The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Domains By Proxy, LLC, United States of America (“USA”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 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 October 21, 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 October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2021.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on November 17, 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 BackgroundThe Complainant is a French company incorporated in 1928, active in the field of transport infrastructure, employing 34,000 professionals in more than 60 countries.
The Complainant holds several trade mark registrations comprising the term ALSTOM, inter alia (the “Trade Marks”):
- International Registration No. 706292, registered on August 28, 1998.
- Panamanian Trademark Registration No. 18059, filed on January 26, 2000.
- European Union Trade Mark Registration No. 948729, registered on August 8, 2001.
- USA Trade Mark Registration No. 4236513 (device mark), registered on November 6, 2012.
The Domain Name was registered on August 17, 2021, and initially redirected to a pay-per-click (“PPC”) parking page containing links in the French language related to payment and business services. At present, the Domain Name resolves to a website which upon visiting creates a pop-up window containing a French language warning that Windows has been blocked, advising to call a telephone number within five minutes to prevent a lockdown of the computer.
5. Parties’ Contentions A. ComplainantThe Complainant considers that the Domain Name is confusingly similar to the Trade Marks since there is only one letter difference (an additional “n” before the final letter “m”), which has very little impact on both the visual similarity (the letter “n” has a highly similar shape as the letter “m”) and the oral similarity (“ALSTONM” and “ALSTOM” are likely to be pronounced almost identically).
According to the Complainant, the Respondent does not have rights or legitimate interests in respect of the Domain Name, as the Respondent is not affiliated in any way to the Complainant, while the Complainant did not authorize a third party (including the Respondent) to register a domain name highly similar to the Trade Marks. The Complainant also contends that to the best of its knowledge, the Respondent did not apply for or obtain any trade mark registration related to ALSTOM or ALSTONM, nor is the Respondent commonly known under either of these names. Furthermore, the Complainant submits that the Respondent did not react to an email containing a trade mark claim, sent on September 7, 2021, thereby refusing the opportunity to discuss matters with the Complainant. In addition, the Complainant states that the content of the webpage to which the Domain Name resolves shows that the Respondent has no legitimate interest in respect of the Domain Name, as it is likely to contain malware.
Finally, the Complainant notes that the Respondent has been involved in over 180 previous UDRP cases as a respondent concerning domain names incorporating (well-known) trade marks of third parties.
According to the Complainant, the Domain Name has been registered and is being used in bad faith since:
- The Domain Name imitates the Trade Marks by misspelling the term “Alstom”, thereby misleading Internet users.
- The Domain Name was acquired long after the Trade Marks became well known.
- In view of the well-known character of the name “Alstom”, it is virtually impossible that the Respondent was not aware of the Complainant’s activities, at the time the Respondent registered the Domain Name.
- The Respondent tried to hide its real identity by using privacy services, thereby preventing the Complainant from identifying the Respondent and taking action against its unlawful actions.
- The Respondent did not react to the trade mark claim email from the Complainant.
- The Domain Name is being used to distribute malware.
- The Respondent is a proven cybersquatter, as evidenced by previous UDRP decisions.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the Trade Marks in its entirety. The insertion of the letter “n” before the final letter “m” does not prevent a finding of confusing similarity. The generic Top-Level Domain “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate InterestsAs set out in paragraph 4(c) of the Policy, a complainant has to prove that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the complainant has to make out a prima facie case that the respondent does not have rights or legitimate interests in the domain name. If the complainant succeeds in doing so, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name and has not acquired trade mark rights in the Domain Name. In assessing whether the Respondent has legitimate interests in the Domain Name, it should also be taken into account that (i) since the Domain Name incorporates the Trade Marks in their entirety and is confusingly similar to the Trade Marks, it carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1); and (ii) the Respondent has not provided evidence, nor is there any indication in the record of this case, that the Respondent is commonly known by the Domain Name. Furthermore, in view of the fact that the Domain Name in the past resolved to a PPC parking page, containing links to various financial and business services, while it currently resolves to a web page containing malware, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, nor does such use constitute a bona fide offering of goods or services.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad FaithBased on the undisputed information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since
- the Respondent’s registration of the Domain Name occurred almost 23 years after the registration of the earliest of the Trade Marks;
- the incorporation in the Domain Name of a deliberate misspelling of the Trade Marks, by adding, deleting, substituting or reversing the order of the letters (so-called typo-squatting, see Fendi S.r.l. v. Wenxin Huang, Online Store Co., Ltd,WIPO Case No. D2018-2877; see also WIPO Overview 3.0, section 1.9);
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the use of a privacy service to hide the identity of the Respondent;
- the lack of a formal Response of the Respondent;
- the past use of the PPC parking page to which the Domain Name resolves for links to financial and business services and the current resolving of the Domain Name to a web page containing malware;
- the Respondent having engaged in a pattern of bad faith registration and use within paragraph 4(b)(ii) of the Policy (see WIPO Overview 3.0, section 3.1.2) as evidenced by the fact that since 2018, the Respondent has been found to be involved in cybersquatting in some 180 cases (see e.g. Skyscanner Limited v. Registration Private, Domains By Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0018).
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith.
7. DecisionFor 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,
Wolter Wefers Bettink
Sole Panelist
Date: December 1, 2021