The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“US”) / dulongzhuan, du longzhuan, Philippines.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 December 3, 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 December 6, 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 December 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.
The Center appointed Daniel Peña as the sole panelist in this matter on February 9, 2022. 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 founded in 1928, which operates globally in rail infrastructure, power generation and transmission. It employs 36,000 professionals in more than 60 countries. One of these countries of operation is the US, where the Respondent is based, according to the domain registration. In the US, the Complainant employs 2,200 people, dispatched across 15 sites.
The Complainant holds registrations comprising the trademark ALSTOM in numerous jurisdictions around the world, including the following trademark registrations:
- US Registration No. 2898433, ALSTOM (figurative mark), registered on November 2, 2004, in classes 35, 37, 39, 40, 41, 42;
- US Registration No. 4236513, ALSTOM (figurative mark), registered on November 6, 2012, in class 12;
- US Registration No. 4570546, ALSTOM, registered on July 22, 2014, in classes 1, 6, 7, 8, 9, 11, 12, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42, 43, 45; and,
- International trademark registration No. 706292, ALSTOM, registered on August 28, 1998 in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42.
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 trademark, such as:
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All the above-mentioned domain names are redirected to the Complainant’s group website “www.alstom.com”.
The disputed domain name was registered on May 16, 2021.
As evidenced in the Complaint, the disputed domain name resolves to a webpage with gambling and pornographic content.
5. Parties’ Contentions A. ComplainantThe Complainant considers that the disputed domain name is confusingly similar to their trademarks ALSTOM according to paragraph 4(a)(i) of the Policy.
The Complainant’s trademarks are therefore wholly and identically contained in the disputed domain name. This term “iww” is not sufficient to overcome the confusing similarity with respect to the Complainant’s ALSTOM trademark, which remains recognisable in the disputed domain name.
The Complainant asserts that the Respondent has failed to prove its rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. The Complainant has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating their trademarks. The Respondent has not applied for or obtained any trademark registrations related to the trademark ALSTOM. He is also not commonly known under the name ALSTOM.
According to the Complainant the disputed domain name was registered in bad faith within the meaning of paragraph 4(a)(ii) of the Policy because of the following points:
- the disputed domain name incontestably imitates the Complainant’s trademarks and was acquired long after they became well-known;
- the Respondent has been using the disputed domain name in bad faith to resolves to a webpage with gambling and pornographic content;
- the Respondent remained silent and did not reply to the Complaint;
- the disputed domain name is a clear case of deliberate typosquatting; and,
- the Respondent attempts by any means to conceal his identity by using apparently false contact details for the registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in previous UDRP decisions that a Respondent’s default (i.e., failure to submit a 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 (See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
A Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(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.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademark ALSTOM on the basis of its multiple trademark registrations. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview 3.0, section 1.2.1).
It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a registered trademark. Numerous UDRP panels have recognised that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. Such findings were confirmed, for example, within the case Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the term “iww” does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the gTLD “.com” does not prevent the confusing similarity either. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element”. Similarly, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the complainant’s trademarks in accordance with the well-established practice of previous UDRP panels (see also section 1.11 of WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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 section 2.1 of the WIPO Overview 3.0).
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. Also, the Panel finds that the Respondent’s gambling and pornography use does not amount to any bona fide offering, or legitimate noncommercial or fair use, in this case.
Accordingly, the Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its trademark. On the contrary, the Panel finds that it is likely that the Respondent was aware of the Complainant and its rights and reputation in the ALSTOM mark at the time the disputed domain name was registered. Bad faith can be presumed based on the widely evidenced recognition of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto.
The Respondent’s use of the disputed domain name to offer pornographic content is a significant indicator of bad faith. See VIVENDI v. Guseva Svetlana,WIPO Case No. D2018-2631; and CHRISTIAN DIOR COUTURE v. Paul Farley,WIPO Case No. D2008-0008. Such conduct is known as “pornosquatting”, the practice whereby confusion with a trademark is used to divert Internet users to a website with pornographic content. See Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187. Here the Respondent created a disputed domain name that incorporated the trademark ALSTOM to capitalize on its renown and to have the disputed domain name resolve to a pornographic and gambling website for commercial gain.
The Respondent attempted to attract the Complainant’s customers to its pornographic and online gambling website by creating a likelihood of confusion with the Complainant’s trademark ALSTOM as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and thus generate revenue through the unauthorized use of the ALSTOM trademark. See section 3.1.4 of the WIPO Overview 3.0. In addition, the Respondent’s registration and use of the disputed domain name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its trademark ALSTOM. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”)
In the Panel’s view, the Complainant’s mark is famous and registration by the unrelated Respondent creates a presumption of bad faith in this case. On this subject, section 3.1.4 of the WIPO Overview 3.0 says:
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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
Daniel Peña
Sole Panelist
Date: February 23, 2022