WIPO Domain Name Decision D2024-2580 for alstomptyltd.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Alstom v. mark richards Case No. D2024-2580 1. The Parties Complainant is Alstom, France, represented by Lynde & Associes, France. Respondent is mark richards, United Kingdom. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2024. On June 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 26, 2024, 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 (GDPR MASKED) and contact information in the Complaint. The Center sent an email communication to Complainant on June 28, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 2024. 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 Respondent of the Complaint, and the proceedings commenced on July 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2024.
page 2 The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 31, 2024. 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 Complainant states that it is “a global leader in the world of transport infrastructures, employing 34.000 professionals in more than 60 countries”; that “[b]etween April 1st, 2023 and September 30, 2023, [Complainant’s] order intake reached 8.4 billion Euros” and its “sales also reached 8.4 billion Euros”; and that in the United Kingdom, Complainant has “built, or is building, around 40% of the UK mainline train fleet; as well as the entire fleets in service with London Underground.” Complainant states, and provides evidence to support, that it owns multiple registrations for trademarks that consist of ALSTOM, including United Kingdom Reg. No. 00900948729 (registered August 8, 2001); Canadian Reg. No. TMA562412 (registered May 23, 2002); and United States of America Reg. No. 4,236,513 (registered November 06, 2012). These registrations are referred to herein as the “ALSTOM Trademark”. The Disputed Domain Name was created on April 12, 2024. According to the Complaint, and as supported by an annex provided by Complainant, the Disputed Domain Name is used in connection with a “parking page” that provides links labeled “Planning en Ligne,” “Fournissuer Electricite et Gaz”, and “Enterprise dans le Cloud”. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that: - The Disputed Domain Name is confusingly similar to the ALSTOM Trademark because the Disputed Domain Name “wholly and identically reproduces” the ALSTOM Trademark and “associates the Complainant’s prior marks ALSTOM with the descriptive elements ‘PTY LTD’, which indicates a company legal form (‘PTY LTD’ is the short form for ‘proprietary limited’)”. - Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Complainant never authorized a third party to register this domain name”; “[t]o the best of the Complainant’s knowledge, the Respondent did not apply for or obtained any trademark registrations related to the signs ALSTOM or ALSTOM PTY LTD” and “is not commonly known under these signs either”; and the URL “www.alstomptyltd.com” redirects to a parking page, containing notably links related to energy (“Fournisseur Electricité et Gaz” meaning “Electricity and Gas Provider” in English language). - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[i]n 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 it registered the contested domain name”; the Disputed Domain Name was initially “registered in the name of ‘GDPR MASKED’”, and the later-identified underlying registrant details “are probably false” because “the street name is inconsistent with the postal code”; “the Respondent name has been used to register 1,346 domain names,” which means that “the Respondent is clearly engaged in a pattern of registering domain names and is probably a cybersquatter”; and “the disputed domain name redirects to a parking page, containing links related to the Complainant’s former activities (energy).”
page 3 B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ALSTOM Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the ALSTOM Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “alstomptyltd”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1. As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, as set forth in section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Here, the Disputed Domain Name incorporates the ALSTOM Trademark plus the text “ptyltd,” which Complainant notes is an abbreviation for “proprietary limited.” Accordingly, the Disputed Domain Name is confusingly similar to the ALSTOM Trademark. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted
page 4 Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that Respondent is using the Disputed Domain Name in connection with a monetized parking page that includes links related to the ALSTOM Trademark. Numerous panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the disputed domain name is associated with a monetized parking page that contains links for goods or services competing with the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. In addition, as set forth in section 3.1.4 of WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Here, given the scope of Complainant’s registrations for the ALSTOM Trademark, the size of its business associated with the trademark, and the age of its registrations - as well as previous decisions under the Policy referring to the ALSTOM Trademark as having a “strong reputation and notoriety in many countries,” ALSTOM v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO), WIPO Case No. D2010-1150; and “widely known in commerce throughout the world,” Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd, WIPO Case No. DCO2016-0030 - the Panel finds that the ALSTOM Trademark is famous or widely known. The Panel finds that Complainant has established the third element 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 be transferred to Complainant. /Douglas M. Isenberg/ Douglas M. Isenberg Sole Panelist Date: August 1, 2024


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