WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom S.A. v. Wang Jing

Case No. D2019-3020

1. The Parties

The Complainant is Alstom S.A., France, represented by Lynde & Associes, France.

The Respondent is Wang Jing, China.

2. The Domain Name and Registrar

The disputed domain name, <transportalstom.com> (the “Domain Name”), is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 12, 2019.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 23, 2020. 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.

The original Complaint named “c/o WHOIStrustee.com Limited, Registrant of transportalstom.com” as the Respondent. The identity of the underlying registrant was not unmasked until disclosed by the Registrar on Registrar verification. This prompted the filing of the amendment to the Complaint.

4. Factual Background

The Complainant is a company founded in France in 1928. It operates internationally in the field of transport infrastructure. It identifies its “commercial performance” for the fiscal year 2018/2019 in terms of EUR 12.1 billion. The Panel accepts as fact that the Complainant has a very substantial international business. The Complainant operates under its ALSTOM trade mark, which is the subject of many trade mark registrations. For present purposes it is only necessary to mention one of them, namely:

European Union Trade Mark Registration No. 000948729 ALSTOM filed on September 30, 1998 and registered on August 8, 2001 for a wide variety of goods and services in sixteen different classes.

The Complainant is also the registrant of several domain names featuring its ALSTOM trade mark including <alstomtransport.com> registered on September 26, 2001, which redirects to its website connected to its domain name, <alstom.com>, registered on January 20, 1998. The <alstomtransport.com> domain name reflects the name of one of the Complainant’s subsidiaries, Alstom Transport SA, founded on July 29, 1993.

The Domain Name was registered on October 10, 2019 and at the date of the Complaint appears not to have been connected to an operational website, simply a webpage informing the visitor that the site is inaccessible. However, it is now connected to a Chinese language website, which from the images on the site appears to be an adult entertainment website.

On November 27, 2019 the Complainant’s representative sent cease and desist letters to the Registrar and to the entity in whose name the Domain Name was originally registered (see section 3 above) seeking variously the name of the underlying registrant and suspension of the Domain Name. The only reply received in response to those letters and subsequent communications from the Complainant’s representative was a refusal on the part of the Registrar to suspend the Domain Name and a recommendation that the Complainant launch a complaint under the Policy.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s ALSTOM trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the 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.

B. Identical or Confusingly Similar

The Domain Name comprises the word “transport”, the name “Alstom”, and the “.com” generic Top-Level Domain “gTLD” identifier. For the purposes of this assessment it is permissible for panels to ignore the gTLD identifier where, as here, it serves no purpose beyond the technical one. Thus “transportalstom” is to be compared with ALSTOM “transport” being a descriptive term (descriptive, incidentally, of the Complainant’s field of operations), the Complainant’s ALSTOM trade mark is readily recognizable in the Domain Name.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

In the view of the Panel, the Domain Name, comprising as it does the Complainant’s trade mark and a description of the Complainant’s field of operations, was clearly intended as a reference to the Complainant. The fact that it is now connected to an adult entertainment site removes any possibility that the Respondent might have a right or legitimate interest in respect of the Domain Name. The absence of a Response simply confirms the Panel in its view that the Respondent has no answer to the Complainant’s contentions.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

When the Complaint was filed the Domain Name was connected to an “inaccessible” webpage. The Complainant’s contentions under this head were limited to contending that the nature of the Domain Name is such that the Respondent must have been aware of the existence of the Complainant when registering the Domain Name, that the Respondent had no connection of any kind with the Complainant, that the Respondent has made no use of the Domain Name, that registration of the Domain Name prevents the Complainant from registering the name as a domain name, that the address of the Respondent provided to the Registrar may well be a false address and that the Respondent failed to respond to the Complainant’s representative’s cease and desist letter.

The fact that the Domain Name is now being used to connect to an adult entertainment website simplifies the issue. The Panel accepts that the Respondent must have been aware of the existence of the Complainant when registering the Domain Name. The nature of the Domain Name cannot be anything other an intentional reference to the Complainant. The use to which the Domain Name is being put is clearly a commercial use and one that has no association with the Complainant and its field of operation.

The Panel finds that the Respondent registered the Domain Name with the intention of attracting Internet users to his website on the back of the reputation and goodwill of the Complainant and for his own commercial gain.

The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, <transportalstom.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 24, 2020