WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alstom v. Yulei

Case No. D2007-0424

 

1. The Parties

The Complainant is Alstom, a French Company incorporated under French Law and represented by Cabinet Dreyfus & Associs, France.

The Respondent is Yulei, Beijing, China.

 

2. The Domain Name and Registrar

The disputed domain name <alstom-china.com> is registered with HiChina Web Solutions (Hong Kong) Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2007. On March 20, 2007, the Center transmitted by email to HiChina Web Solutions (Hong Kong) Limited a request for registrar verification in connection with the domain name at issue. On March 21, 2007, HiChina Web Solutions (Hong Kong) Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a translation of the Complaint in the Chinese language by email on April 27, 2007 and in hardcopy on May 3, 2007. 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”), 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 April 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was

May 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2007.

The Center appointed Susanna H.S. Leong as the sole Panelist in this matter on June 27, 2007. 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 in the business of power generation and rail transport infrastructure. It has supplied more than 25% of the world’s installed power generation capacity and has an 18% market share in rail transportation worldwide. The Complainant employs 69,000 people in 70 countries, serving customers worldwide and particularly in China. As one of the FORTUNE 500 companies, the Complainant has been playing a role in China’s development for almost 50 years based on the experience and expertise it has built up over the past century. Some of the Complainant’s Chinese projects include:

- 1950’s began supplying China with electric and diesel electric locomotives;

- 1979 First representative office was set up in Beijing, making it one of the earliest international companies to enter China in the wake of the country’s opening;

- 1992 First joint venture was established - Suzhou ALSTOM T&D Switchgear Co. Ltd;

- 1999 ALSTOM (China) Investment Co. Ltd. was founded in Beijing with registered capital of US$30 million, which was substantially increased since then.

To date, the Complainant has invested in China in two wholly owned foreign enterprises including ALSTOM (China) Investment Co. Ltd. and ALSTOM Technical Services (Shanghai) Co. Ltd., as well as eight joint ventures and one subsidiary (in Hong Kong).

The Complainant is the owner of numerous ALSTOM trademarks throughout the world, in particular the following trademarks:

- International trademark ALSTOM, n 706292 registered on August 28, 1998, designating among others China, Russia and Poland n 284616 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, n 706360 registered on August 28, 1998, designating among others China, Russia and Poland n 284616 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, n 757684 registered on October 31, 2000, designating among others China, Russia and Poland n 284616 in classes 6, 7, 9, 11 12, 17, 19, 35, 36, 37, 38, 39, 40, 41 and 42;

- Chinese trademark ALSTOM, n 2009346 registered on August 21, 2002, in class 40;

- Chinese trademark ALSTOM, n 1727470 registered on March 7, 2002, in class 39;

- Chinese trademark ALSTOM, n 1739570 registered on March 28, 2002, in class 37;

- Chinese trademark ALSTOM, n 1701948 registered on January 21, 2002, in class 12;

- Chinese trademark ALSTOM, n 1718410 registered on February 21, 2002, in class 11;

- Chinese trademark ALSTOM, n 1742888 registered on April 7, 2002, in class 9;

- Chinese trademark ALSTOM, n 1912277 registered on June 28, 2005, in class 7.

The Complainant’s trademark ALSTOM is also used as a trade name.

Recently, the Complainant noticed that the disputed domain name was registered and a Whois database search revealed that the said domain name is registered by the Respondent. The Complainant also noticed that the disputed domain name is directing Internet users to the website of a company called Kery and that the said company is presented on the website as an electrical automation engineering company. Before commencing the present UDRP action, the Complainant sent a letter of cease and desist by e-mail and registered letter dated August 30, 2006, to the Respondent with an email copy to the Registrar, asking the Respondent to transfer amicably the disputed domain name based on the Complainant’s trademark rights. Despite numerous reminders, the Complainant did not receive any reply. It would appear that the Respondent’s postal address indicated on the Whois is not valid. Failing to reach an amicable settlement with the Respondent, the Complainant proceeded to file the present Complaint under the UDRP.

 

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

The Complainant contends that it is the registered owner of the trademarks ALSTOM in many countries all over the world including China and it has rights pertaining to the trademark. The domain name in dispute reproduces precisely and totally the trademark and trade name ALSTOM in the first part. The Complainant contends that the mere addition of the term “China” would lead others to think that the said domain name is specific to the Complainant’s activity in China. Furthermore, “China” is a generic term and describes one of the main places of business of the Complainant. Numerous WIPO UDRP decisions have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute and geographic term are generally considered as generic term. See PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629. Consequently, the term “China” is insufficient to avoid any confusion, as already held in many previous WIPO UDRP decisions. The disputed domain name is confusingly similar to the Complainant’s trademarks ALSTOM. Numerous other decisions under the Policy have also held that the mere addition of a descriptive term to a mark (which descriptive term does not contain any pejorative content or otherwise tend to suggest disassociation from the mark) does not negate the confusing similarity between the mark and the domain name. See C. &A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466. It has also been held in numerous decisions that the addition of the gTLD indications does not remove the likelihood of confusion simply because it is necessary for the registration of the domain name itself. The extension “.com” is not to be taken into consideration when examining the identity or similarity between the previous marks and the disputed domain name. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

As a result, the Complainant contends that the domain name <alstom-china.com> is identical or at least confusingly similar to the Complainant’s registered trademark ALSTOM in which the Complainant has legitimate rights and the condition of paragraph 4(a)(i) is fulfilled.

A.2 Rights or Legitimate Interests

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name for the following reasons:

1. The Respondent is not affiliated with the Complainant in any way;

2. The Complainant has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating said trademarks ALSTOM;

3. The Respondent has no prior rights or legitimate interests in the disputed domain name; and

4. The Respondent is not making any legitimate non-commercial or fair use of the domain name, as it lead the Internet users to the website of the Complainant’s direct competitor.

Furthermore, the Respondent did not answer to Complainant’s cease and desist letters and did not demonstrate any right or legitimate interest regarding the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in dispute under paragraph 4(a)(ii) of the Policy.

A.3 Registered and Used in Bad Faith

The Complainant contends that the Respondent knew or must have known the Complainant at the time it registered the domain name. This is because the Complainant is well-known around the world especially in China evidenced by numerous press releases of the Complainant and its activities in China. Furthermore, the Complainant argues that a simple search via Google or any other search engine using the keyword “Alstom” or “Alstom China” will demonstrate that the mark is connected to the Complainant’s websites or businesses. Therefore, it is inconceivable that the Respondent was not aware of the existence of the Complainant at the time it registered the domain name. In fact, the combination of the Complainant’s trademark ALSTOM and one of the main places of the Complainant’s activity “China” clearly indicates that the Respondent had the Complainant in mind while registering the domain name in dispute. The Complainant contends that the circumstances under which the disputed domain name was registered by the Respondent was evidence of registration in bad faith.

The Complainant further contends that there is evidence to support the finding that the Respondent also used the disputed domain name in bad faith. There is evidence that the Respondent has registered the domain name in dispute intending to disrupt Complainant’s business, as the domain name <alstom-china.com> is linked to a website of one of the Complainant’s competitors and the Respondent registered the domain name in dispute while being perfectly aware that it was infringing Complainant’s rights. The Complainant submits that the Respondent, by registering said domain name corresponding to a famous name, could not ignore, but intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. This conduct constitutes evidence of bad faith use, since the Respondent is trying to gain profit from the Complainant’s goodwill by attracting Internet users by reproducing the Complainant’s trademark. Finally, the Complainant contends that the lack of response to Complainant’s cease and desist letter of October 27, 2006, constitutes additional evidence of the Respondent’s bad faith.

Consequently, the Complainant contends that it is established that the Respondent did both register and use the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

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

 

6. Discussion and Findings

A. Language of the Proceedings

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant filed initially its Complaint in English requesting that English be the language of proceeding. This request, however, did not include supporting evidence of the Respondent’s proficiency in English. On March 30, 2007, the Center notified the Complainant that since the language of the registration agreement for the disputed domain name is in Chinese, paragraph 11 of the Rules stipulates that the language of the administrative proceedings shall accordingly be Chinese. The Complainant submitted a translated Complaint in Chinese by email on April 27, 2007 and in hardcopy on May 3, 2007, and the Center commenced the proceeding forwarding the Chinese Complaint to the Respondent.

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in there ability to articulate the arguments for the case.

The Complainant, upon being notified by the Center that the language of the proceeding is Chinese, has promptly submitted a Chinese translation of the Complaint to the Center within the stipulated time frame. The Respondent has then been notified of the Complaint and its contents in the Chinese language. The Complainant has alleged that the Respondent has no legitimate rights to the disputed domain name which is confusingly similar to the Complainant’s registered trademark and that the Respondent has registered and used the domain name in bad faith. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint is not the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint.

In light of the fact that the Respondent has been notified of the Complaint in Chinese and that the Respondent has chosen not to participate in these proceedings, the Panel is satisfied that taking these circumstances into consideration, the Panel may render its decision in English and that this may be considered fair to both parties in the circumstances of this case.

B. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

C. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the marks ALSTOM in many countries throughout the world including China.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s energy generation businesses.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademarks ALSTOM, (b) the English word “China”, (c) a hypen, and (d) the top level domain suffix “.com”. The Complainant’s mark has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the English word “China” is a mere geographic description and it does not provide additional specification or sufficient distinction from the Complainant or its trademarks ALSTOM. The Panel finds that the addition of the hyphenated suffix of “China” to the word “alstom” does not serve to distinguish it from the Complainant’s ALSTOM trademarks. In fact, the Panel finds that the addition of the hyphenated suffix of “China” serves to emphasize the geographical location of the Complainant’s business which increases the level of confusion of Internet users as Internet users may mistake the Respondent’s website as the Complainant’s official website devoted to its customers in China.

Accordingly, the Panel finds that the disputed domain name <alstom-china.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

D. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP Panel decisions that once a Complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the Respondent to rebut the Complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “alstom” in its business operations;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. The Complainant and its trademark ALSTOM enjoy a worldwide reputation with regard to its energy generation business and rail transport infrastructures. Consequently, in the absence of contrary evidence from the Respondent, the ALSTOM trademarks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 the 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 the Respondent’s 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.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

First, the Panel finds that the Complainant enjoys a widespread reputation in its ALSTOM trademarks with regard to its energy generation businesses and rail transport infrastructures. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from the Respondent, the Panel finds that the ALSTOM trademarks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services.

Second, the Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering the Complainant’s products and services in the energy generation industry. Given the widespread reputation of the Complainant’s ALSTOM trademarks, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known and distinctive trademarks, intended to ride on the goodwill of the Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Potential partners and end users are led to believe that the website “www.alstom-china.com” is either the Complainant’s Chinese language site or the site of official authorized partners of the Complainant, which it is not. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s ALSTOM trademarks and this constitutes a misrepresentation to the public that the Respondent’s websites are in one way or the other associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

 

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-china.com> be transferred to the Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: July 11, 2007