Complainants are Alstom S.A. of Levallois-Perret, France and General Electric Company of New York, United States of America, represented by Lynde & Associés, France.
Respondent is Sichuan Electricity Transmission and Distribution Engineering Co., Ltd of Chengdu, China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 10, 2016. Respondent sent an email communication to the Center on October 14, 2016.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on October 17, 2016. 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 Alstom is a company incorporated in France. Its former corporate name was Alsthom. Complainant Alstom is a global leader providing equipment and services for power generation and rail transportation.
According to the evidence submitted by Complainants, Complainant Alstom has a large number of trademark registrations for ALSTOM and ALSTHOM, including:
- International trademark No. 706292 for ALSTOM, date of registration August 28, 1998, also applicable in China;
- European Union trademark ALSTHOM No. 011179471, filing date September 11, 2012, registration date February 11, 2013.
In addition, Complainant Alstom operates numerous websites containing the ALSTOM and ALSTHOM marks.
Complainant General Electric Company ("GEC" or "GE") is a company incorporated in the United States of America. Complainant GEC is multinational conglomerate corporation.
According to the evidence submitted by Complainants, Complainant GEC has a large number of trademark registrations for GEC and GE, including:
- International trademark No. 910465 for GE, date of registration November 9, 2005, also applicable in China;
- Chinese trademark registrations No. 556960 and No. 547476 for GEC of April 9, 1990, and No. 762857 for GEC of November 29, 1993.
Complainants have been engaged in a commercial relationship with one another since 1928 and entered into a joint venture agreement in 1989 in connection with energy and transport services. These joint venture activities are presented under a website using the domain name .
The Domain Name was registered on March 22, 2016.
The trademark registrations of Complainants were issued prior to the registration of the Domain Name. 5. Preliminary Procedural Issue: Consolidation of Complaints
This case concerns two affiliated Complainants who each have a number of trademark registrations. Complainants request that the Complaint filed by the two Complainants against the same Respondent be consolidated. The preliminary issue is therefore whether Complainants are entitled to bring a consolidated Complaint against Respondent, or whether it is necessary for Complainants to bring individual Complaints.
According to the WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16, consolidation is in order in situations in which complainants have a common grievance against respondent, or respondent has engaged in a conduct that has effected complainants' individual rights in a similar fashion, and it would be equitable and procedurally efficient to permit the consolidation.
In view of the fact that Complainants are affiliated and have a common grievance against Respondent, the Panel decides that consolidation is in order, also in view of the fact that it is equitable and procedurally efficient to allow consolidation. Hereinafter Complainants are also referred to as "Complainant". 6. Parties' Contentions A. Complainant
According to Complainant the Domain Name is confusingly similar to the ALSTHOM, GE and GEC trademarks as it consists of the combination of the marks of Complainants.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the Domain Name. According to Complainant, there is no website under the Domain Name. Complainant submits that Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name. Respondent is not related in any way with Complainant.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent had knowledge of the well-known trademarks of Complainant. Complainant asserts that Respondent gave false and incomplete contact information to the Registrar when it registered the Domain Name. The cease-and-desist letter sent on behalf of Complainant did not arrive as the postal address provided by Respondent does not exist in China.
Finally, Complainant submits that Respondent is trying to block domain names using the combination of the GEC/GE and ALSTHOM/ALSTOM trademarks. According to Complainant, it is very likely that Respondent is also the registrant or is at least related to the registration of other domain names using the trademarks of Complainants. In particular, Complainant is aware of the existence of the domain names , and registered by Sichuan Shanghai Electric Power T&D Engineering Co., which name is almost identical to the name of Respondent; see Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd,WIPO Case No. DCO2016-0030 (, and ). In addition, the name of the administrative, billing and technical contact for the Domain Name, "Ming Zheng", is almost identical to the name "Min Zheng" appearing within the registrant's email address in Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd,WIPO Case No. DCO2016-0030. B. Respondent
Respondent did not reply to Complainant's contentions. After Notification of Respondent Default of October 10, 2016, the Center received an informal email communication from Respondent on October 14, 2016 with the following text: "Could you please postpone the deadline of Commencement of Administrative Proceeding." The Center informed the Respondent that as the specified due date for submission of a Response has passed, and the Rules make no express provision for the filing of materials by either party at this stage of the proceedings except as may be specifically requested by the Panel, the Center will bring the Respondent's communication and a late response (if submitted) to the Panel's attention, and that it will be at the discretion of the Panel to consider it. No further communications were received from the Respondent. 7. Discussion and Findings
Paragraph 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 that a complainant proves each of the following three elements to obtain an order that the domain name should be transferred or cancelled:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the opinion of the Panel, the Domain Name is confusingly similar to the trademarks of Complainants as the Domain Name consists of the entirety of the GEC/GE and ALSTHOM trademarks owned by Complainants. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark or the principal part thereof in its entirety.
The Domain Name also includes the country code Top-Level Domain ("ccTLD") ".co". In determining whether a domain name is identical or confusingly similar to a complainant's mark, UDRP panels have typically disregarded the generic Top-Level Domain ("gTLD") or the ccTLD. The Domain Name in this proceeding includes the ccTLD assigned to Colombia, which is not limited to residents of that country and has been advertised to Internet users in other countries, as indicated on the website of the registry operator. This ccTLD does not itself form part of the relevant mark, is not materially distinctive and does not avoid confusing similarity between the Domain Name and the relevant marks.
The trademarks of Complainants predate by many years the registration date of the Domain Name. The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant's trademarks. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, the Domain Name resolves to an inactive website. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name.
Respondent is also not commonly known by the Domain Name nor has it acquired any trademark rights.
No formal Response to the Complaint was filed and Respondent has not rebutted Complainant's prima facie case.
Under these circumstances, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The well-known trademarks of Complainant have been existing for a long time. Respondent knew or should have known that the Domain Name included Complainant's trademarks. The Panel notes that there is currently no website at the Domain Name. However, such passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel also notes that Respondent's undeveloped use of the website at the Domain Name which incorporates Complainant's trademarks in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location.
The Panel also takes into account the undisputed assertion by Complainant that Respondent at the time of registration used a postal address which does not exist in China.
The Panel finally notes the undisputed contention of Complainant that it appears that Respondent or a related company or individual registered similar domain names incorporating the trademarks of Complainants in the ".co" domain name space which suggests a pattern of conduct in registering domain names in order to prevent Complainant from reflecting its marks in a corresponding domain name constituting bad faith registration and use in accordance with the Policy, paragraph 4(b)(ii); see Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd,WIPO Case No. DCO2016‑0030 (, and ). 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to Complainant Alstom S.A.
Dinant T. L. Oosterbaan
Sole Panelist
Date: October 26, 2016
Full & Egal Universal Law Academy