Westmore · UDRP DecisionAlstomtechnology.com
The Panel ordered transfer of <alstomtechnology.com>. It found the domain confusingly similar to ALSTOM because it incorporated the widely known mark in full and the generic term “technology” did not prevent confusing similarity. The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad faith registration and use were found from the Respondent’s awareness of the ALSTOM mark, the domain’s sale-only webpage, and the Respondent’s EUR 2,500 sale request after receiving a cease-and-desist letter.
The timeline behind alstomtechnology.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
This decision illustrates how a domain combining a widely known mark with a generic term associated with a field of activity can satisfy the first element, and how passive holding may support bad faith when accompanied by a sale-only page, a substantial sale request, and no credible alternative explanation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ALSTOM v. Ahmed El Shaweesh, DnArab.com Case No. D2019-1796 1. The Parties The Complainant is ALSTOM, France, represented by Lynde & Associes, France. The Respondent is Ahmed El Shaweesh, DnArab.com, Palestine. 2. The Domain Name and Registrar The disputed domain name <alstomtechnology.com> is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2019, the Registrar 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” 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 July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2019. The Center appointed Gérald Page as the sole panelist in this matter on August 30, 2019. 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 Alstom is a French limited company created in 1928 and which is registered under French law, incorporated with the French Trade and Companies Register of Nanterre. Alstom is a global leader in the world of transport infrastructures. Alstom operates worldwide, also in Palestine, and plays a significant role in the manufacture and overhaul of rolling stock. Alstom holds registrations that comprise the world “Alstom” in numerous jurisdictions around the world, including the following trademark registrations: - International Trademark ALSTOM Registration No. 706292 filed on August 28, 1998, duly renewed, 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 designating a great number of countries; - International Trademark ALSTOM Registration No. 7063600 filed on August 28, 1998, for 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 designating a great number of countries; - US Trademark ALSTOM Registration No. 85507371 filed on January 3, 2012 for goods and services in classes 1, 6, 7, 8, 9, 12, 13, 17, 19 and 24. - US Trademark ALSTOM Registration No. 85507365 registered on January 3, 2012 for goods and services in classes 1, 6, 7, 8, 9, 12, 13, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42 and 45. Alstom is also the registrant and user of numerous domain names under various generic and country code TLDs that comprise its trademark, such as <alstom.com> registered since January 20, 1998 and redirecting to the ALSTOM’s group’s website “www.alstom.com”. The following domain names are redirected to ALSTOM’s group website: - <alsthom.com> registered since June 20, 2000; - <alstom.cn> registered since July 7, 2004; - <alsthom.cn> registered since May 24, 2006; - <alstom.co.uk> registered since June 15, 1998; - <alstom.org> registered since April 1, 2000; - <alstom.net> registered since April 1, 2000; - <alstom.info> registered since July 31, 2001; - <alstom.biz> registered since November 19, 2001; - <alstom.mobi> registered since June 12, 2006; - <alstomcorp.com> registered since October 19, 2012; - <Alstom.tv> registered since August 20, 2013. Finally, ALSTOM owns a great number of companies and trade name rights on the denomination “ALSTOM”, such as: ASTOM Transport technology, ALSTOM Power, ALSTOM Hydro, ALSTOM Grid, ALSTOM Holdings, ALSTOM Power Turbomachines, ALSTOM Management, ALSTOM Wind, etc. The Respondent registered the disputed domain name <alstomtechnology.com> on February 23, 2019 (“hereinafter the “Domain Name”). The Domain Name is not used as an active website. On the contrary, the corresponding website is directed to a page that offers the Domain Name for sale. 5. Parties’ Contentions A. Complainant The Complainant contends, inter alia , that the three requisites of paragraph 4(a) of the Policy are met: (i) The Complainant claims that the Domain Name <alstomtechnology.com> is confusingly similar to their numerous trademarks ALSTOM, in which the Complainant has rights and evidences its numerous trademarks and several domain names that it owns. The Complainant explains that the Domain Name reproduces wholly and identically the word “ALSTOM” which is part of its prior trademarks. The Complainant states that the Domain Name is accompanied by the term “technology” which is not likely to give another meaning to the term Alstom. The Complainant believes that the name Alstom remains totally identifiable as being its trademark. Furthermore, the Complainant alleges that, given the reputation of Alstom, the Domain Name will be directly considered by the public as belonging to ALSTOM as a consequence it is likely to mislead the public and create a likehood of confusion for web users who may think this domain name is managed, or at least, supported by ALSTOM and that it is related to technologies developed by ALSTOM. (ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name: the Respondent is not related in any way to the Complainant’s business, he is not one of its agents and does not carry out any activity for, or has any business with it. No license or authorization has been granted to the Respondent to make any use, nor apply for registration of the Domain Name. (iii) The Complainant adds that the Respondent registered the Domain Name in bad faith. The circumstances surrounding the registration by the Respondent show that he acted in bad faith. The Complainant believes that because of the notoriety of the ALSTOM trademarks, the Respondent must have been aware of the Complainant’s rights in the ALSTOM trademarks, since he registered the Domain Name early this year. The Complainant also points out that the Respondent could not be unaware of the well-known character of the name ALSTOM since, i.e ., the Respondent has contacted Alstom in order to sell the Domain Name to him. The Complainant believes that the Respondent only registered the Domain Name for the only the purpose of selling it since the web site to which the Domain Name refers to is offering the Domain Name for sale through a form to fill out. When the Complainant sent to the Respondent a cease and desist letter, the Complainant received from the Respondent, by email, dated May 24, 2019, an offer to buy the Domain Name for EUR 2’500. The Complainant alleges that this amount is not only excessive since it is at least than 50 times the amount to be paid for register Domain Name but also could be constitutive of extortion. The registration is detrimental to ALSTOM because it means that the rightful owner cannot register the Domain Name <alstomtechnology.com> which fully reproduces its trademark. Furthermore, the Domain Name registration is likely to lead the public to assume that the Domain Name is associated with ALSTOM and thus, will result in confusion as to the person who owns and operates under the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. Therefore, the Respondent has not shown or even alleged any rights or legitimate interests in the Domain Name. Neither did he challenge any of the Complainant’s submissions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel has to use in deciding the dispute: “A Panel shall decide a complaint on the basis of the statement 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 states that, for a complaint to be granted, the Complainant must prove each of the following: (i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) That the Respondent has no rights or no legitimate interests in respect of the Domain Name; and (iii) That the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well established that the Complainant has been using the ALSTOM trademark for decades worldwide and that it has rights on several ALSTOM trademarks. The Panel finds that this trademark, owned by the Complainant, is widely known. The protected denomination “ALSTOM”, protected as a trademark either as such or in combination with a word indicating a field of activity, is fully present in the Domain Name. The adjunction of the term “technology”, which is purely generic, does not prevent confusing similarity. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Edition 3.0 (“WIPO Overview 3.0”), section 1.8 . The extension “.com” is considered as a technical element and has consequently no distinguishing effect. In view of the above, the Panel concludes that <alstomtechnology.com> is confusingly similar to the Complainant’s trademarks and that the Complainant satisfies the criteria defined in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests According to paragraph 4(a)(ii) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of production, several decisions of UDRP panels have held that “although Paragraph 4(a) of the Policy requires that the Complainant prove[s] the presence of this element (along with the other two), once a Complainant makes a prima facie showing [of his rights or legitimate interests], the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name” (see Document Technologies, Inc. v. International Electronic Communications Inc ., WIPO Case No. D2000-0270 ; see also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com , WIPO Case No. D2001-0784 ; Ets Leobert, SARL v. Jeonggon Seo , WIPO Case No. D2009-0004 ). The Complainant underlines without being contradicted, that the Respondent is not related in any way to its business. There is no evidence of any license or authorization granted to the Respondent to use the Domain Name. The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the use of the Domain Name. The Respondent, through his silence, has not shown the existence of any rights or legitimate interests in respect to the Domain name. He has not shown either that he uses or intends to use the Domain Name. In similar circumstances, UDRP panels have regularly decided that the Respondent has neither rights nor legitimate interests in the domain name (see Credit Industriel et Commercial S.A. v. Jeongyong Cho , WIPO Case No. D2013-1263 ). The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, bad faith should be demonstrated both for registration and use of the Domain Name. Paragraph 4(b) of the Policy mentions “in particular but without limitation” four methods for showing bad faith registration and use of a disputed domain name. As for the registration of the Domain Name, considering the reputation of the trademark ALSTOM in the world including in Palestine, where the Respondent apparently lives, the Panel considers that the Respondent could not have ignored this trademark early this year when he applied for the registration of the confusingly similar Domain Name <alstomtechnology.com>. Passive holding of a domain name is not an obstacle to a finding of bad faith. In the present case, it is rather an indication of bad faith when used in a web site whose sole purpose is the sale of the Domain Name, moreover, at a price that does not correspond to the reality of the market. Several UDRP panels have ruled on this issue, and it has been widely accepted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the Domain Name, but instead whether, in view of all the circumstances of the case, it can be said that the Respondent is acting in bad faith” (see Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 ; see also Polaroid Corporation v. Jay Strommen , WIPO Case No. D2005-1005 , Malayan Banking Berhad v. Beauty, Success & Truth International , WIPO Case No. D2008-1393 ). Therefore, the Panel will examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. The Respondent only registered the Domain Name in order to sell it. His website’s content allows only to fill out a form to buy the Domain Name. This is also corroborated by the fact that when the Complainant sent a cease and desist letter to the Respondent, the Respondent requested a payment of EUR 2,500 for the sale of the Domain Name. That was the only time that the Respondent has come forward. The Respondent has remained mute during the proceedings, and did not respond to the Complaint. He did not object to the Complainant’s credible submission concerning bad faith. In particular, he gave no other reason or purpose for its use of the Domain Name. Moreover, the Panel notes the risk for the Complainant in his business to have the Domain Name under the Respondent’s control, which could be detrimental to its clients or its reputation. The Panel is therefore convinced that the Respondent has registered and is using the Domain Name in bad faith. Accordingly, it finds that the Complainant has also satisfied the requirement under paragraph 4(a)(iii) 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 <alstomtechnology.com> be transferred to the Complainant. Gérald Page Sole Panelist Date: September 13, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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