The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Alstom Middle East, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (“.aeDA”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2019. On June 19, 2019, the Center transmitted by email to .aeDA a request for registrar verification in connection with the disputed domain name. On June 20, 2019 .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2019. The Respondent did not submit any Response. On July 22, 2019, the Center informed the Parties that it will proceed to Panel Appointment.
The Center appointed Assen Alexiev as panelist in this matter on August 6, 2019. 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 a French limited liability company created in 1928. It is a member of the ALSTOM Group - a global leader in transport infrastructures, employing 34,000 professionals in more than 60 countries. In 2018, the Complainant received orders worth EUR 10.5 billion and had a turnover of EUR 6 billion. The ALSTOM Group has been active in the United Arab Emirates since 1975. It has built 1.5 million kilometers of commercial service and is now working on the “Dubai Metro Route 2020” project, which is an enhancement of the existing Red Line.
The Complainant is the owner of the following trademark registrations for ALSTOM (the “ALSTOM trademark”):
- the International trademark ALSTOM with registration No. 706292, registered on August 28, 1998, for goods and services in International Classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;
- the European Union Trade Mark ALSTOM with registration No. 948729, registered on August 8, 2001, for goods and services in International Classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;
- the UAE Trademark ALSTOM with registration No. 41684, registered on August 5, 2003, for goods and services in International Class 9;
- the UAE Trademark ALSTOM with registration No. 41682, registered on August 5, 2003, for goods in International Class 12; and
- the UAE Trademark ALSTOM with registration No. 43612, registered on November 11, 2003, for services in International Class 37.
The Complainant is also the registrant of the domain name , registered on January 20, 1998, which hosts the ALSTOM group corporate website at “www.”.
The disputed domain name was registered on April 4, 2016. It redirects visitors to a parking webpage. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its ALSTOM trademark, which it wholly reproduces. Within the disputed domain name, the ALSTOM trademark is followed by the letters “me”, but remains directly recognizable because the letters “me” do not attract attention, and the ALSTOM trademark appears in first position of the disputed domain name. The letters “me” do not have any phonetical impact as for some consumers they may be seen as the initials of “Middle East”. Given the reputation of the ALSTOM trademark, the disputed domain name will be directly considered by the public as belonging to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The exchanges between the Complainant and the person in control of the email address indicated in the WhoIs records for the disputed domain name revealed that the latter person did not seem aware of the registration of the disputed domain name or did not want to admit that he proceeded with its registration without the Complainant’s consent. The Complainant explains that when it became aware of the registration of the disputed domain name, it found out that the registrant’s email address included in the WhoIs records for the disputed domain name belonged to an employee of ALSTOM Power in Dubai. On August 23, 2016, the Complainant sent an email to this person requesting him to voluntary transfer the disputed domain name to the Complainant. The person did not seem aware of this registration. In his email of January 2, 2017, he informed the Complainant that “he had no idea what” the Complainant was referring to. Then, on January 3, 2017, he contacted directly the Complainant to inform that he was “not aware of this domain name” and was not using it. After several exchanges between the Complainant and this person, the latter agreed to contact the Registrar for the disputed domain name in order to transfer it to the Complainant. On February 1, 2017, he informed the Complainant that the Registrar requested him to complete and send back a form to finalize the transfer of the disputed domain name. After some exchanges with him, the person suddenly informed the Complainant that he was going to quit ALSTOM Power in Dubai and requested the Complainant to contact one of his colleagues to finalize the transfer of the disputed domain name. This was done on February 24, 2017. After several reminders, his colleague sent an email to the first person requesting him to contact the Registrar to ask them to remove the disputed domain name, which was done on May 16, 2017. Since that date, the Complainant did not hear back nor from these persons or from the Registrar, in spite of several reminders.
The Complainant further points out that it has never authorized the Respondent to register the disputed domain name and that the Respondent has no trademark rights that correspond to it. According to the Complainant, the Respondent “Alstom Middle East” does not exist legally, and the disputed domain name has been inactive since its registration.
The Complainant contends that the disputed domain name has been registered or is being used in bad faith. The disputed domain name completely incorporates the Complainant’s ALSTOM trademark and was acquired long after the ALSTOM trademark became well known. In view of this, the Respondent must have been aware of the Complainant at the time when it registered the disputed domain name.
The Complainant points out that the person in control of the email address indicated in the WhoIs records for the disputed domain name recognized having been unaware of the registration of the disputed domain name or refused to admit that he registered it without the Complainant’s consent. The person was also not cooperative in its exchanges with the Complainant, did not take the necessary steps for the transfer of the disputed domain name to the Complainant, and then totally ceased to respond to the Complainant’s emails.
According to the Complainant, the contact details specified in the WhoIs records for the disputed domain name are incoherent and fake. The registrant’s email address is the work email address of an employee of ALSTOM Power in Dubai, although the disputed domain name was not registered in the name of ALSTOM Power but in the name of a different entity called “Alstom Middle East”, whose existence can be disputed, and has not been updated, although this employee has left ALSTOM Power. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 6 of the Policy, in this administrative proceeding, the Complainant must prove that each of the following three elements are present:
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 or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the ALSTOM trademark.
The Panel notes that a common practice has emerged under the Uniform Domain Name Dispute Resolution Policy (“UDRP”)1 to disregard in appropriate circumstances the country code Top-Level Domain (“ccTLD”) portion of domain names for the purposes of the comparison for identity or confusing similarity. In the view of this Panel, it is appropriate that this approach should also be applied under the Policy for the “.ae” ccTLDs. Therefore, the Panel will disregard the “.ae” ccTLD portion of the disputed domain name.
The relevant part of the disputed domain name is therefore the second-level domain portion “alstomme”. This section of the disputed domain name consists of the Complainant’s ALSTOM trademark and the letters “me”. The Panel accepts the Complainant’s argument that these letters may be regarded as initials for “Middle East” and that they have no phonetic relevance. In view of this, Internet users may regard the disputed domain name as a domain name of the Complainant dedicated to its Middle East operations.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in domain name dispute proceedings is on the complainant, prior panels acting under the UDRP and the .ae Policy 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.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to register the disputed domain name, and does not have rights in the ALSTOM trademark, and that the Respondent may be non-existent and in any case is not carrying out a bona fide use of the disputed domain name, which has remained inactive since its registration in 2016. According to the Complainant, the exchanges between the Complainant and the person in control of the email address indicated in the WhoIs records for the disputed domain name revealed that the latter person did not seem aware of the registration of the disputed domain name or did not want to admit that he proceeded with its registration without the Complainant’s consent. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. Rather, the person in control of the email address indicated in the WhoIs records for the disputed domain name has indicated that it has no knowledge of the disputed domain name and has expressed its readiness to transfer it to the Complainant (the reasons why this did not happen are no evident from the record).
The disputed domain name is confusingly similar to the ALSTOM trademark and as discussed above in section 6(A), Internet users may regard it as referring to an online location of the Complainant related to its operations in the Middle East. The disputed domain name resolves to an inactive website.
In view of all the above, the Panel has reached the conclusion that the case file contains no evidence that contradicts the prima facie case made by the Complainant. Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name. C. Registered or is Being Used in Bad Faith
This Panel accepts the Complainant’s submission that the Respondent must have been aware of the Complainant and of its ALSTOM trademark. This has not been denied by the Respondent and confirmed by the fact that the email address indicated in the WhoIs records for the disputed domain name belongs to an employee of an ALSTOM company.
The Respondent’s name indicated in the same WhoIs records is an entity called “Alstom Middle East”, but the Respondent has not submitted any evidence of its existence, which is questioned by the Complainant. This makes it likely that the contact details of the Respondent are indeed false, as contended by the Complainant.
In view of the above, the Panel accepts as more likely than not that the Respondent has chosen and registered the disputed domain name which is confusingly similar to the Complainant’s ALSTOM trademark to take advantage of the reputation of this trademark and has thus registered the disputed domain name in bad faith.
While the Policy does not require the Complainant to prove that the disputed domain name was registered and used in bad faith, passive holding does not prevent a finding of bad faith use of the disputed domain name. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled.
Assen Alexiev
Panelist
Date: August 15, 2019
1 While the Complaint is brought under the UAE Domain Name Dispute Resolution Policy for – UAE DRP, and not the UDRP, given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.
Full & Egal Universal Law Academy