WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Flor Walden

Case No. D2020-0127

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Flor Walden, France.

2. The Domain Name and Registrar

The disputed domain name <alstom-rail.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 23, 2020 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 January 27, 2020.

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 February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2020

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on March 9, 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.

4. Factual Background

The Complainant is a French company created in 1928.

The Complainant is a global leader in the world of transport infrastructures, and employs 36,600 professionals in more than 60 countries.

Its activity is extremely well-known worldwide.

In 2018-2019, the Complainant recorded a commercial performance of EUR 12.1 billion.

The Complainant is the owner of many trademarks consisting or including the word “alstom”, such as:

- International Trademark Registration 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 Registration No. 706360 width="72" height="15" src="../../clip_image004_0064.jpg" alt="ALSTOM"> 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;
- Panama Trademark Registration No. 105039 01 ALSTOM registered on January 26, 2000 in class 7;
- Panama Trademark Registration No. 105038 01 ALSTOM registered on January 26, 2000 in class 9.

The Complainant operates the website “www.alstom.com”, to which the domain name <alstom.com> redirects.

The domain name <alstom.com> was registered on January 20, 1998 in the name of the Complainant.

The disputed domain name was registered on May 31, 2019. The name of the registrant was not initially disclosed on the WhoIs database.

The available WhoIs privacy service data indicated an address in Panama.

The disputed domain name resolves either to a parking page proposing commercial links in the transport sector and, in particular the trains and railways sector, or to the Complainant’s website “www.alstom.com”.

The Complainant sent a cease and desist letter on August 21, 2019 to the registrant using the email address disclosed on the WhoIs extract, and sent a copy of this letter to the registrar Namecheap Inc.

Reminders were sent on September 6, 19, 2019 and November 20, 2019.

The registrar answered on September 8, 2019 refusing to suspend the disputed domain name and to disclose the Respondent’s contact information.

However the registrar indicated that it has forwarded the letter to the registrant of the disputed domain name.

The letters remaining unanswered, the Complainant filed a UDRP complaint on January 17, 2020.

The Registrar disclosed the identity of the registrant as being Flor Walden, domiciled in Besançon, France.

The searches conducted by the Complainant on the Internet did not enable to identify that someone called Flor Walden is domiciled at the provided address.

Furthermore, the phone number disclosed by the Registrar seems to correspond to a real estate agency located at Oléron, which is around 600 kilometers far away from Besançon.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces wholly and identically the ALSTOM trademarks on which the Complainant has rights.

The Complainant submits that the term “Alstom” has no meaning other than the name of its company, but that the term “rail” separated from the term “Alstom” by a dash, reinforces on the contrary the likelihood of confusion with the Complainant’s trademarks as it is a generic term referring to the Complainant’s field of activity.

It contends that given to its worldwide reputation, the disputed domain name will be directly considered by the public as belonging to the Complainant, and therefore mislead the public.

The Complainant also explains that this similarity is not affected by the generic Top-Level Domain (“gTLD”) “.com”, since previous UDRP decisions have already held that the addition of the gTLD “.com” is not to be taken into consideration when examining the identity or similarity between the relevant trademarks and disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It asserts that the Respondent is not affiliated with the Complainant, nor authorized, licensed or permitted to register or use its ALSTOM trademarks.

The Respondent cannot be commonly known under the name ALSTOM, since the name has no other meaning than the name of the Complainant’s company, it is neither a first name nor a last name, the Respondent is not an employee of the Complainant and it does not exist another company named ALSTOM.

The Respondent does not own trademarks including the name ALSTOM.

The redirection of the disputed domain name either to a parking page, or to the Complainant’s website “www.alstom.com” is not a bona fide offering of goods or services. The Respondent knew of and targeted the Complainant.

The disputed domain name was registered and is being used in bad faith, considering the fact that it completely incorporates the Complainant’s trademarks while these trademarks became well-known long before. Therefore, the Respondent was definitely aware of the Complainant’s trademarks.

It relies on prior Panel’s decisions recognizing the well-known character of the ALSTOM trademark and ordering the transfer of the disputed domain names <alstom-td.org> (Alstom v. Daniel Bailey, WIPO Case No. D2010-1150) and <gec-alsthom.co>, <gec-alstom.co> and <ge-alstom.co> (Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and Distribution Engineering, WIPO Case No. DCO2016-0032).

Further, the Complainant asserts that the term “rail” refers directly to the Complainant’s field of activity, which demonstrates that the Respondent was fully aware of the Complainant’s activity, aiming at taking advantage of its notoriety.

Moreover, given the fact that the Respondent has been using the disputed domain name either to redirect the Internet consumers to a parking page offering commercial links in relation with the Complainant field of activity, or to resolve to the Complainant official website, the Complainant considers that the Respondent is aiming to benefit from its notoriety by creating a likelihood of confusion. This use is not in connection with a bona fide offering of goods or services.

By redirecting to the Complainant’s official website, the Respondent reveals its awareness of the Complainant existence and reputation.

The Complainant reveals that the Respondent has already been involved in 2019 in other UDRP complaints concerning domain names that incorporated the trademarks of notorious companies (Equinor ASA v. Flor Walden, WIPO Case No. D2019-2659 and Arcelormittal (SA) v. Flor Walden, WIPO Case No. DPW2019-0002). These decisions recognized the bad faith of the Respondent. The same litigious scheme was implemented in the present case.

The Complainant also suspects the Respondent to use the disputed domain name to send fraudulent emails since MX-records appears to be set up for the disputed domain name.

As here above explained, the Complainant found out that the information provided by the Respondent is not consistent since its address, its phone number and its name are not related. The Complainant concludes that the disputed domain name has been registered under a fake name, which is another sign of bad faith.

Lastly, the Complainant contends that the fact that the Respondent never answered to its cease and desist letters and to its reminders, demonstrates once more its bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted evidence of its prior registered ALSTOM trademarks which are protected in numerous countries.

The Complainant’s ALSTOM trademarks are well-known internationally for transports infrastructures products and services.

The disputed domain name entirely incorporates the Complainant’s ALSTOM well-known trademark. The addition of the generic term “Rail” does not prevent a finding of confusing similarity.

The gTLD “.com” is a standard registration requirement, and may be disregarded when determining identity or confusing similarity under the first element.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ALSTOM trademark.

The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.

The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name.

The Respondent is not known under the ALSTOM name, nor employed by another company named ALSTOM and has not been licensed, authorized or permitted to use the well-known ALSTOM trademark or to register the disputed domain name.

The disputed domain name redirects the Internet users either to a parking page offering commercial links in relation with the Complainant’s activity.

This use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

Resolving to such a webpage aims at confusing the Internet users and is made for the sole purpose of commercial gain.

Further, even the claimed use of the disputed domain name to redirect users to the Complainant’s website at “www.alstom.com” would not arise rights or legitimate interests.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain names, which the Respondent has not rebutted.

The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.”

Given the widespread reputation of the ALSTOM trademark and its high degree of recognition long before the disputed domain name was registered, the Respondent, who is domiciled in France, was well aware of the Complainant’s rights in the ALSTOM trademark, when it registered the disputed domain name.

Relying on the two prior similar cases concerning the Respondent, the Panel finds that the Respondent has engaged in a pattern of such conduct

Furthermore, the fact that the registration was apparently made under a fake name, is another inference of the Respondent’s bad faith.

Given the use of the disputed domain name that is made, consisting in resolving to a parking page redirecting to websites dedicated to rail, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks ALSTOM as to the sponsorship, affiliation, or endorsement of the Respondent’s website.

Therefore, the Panel finds that the disputed domain name was used in bad faith.

The Panel further notes that even the claimed use of the disputed domain name to redirect users to the Complainant’s website at “www.alstom.com” would not be a bona fide use.

On the basis of the evidence presented, the Panel finds that Complainant has established an unrebutted prima facie case and that Respondent registered and is using the disputed domain name in bad faith.

For all the above reasons, the Panel is of the opinion that the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent.

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 disputed domain name <alstom-rail.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: March 20, 2020