade Mark “ALSTOM” No. 948 729 filed on September 30, 1998, duly renewed, designating goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;

- European Union Trade Mark No. 948 802 filed on September 30, 1998, duly renewed, designating goods and services in classes 1, 2, 6, 7, 9, 11, 12, 13, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;

- European Union Trade Mark No. 018 085 525 filed on June 24, 2019, designating goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;

- European Union Trade Mark No. 018 020 648 filed on February 8, 2019 designating goods and services in classes 7, 9, 1, 37, 39 and 42;

- International Trademark ALSTOM No. 706292 registered on August 28, 1998, duly renewed, designating 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, Norway.

The Complainant is also the registrant of numerous domain names under various generic and country code Top-Level Domains (“gTLDs” and “ccTLDs”) that reflect its trademarks that all redirect to the Complainant’s official website at “www.alstom.com”, including:

- registered since January 20, 1998;
- registered since May 10, 2000;
- registered since April 1, 2000;
- registered since June 15, 1998;
- registered since July 31, 2001;
- registered since July 7, 2004;
- registered since April 1, 2000;
- registered since November 25, 2000;
- registered since February 28, 2007;
- registered since November 15, 2001;
- registered since September 27, 2017;
- registered since October 8, 2015;
- registered since July 23, 2008.

The Complainant also owns a great number of companies and trade names rights on the sign “alstom” such as ALSTOM Transport Technologies, ALSTOM Transport, ALSTOM Power, ALSTOM Hydro, ALSTOM Grid, ALSTOM Holdings, ALSTOM Power Turbomachines, ALSTOM Management, and ALSTOM Wind, all from the same group of the Complainant.

The disputed domain name was registered on August 27, 2020 by the Respondent in an anonymized way through a Whois privacy protection provider with a contact address in the Netherlands. Upon the request of the Center, the Registrar’s verification response disclosed that the Respondent is in fact an individual whose address is in France. The disputed domain name redirects to an inactive website. 5. Parties’ Contentions A. Complainant

(i) The Complainant considers that the disputed domain name is confusingly similar to its numerous trademarks as the word “alstom” is wholly and identically contained within the disputed domain name . Internet users will thus directly recognize the Complainant’s trademarks and trade name within the disputed domain name, especially since the trademark ALSTOM has been considered as well-known in previous UDRP decisions.

The addition of the element “fr-” will be perceived by Internet users as a reference to the country of incorporation of the Complainant, which is France. Moreover, the addition of the gTLD “.com” is not to be taken into consideration when examining the identity or confusing similarity between the relevant mark and the disputed domain name.

(ii) Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not affiliated in any way to the Complainant.

The Complainant further contends that it has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating its trademarks and that the Respondent is not commonly known by the name “alstom”.

(iii) Finally, the Complainant contends that the Respondent’s bad faith should be established due to the following reasons: 1) the complete incorporation in the disputed domain name of the mark ALSTOM, that is well known, shows that the Respondent was aware of the Complainant’s prior rights; 2) the Respondent’s silence and absence of response; 3) the contact details of the Respondent are questionable; 4) Further, the name of the Respondent appears to be the same of a famous Mexican football player, which might be a coincidence, whereas his email address uses another name “Georges Saad”, which leads to believe that these informations are untrue.

In this regard, the Complainant adds that numerous domain names are associated with the Respondent’s name (Johan Vasquez) and with the name Georges Saad (corresponding to the provided email address of the Respondent). According to the Complainant, the Respondent appears to be a cybersquatter who reserves domain names only to impinge upon the Complainant’s rights and to damage its reputation, which is an indicator of bad faith.

(iv) The Complainant therefore requests that the disputed domain name be transferred to the Complainant. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

These elements will be examined in turn below. A. Identical or Confusingly Similar

The disputed domain name incorporates in its entirety the ALSTOM trademarks of the Complainant, which is typically considered sufficient to satisfy the requirement of the first element.

The addition of the word “fr”, which is the two-letter country abbreviation for France and that of a hyphen do not avoid a finding of confusing similarity, as Internet users’ attention will easily be drawn to the word “alstom” which is clearly recognizable, and the distinctive part in the disputed domain name. The Panel further notes that “fr” refers to the country code for France, the country of incorporation of the Complainant.

Furthermore, the gTLD “.com” does not affect the confusing similarity between the disputed domain name and the trademarks. Indeed, according to well-established consensus among UDRP panels, the addition of gTLD extensions, such as “.com”, is not to be taken into consideration when examining identity or confusing similarity between a complainant’s trademark and the disputed domain name. See section 1.11, WIPO Overview of WIPO Panel Views on Select UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the Panel finds that the disputed domain name to be confusingly similar to the Complainant’s trademarks. The first element of the paragraph 4(a) of the Policy is thus fulfilled. B. Rights or Legitimate Interests

Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. See section 2.1, WIPO Overview 3.0; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.

Hence after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.

In this case, the Complainant brings forward the following elements:

- It has no relationship whatsoever with the Respondent;
- There is no indication that the Respondent is commonly known by the disputed domain name;
- No license or authorization has been granted by the Complainant to the Respondent.

In addition, the Complainant has provided evidence of the fact that the disputed domain name redirects to an inactive website. Therefore, there is no indication of any potential rights of legitimate interests that the Respondent may have in the disputed domain name.

Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not proved otherwise.

Given these circumstances, the Panel finds that the second element of the paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith

The Complainant’s trademarks ALSTOM have been recognized as well-known by previous UDRP panels. Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the Complainant’s trademarks at the time the disputed domain name was registered and finds that the registration was therefore made in bad faith. See ALSTOM v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO),WIPO Case No. D2010-1150; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Flor Walden,WIPO Case No. D2020-0127; Alstom S.A. v. Name Redacted,WIPO Case No. D2019-2544; ALSTOM v. Ahmed El Shaweesh, DnArab.com,WIPO Case No. D2019-1796; and, Alstom v. Contact Privacy Inc. Customer 0155604942 / Milen Radumilo,WIPO Case No. D2020-0120.

Furthermore, the Panel finds that the Respondent’s efforts to conceal its identity through the use of a Whois privacy service with an address located in the Netherlands can be construed as further evidence that the disputed domain name was registered in bad faith. See TTT Moneycorp Limited. v. Diverse Communications,WIPO Case No. D2001-0725.

In addition, the Complainant has provided evidence that the Respondent’s postal address and contact details, as registered with the Registrar, appear to be untrue, which further demonstrates bad faith of the Respondent at the time of the registration.

Therefore, the Panel concludes that the Respondent was aware of the Complainant’s prior rights when he registered the disputed domain name.

The Complainant has further presented evidence to establish that the Respondent is associated with several domain names misspelling well-known third-party trademarks or trade names.

In the absence of any response from the Respondent, the Complainant makes a prima facie case that the Respondent has a pattern of registering multiple domain names in bad faith, which may be considered as a factor supporting a finding of the Respondent’s bad faith registration and use of the disputed domain name.

The circumstances in the case before this Panel indicate that the Respondent has intentionally created a likelihood of confusion with the Complainant’s ALSTOM trademark. The fact that the disputed domain name is inactive does not prevent a finding of bad faith use as it has been the case in several previous UDRP cases. See section 3.3, WIPO Overview 3.0.

The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 the Complainant.

Isabelle Leroux
Sole Panelist
Date: June 18, 2021

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