The Complainant is ALSTOM, France, represented by Lynde & Associes, France.
The Respondent is Name Redacted 1, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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 May 7, 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 May 19, 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 May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2021. The Center appointed William Lobelson as the sole panelist in this matter on June 25, 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 ALSTOM, a global leader in the world of transport infrastuctures. It owns several trademark registrations for ALSTOM: - International Registration No. 706292 ALSTOM registered on August 28, 1998, duly renewed, 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 Algeria, China, Cuba, Germany, Egypt, Democratic People’s Republic of Korea, Japan, Mexico, Morocco, Russian Federation, Thailand, Viet Nam, United Kingdom, etc; - European Union Trade Mark Registration No. 948729 ALSTOM filed on September 30, 1998 and registered on August 8, 2001, duly renewed, in classes 1, 2, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42 and European Union Trade Mark Registration No. 018085525 filed on June 24, 2019 and registered on May 22, 2020 in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42; - French Trademark Registration No. 98727759 filed on April 10, 1998 and duly renewed, in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42; and - United States of America Trademark Registration No. 4570546 ALSTOM filed on February 24, 2011 and registered on July 22, 2014 in classes 7, 9, 12, 35, 37, 39 and 42; As well as the domain name The Complainant has been advised of the registration of the disputed domain name (registered on September 5, 2020) initially in the name of a third-party pretending to be “Alstom”. The corresponding website “www.alstom.design” redirects to a parking page containing links related to energy, business etc, since its registration date. On December 4, 2020, the Complainant sent a trademark claim to the Registrar in order to assert their rights to the mark ALSTOM and request them to disclose the postal and email addresses of the owner of the disputed domain name. On December 7, 2020, the Registrar responded. They refused to disclose the requested information, suggesting to file a UDRP Complaint or to try to contact the registrant through their online form. Consequently, on January 14, 2021, the Complainant contacted the registrant of the disputed domain name through the Registrar’s online form to assert their rights on the denomination ALSTOM and requested the Respondent to transfer the disputed domain name for free. However, the Respondent remained silent, in spite of a reminder sent on February 9, 2021. Consequently, on May 4, 2021, the Complainant filed a UDRP Complaint. 5. Parties’ Contentions A. Complainant The Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks and domain names formed with the word ALSTOM; that the Respondent does not have any rights or legitimate interests therein; finally, that the Respondent registered and uses the disputed domain name in bad faith, being emphasized that the disputed domain name routes to a pay-per-click page (dedicated to web sites referring to the same field of activity as the Complainant’s) and that the Respondent declared a name that is identical to the Complainant’s CEO’s. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, 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 (paragraph 4(a)(i)); (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and (iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar The Complainant is the owner of numerous ALSTOM formative and word trademarks, all registered inter alia and used in relation with transport infrastructures. It also owns the domain name The disputed domain name The addition of the Top-Level Domain (“TLD”) “.design” is irrelevant, as it results from a technical constraint, and in any event does not prevent a finding of confusing similarity between the trademark ALSTOM and the disputed domain name. Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent’s defenses under UDRP, paragraph 4(c) include the following: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; (ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue. The Panel notes that the Respondent has not filed any response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests. The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name. The Complainant further contends that the Respondent is not known under the disputed domain name and does not make any bona fide use, neither commercial nor noncommercial, of the same, being emphasized that the disputed domain name does not resolve towards an active web page with substantive content. The Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has substantiated the fact that its trademark ALSTOM, which has been registered and used in France and internationally for years, now benefits from a high level of public awareness. It therefore appears very unlikely that the Respondent could not be aware of the Complainant’s rights in the trademark ALSTOM when it sought to register the disputed domain name. The Complainant also contends that the disputed domain name was first registered by the Respondent in the name of Alstom. Alstom is the name of the Complainant, that was used without permission and fraudulently to impersonate the Complainant. Then, after the Complainant sent a cease and desist letter to the Registrar, the Respondent used a privacy service to remain anonymous. But, when the identity of the Respondent was eventually disclosed by the Registrar pursuant to the introduction of the present complaint, it was found that the Respondent had used the same name as that of the Complainant’s CEO, and the address of the Complainant’s headquarters. The Complainant asserts that its CEO did not seek to register the disputed domain name and is not the Respondent. This statement has not been contested by the Respondent. The Panel has therefore no reason to question the accuracy of the Complainant’s assertion that the Respondent fraudulently impersonated the CEO of the Complainant, and used false information to register the disputed domain name. For this Panel, the above is a clear indication that the Respondent necessarily had the Complainant’s trademark in mind when he registered the disputed domain name. The Complainant has also substantiated that the disputed domain name was used to resolve to a pay-per-click page, where sponsored links were being parked. Those links directed to third parties web pages relating to services in the field of energy, which happens to be one of those where the Complainant was historically involved. The Respondent was therefore making use of the Complainant’s mark in relation with services that are identical to those in respect of which the mark ALSTOM was used and protected. Besides, it has been decided in earlier UDRP decisions that a respondent that uses a domain name with automatically generated pay-per-click links cannot disclaim responsibility and such content would be sufficient to conclude to a finding of bad faith, as reported in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.5. The Panel infers from the above that the Respondent acted in bad faith when it registered the disputed domain name and that it is using the disputed domain name in bad faith. Accordingly, the Complainant has satisfied 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, William Lobelson 1 The Respondent appears to have used the name of a third party (the CEO of the Complainant) when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: July 7, 2021
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