The Complainant is Alstom, Perret, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Domain Investments LLC, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alstomv2.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2008. On February 28, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 28, 2008, Moniker Online Services, LLC 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2008.
The Center appointed Amund Grimstad as the sole panelist in this matter on April 17, 2008. 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 is a global leader in power generation and rail transport infrastructure. They employ 65,000 people in 70 countries, also in the United States of America (“US”), utilizing ALSTOM as the distinctive part of its trade name.
Complainant owns numerous trademarks incorporating the word “Alstom” including, but not limited to:
- U.S trademark ALSTOM, No. 2726163 registered on June 17, 2003, in classes 1, 6, 7, 9, 11, 12, 13, 16, 17, 19, 21, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
- U.S trademark MORE AND MORE PEOPLE NEED ALSTOM, n°2768611 registered on September 30, 2003 in classes 6, 7, 9, 11, 12, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42. The change of address is in process of being registered.
- U.S trademark ALSTOM, No. 2773410 registered on October 14, 2003, in classes 7, 9, 11, 12, 37, 39, 40, 41, 42, 43, 45.
- U.S trademark ALSTOM, No. 2819079 registered on March 2, 2004, in classes 7, 9, 11, 12, 37, 39, 40, 41, 42, 43 and 45.
- U.S trademark ALSTOM, No. 2898433 registered on November 2, 2004, in classes 1, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
It also owns numerous other national trademarks and international trademarks:
- International trademark ALSTOM, 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 and 42;
- International trademark ALSTOM, No. 706360 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 and 42;
- International trademark MORE AND MORE PEOPLE NEED ALSTOM, No. 757684 registered on October 31, 2000 in classes 6, 7, 9, 11 12, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42.
Nothing is known about the Respondent except for information provided by the Complainant. According to this information, Respondent operates the web site to which the disputed Domain Name resolves at “www.alstomv2.com”.
On August 21, 2007 and August 23, 2007, the Complainant sent a cease and desist letter by email and registered mail to the Respondent and requested the Respondent to transfer the disputed domain name. No reply was received despite Complainant’s reminder.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed Domain Name <alstomv2.com> is confusingly similar to Complainant’s trademark ALSTOM and that the mere adjunction of the element “v2” does not detract from such confusion. Complaint further contends that Respondent has no rights or legitimate interests in respect of the disputed Domain Name, and that Respondent has registered and used the Domain Name in bad faith.
Complainant requests that the disputed Domain Name be transferred to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states in respect of a Domain Name holder:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as mentioned above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The disputed Domain Name <alstomv2.com> as registered by the Respondent embodies and substantially comprises the Complainant’s well-known registered trademark ALSTOM. Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes. The suffix “v2” does nothing to distinguish the disputed Domain Name from the trademark but increases the scope for confusion. The Panel finds for the Complainant in terms of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must satisfy the Panel that the Respondent has no rights or legitimate interests in the disputed Domain Name. The Complainant states and has provided documentary evidence that it has registered and used the word trademark ALSTOM in various countries of the world. Registration of the trademark ALSTOM extends specifically to the US, being the domicile recorded by the Respondent. The Complainant’s evidence is that it has not licensed the trademark to the Respondent nor given the Respondent any right to use it. Complainant states that the Respondent has no legitimate interest in registering or using the Domain Name.
The Respondent has neither denied the Complainant’s claims nor availed itself of any defence, including those listed under Paragraph 4(c) of the Policy. Respondent does not claim to have used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or to have been commonly known by the Domain Name; or to have made a legitimate noncommercial or fair use of the Domain Name. Any actual use of the Domain Name for the offering of goods and services cannot legitimise an otherwise illegitimate use. Whilst Respondent is not obliged to reply and the Complainant is still faced with the task of proving a negative, the Panel is mindful of the principle adduced in Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, to the effect that “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”. The Panel finds for the Complainant in terms of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In accordance with Paragraph 4(a)(iii) of the Policy the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, may be evidence of the registration and use of a Domain Name in bad faith. Especially pertinent to the present case is circumstance (iv), as follows:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
According to the Complainant’s evidence, the Respondent’s choice of Domain Name is designed to trap users who legitimately seek the trademark ALSTOM. The Panel finds the totality of this conduct likely to create confusion with the Complainant’s trademark, to imply Complainant’s sponsorship, affiliation, or endorsement of products promoted on the Respondent’s web site, and clearly to be within the scope of Paragraph 4(b)(iv) of the Policy.
The Complainant’s trademark ALSTOM as appropriated by the Respondent has a strong reputation and is recognised internationally. The Panel finds it implausible that Respondent was unaware of Complainant’s trademark. Neither the Complainant nor its trademark has any conceivable connection with Respondent’s name or activities. The registration of a well-known trademark of which the Respondent must reasonably have been aware constitutes bad faith, see e.g. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163. The Panel further notes that the Respondent has apparently been the subject of transfer orders in at least two previous UDRP decisions in which the disputed domain names contained a widely known mark. See e.g. Deutsche Telekom AG v. Domain Investments LLC/Marlon Phillips, WIPO Case No. D2007-0919 and Deutsche Telekom AG v. Domain Investments LLC, WIPO Case No. D2007-1916. Respondent’s failure to acknowledge or reply to Complainant’s cease and desist letter compounds the bad faith, see e.g. Ebay, Inc.v.Ebay4sex.com and Tony Caranci,
WIPO Case No. D2000-1632. The Panel finds bad faith registration and use proven in terms of Paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <alstomv2.com> be transferred to the Complainant.
Amund Grimstad Sole Panelist
Dated: April 28, 2008
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