WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO)
Case No. D2010-1150
1. The Parties
Complainant is ALSTOM of Levallois, Perret, France, represented by Dreyfus & associés, France.
Respondent is Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO) of Stafford, Staffordshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <alstom-td.org> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2010. On July 13, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 13, 2010, Tucows Inc. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2010.
From July 21, 2010 to October 18, 2010, the proceedings were suspended at Complainant’s request in order to allow settlement negotiations between the Parties. On October 19, 2010, the proceedings were reinstituted at Complainant’s request. The Response due date was reset to November 3, 2010. On July 15, July 24, July 26 and August 19, 2010, the Center received informal communications from Respondent. However, no formal Response was received.
The Center appointed Eduardo Machado as the sole panelist in this matter on November 14, 2010. 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 French company incorporated under French law.
Complainant is a global leader in power generation and rail transport infrastructure. It serves the energy market through its activities in the field of power generation and the transport market through its activities in rail and marine.
Complainant is an international group with sales of EUR 23 billion, and employs 95,000 people in 70 countries, serving customers worldwide.
Complainant holds registrations of ALSTOM as trademark in several jurisdictions just as the Complainant holds several domain names consisting of or incorporating “alstom” including <alstom.com>, <alstom.us>, <alstom-power.com> and <poweralstom.com>.
Complainant’s trademarks include the following:
- ALSTOM + logo, International trademark n° 706292 registered on August 28, 1998, duly renewed and covering goods and services in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
- ALSTOM, International trademark n° 931242 registered on March 01, 2007 and covering goods and services in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42 and 45.
Complainant is also the owner of several domain names that reflect its trademarks, including <alstom.com>, <alstom.co.uk>, <alstom.info>, <alstom.biz> and <alstom.eu>.
Complainant sent Respondent a cease and desist letter on January 22, 2010. On January 27, 2010, Respondent replied, informing he had ceased use of Complainant’s marks on the website and asking for more time to transfer the domain name. More communications between the parties followed, however, Respondent did not transfer the disputed domain name.
The disputed domain name was registered on December 17, 2009.
5. Parties’ Contentions
A. Complainant
i). Identical or confusingly similar
Complainant argues that the disputed domain name entirely reproduces its trademark, with the mere adjunction of the element “td”.
Complainant argues that its trademark is highly distinctive and entirely reproduced in the domain name.
Complainant states that numerous decisions under the Policy have recognized that the addition of a generic term like “td” is insufficient to give distinctiveness to a disputed domain name from the complainant’s trademark. According to Complainant, the addition of a generic term could even increase the likelihood of confusion among Internet users.
At last, Complainant argues that the likelihood of confusion is increased by the well-known status of its trademarks.
ii). Rights or legitimate interests
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
Complainant states that Respondent is not affiliated with Complainant in any way and that Complainant has not authorized Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating those trademarks.
Furthermore, Complainant argues that Respondent has no prior rights or legitimate interests in the disputed domain name and has never used the term “Alstom” in any way before Complainant started its business.
Also, Complainant contends that Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, as it initially led the Internet users to a page displaying commercial links as well as Respondent contact details, which could lead Internet users to think the domain name was for sale.
Complainant also argues that Respondent himself acknowledged having no rights or legitimate interests when responding to Complainant’s cease and desist letter.
iii). Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered and has been used in bad faith.
Complainant asserts that Respondent knew or must have known Complainant at the time he registered the disputed domain name, as Complainant’s trademark is well-known worldwide. Besides, a simple search via Google or any other search engine using the keyword “alstom” would demonstrate that all results relate to Complainant’s products or news.
In addition, previous UDRP decisions have found that the strict reproduction of Complainant’s trademarks constitutes “an obvious intent to misleadingly divert the Internet consumers” (Alstom v. Stockmarket Domains,
WIPO Case No. D2008-1542).
Complainant has also asserted that Respondent has also registered other domain names which reproduce the ALSTOM mark, which clearly indicates Respondent’s bad faith and knowledge of Complainant’s trademark rights.
Complainant alleges that the disputed domain name was used in bad faith as it led the Internet users to a page displaying commercial links as well as Respondent’s contact details, which could lead Internet users to think the domain name was for sale.
B. Respondent
Respondent has not sent a formal response. Yet, he has send a communication to the Center on July 15, 2010.
In such e-mail, Respondent informed that the domain names <alstom-td.org>, <alstom-td.co.uk>, and <alstom-td.eu> were cancelled and returned to the market place on February 2, 2010.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that Complainant’s registered trademarks are distinctive in its field of activity and have reached strong reputation and notoriety in many countries. The Panel finds that the domain name at issue is confusingly similar with Complainant’s ALSTOM registered trademarks and company name. The only difference between Complainant’s registered trademark and the disputed domain names is the addition of the generic term “td”, which does not give any distinctiveness to the disputed domain name.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,
WIPO Case No. D2008-0090 (WIPO March 10, 2008) (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that this similarity is likely to increase the possibility of confusion and mislead Internet users who search for Complainant’s services and divert them to the domain name at issue.
The Panel, therefore, finds that Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name. Taking into consideration that Respondent has failed to respond to the Complaint, the Panel will analyze the facts and circumstances brought by Complainant to verify if Respondent lacks rights or legitimates interests in the disputed domain name.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden shifts to Respondent to show that it does have rights or legitimates interests in the domain name in dispute, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant informs that the disputed domain name led Internet users to a page displaying commercial links as well as Respondent contact details, which could lead Internet users to think the domain name was for sale. The Panel finds that this is not a bona fide offering of goods and services.
Thus, in view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Respondent has intentionally registered the domain name at issue which totally reproduces Complainant’s well-known trademark ALSTOM. By the time the disputed domain name was registered, it is highly unlikely that the Respondent would have been unaware of the Complainant’s pre-existing rights on its trademark and company name ALSTOM when registering the disputed domain name.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirm that it had long been using its ALSTOM registered trademark when the disputed domain name was registered. Moreover, the Complainant submitted evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark when he registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “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.”, Policy paragraph 4(b)(iv). Respondent used Complainant’s well-known trademark to attract users to Respondent’s website that displayed commercial links as well as Respondent’s contact details. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of these facts, the Panel finds that Complainant has established the third element of Paragraph 4(a) 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, <alstom-td.org> be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: November 26, 2010
