The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Victor Marin, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On December 3, 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 December 10, 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 13, 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 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 26, 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 BackgroundAccording to the Complainant’s undisputed allegations, it is a French company incorporated in 1928 and a global leader for power generation, power transmission, and rail infrastructure. It currently employs 36,000 professionals in more than 60 countries, 2,000 of these in the United States of America (“US”).
The disputed domain name was registered on October 4, 2005.
The Complaint is based, amongst others, on the following trademarks registrations for the term ALSTOM:
- US Registration No. 4570546, registered on July 22, 2014 in classes 7, 9, 12, 35, 37, 39, and 42;
- International Registration No. 706292, 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 and designating a multitude of countries;
It results from the undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a commercial website that purports to advertise consultancy services in the fields of international trade compliance, facilitation, and security. In addition, the Complainant undisputedly contends that the domain name has been used at least one time to send a phishing email to one of the Complainant’s customers pretending to be the Complainant and making reference to an existing larger invoice previously sent by the Complainant and requesting payment of that original invoice to a different bank account (probably the Respondent’s account) than the Complainant’s account indicated on the original invoice. The Complainant’s client informed the Complainant on this correspondence and the attempted fraud failed.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant contends that the disputed domain name is confusingly similar to its trademark ALSTOM. The element “alston” is confusingly similar to the trademark ALSTOM, particularly when written in lowercase since the letter “n” is visually barely distinguishable from the letter “m”. Furthermore, the element “group” will be directly perceived by the Internet users as referring to the Complainant’s group of companies.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant has never authorized, licensed, or otherwise permitted the Respondent to register and/or use the disputed domain name. Furthermore, the Respondent has not used or prepared to use the domain name in connection with a bona fide offering of goods or services. In fact, using the disputed domain name to engage in fraud by impersonating the Complainant and sending phishing emails does not constitute a legitimate noncommercial or fair use of the disputed domain name.
Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith. It is obvious to the Complainant that the Respondent must have been aware of the Complainant and its trademarks ALSTOM. Furthermore, use of the disputed domain name to impersonate the Complainant, and creating false emails pretending that they are sent by the Complainant for fraudulent purposes, shows that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. In addition, the disputed domain name is a clear case of deliberate typosquatting. Finally, the Respondent has provided contact information that appears to be, at the very least partially, false.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “decide a complaint 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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, a complainant must establish rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of several trademarks for the term ALSTOM.
It is acknowledged amongst the UDRP panels that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, with further references).
The Panel notes that the disputed domain name substitutes the letter “m” in the trademark ALSTOM with the letter “n”, which is a very similar-appearing character in the sense of the above doctrine and adjacent keyboard letter. In the Panel’s view, this single-letter difference in the element “alston” does not avoid a finding of confusing similarity between this element and the Complainant’s trademark, in particular regarding its appearance and pronunciation (see, e.g., Accenture Global Services Limited v. Tulip Trading Company,WIPO Case No. D2015-1520 for a similar case where a “t” had been substituted by an “r”).
Furthermore, the addition of the term “group” to the confusingly similar element “alston” does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.9).
In the light of the above, the Panel concludes that the relevant mark ALSTOM remains clearly recognizable within the disputed domain name which contains sufficiently recognizable aspects of that trademark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complainant’s uncontested evidence the disputed domain name resolves to a commercial website that purports to advertise consultancy services in different fields. In addition, the Complainant has undisputedly contended that the disputed domain name has also been used at least one time for scam activities targeting one of the Complainant’s customers by pretending to be an employee of the Complainant and requesting payment of one of the Complainant’s original invoices to a bank account which is not the Complainant’s bank account indicated on the original invoice. UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13.1, with further references).
In any case, the Panel holds that such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use capitalizes on the reputation and goodwill of the Complainant’s trademarks and is likely to mislead Internet users (see, e.g., TELUS Corporation v. Fortefusion Fortefusion, Wordcounts,WIPO Case No. D2021-0787).
In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. As outlined above, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the ALSTOM-trademarks for registering the disputed domain name, which is confusingly similar.
Furthermore, the Panel notes that there is no evidence in the record showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the disputed domain name is being used for a commercial website, so that a noncommercial use thereof is excluded from the outset. In addition, use of the disputed domain name for fraudulent emails excludes any fair use of the disputed domain name from the outset.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
It is the view of this Panel that the Respondent has indeed registered the disputed domain name and is using it in bad faith.
As explained above, it results from the Complainant’s documented allegations that the disputed domain name currently resolves to a commercial website that purports to advertise consultancy services. Taking into the account the broader circumstances of the case, the Panel finds it more likely than not that the Respondent intended 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. In addition, according to the Complainant’s uncontested allegations, the domain name has been used to send a phishing email to one of the Complainant’s customers pretending to be the Complainant and requesting payment to an account which is not the Complainant’s.
The Panel notes the approach taken by previous UDRP panels finding that use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve a respondent’s use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by a complainant’s actual or prospective customers (see WIPO Overview 3.0, section 3.4). As explained above under section 6.B., use of the disputed domain name for an illegal email scam in the name of the Complainant demonstrates that the Respondent not only knew of the Complainant, its business, and marks, but also attempted to pass itself off as the Complainant in order to obtain undue payment. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s trademarks and products. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark ALSTOM (almost) identically when it registered the disputed domain name. Registration of a domain name which contains a third party’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see, e.g.,TELUS Corporation v. Fortefusion Fortefusion, Wordcounts,WIPO Case No. D2021-0787; Charlotte Tilbury TM Limited v. Domains By Proxy, LLC / Qiangdong Liu, 365rw.com.ltd,WIPO Case No. D2020-0408).
The finding of bad faith registration and use is supported by the following further circumstances resulting from the case file:
(i) the Respondent’s failure to submit a response;
(ii) the Respondent’s failure to provide any evidence of actual or contemplated good-faith use; and
(iii) the implausibility of any good faith use to which the disputed domain name may be put.
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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
Tobias Malte Müller
Sole Panelist
Date: February 9, 2022