WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom, Bouygues v. Webmaster
Case No. D2008-0281
1. The Parties
The Complainants are Alstom and Bouygues of France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Webmaster of Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bouyguesalstom.com> is registered with Cydentity, Inc. d/b/a Cypack.com (the “Registrar”), which has a business address in the Republic of Korea.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2008. On February 26, 2008, the Center transmitted by email to Cydentity, Inc. d/b/a Cypack.com a request for registrar verification in connection with the domain name at issue. On February 29, Cydentity, Inc. 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 contact. The Registrar informed that the language of the registration agreement is Korean.
The Center verified that 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 March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed Moonchul Chang as the sole panelist in this matter on April 21, 2008. 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 and Bouygues, the Complainants, are two internationally well known French companies which signed a framework agreement for operational and commercial cooperation on April 26, 2006. Bouygues took a stake in Alstom.
Alstom is an international corporation participating in areas of power generation and rail transport infrastructure and contributed to the setting up of TGV in the Republic of Korea, the Korea Train express (KTX) which opened on March 30, 2004.
Bouygues was established in 1952 and has over 113,300 employees in 80 countries in October 2005. Bouygues takes part in construction, real estate business, transport, media and telecommunication, etc. Bouygues is also widely well known in many countries including the Republic of Korea.
After the Respondent registered the disputed domain name, the Respondent is now using the domain name to operate the website which offers to sell the disputed domain name. (Annex 27 of the Complaint)
5. Parties’ Contentions
The Complainant contends that the disputed domain name <bouyguesalstom.com> is confusingly similar to the Complainants’ marks BOUYGUES and ALSTOM. The disputed domain name consists of “bouygues” and “alstom”. Alstom is the owner of numerous trademarks ALSTOM in many countries including the Republic of Korea. Bouygues is also the owner of numerous trademarks BOUYGUES throughout the world including the Republic of Korea. Thus, the Complainants have rights in the trademarks that are reproduced in its entirety in the domain name in dispute.
The Complainant contends that the Respondent has no rights or legitimate interest in the domain name because the Respondent is neither affiliated with the Complainants nor authorized to use and register the marks BOUYGUES and ALSTOM. When the Respondent answered to Complainant’s letter of cease and desist, the Respondent did not provide any relevant justification as to a legitimate use of the dispute domain name.
The Complainant further contends that the Respondent registered and used the domain names in bad faith. Firstly, the Respondent knew or must have known the Complainants at the time it registered the disputed domain name because the Complainants are internationally well known and have Korean trademarks BOUYGUES and ALSTOM. In fact, a simple research on the Internet would have enabled the Respondent to find the Complainants. In addition the combination of the trademarks BOUYGUES and ALSTOM is in itself a proof that the Respondent knew of the Complainants. Secondly the Respondent proposed to the Complainants to sell the disputed domain name for an amount of 5,000 USD. In addition the Respondent used blackmail against the Complainants to try to sell the disputed domain name for an amount exceeding its pocket expenses. According to Domaintools’ website the Respondent registered 2,846 domain names including the domain name <intelpanamsat.com> which is also offered for sale by the Respondent. It demonstrates that the Respondent makes profit with the domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph11 of the Rules, the language of the administrative proceeding is the language of the registration agreement unless the panel decides otherwise. The language of the registration agreement here is Korean. However, the spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. In this case, the Complainants request that English should be the language of proceeding because they are not able to communicate in Korean and, if they were to submit all documents in Korean, the proceeding would cause unduly delay and incur expenses for the translation.
The Respondent did not participate in this proceeding. However, before the Complaint was submitted, the Respondent answered in English to the letter of cease and desist sent by the Complainant and both parties communicated in English in other correspondence. This indicates that the Respondent is able to communicate efficiently in English.
Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case. (See Siemens Aktiengesellschaft v. bak jogsub, WIPO Case No. D2006-0972).
B. Identical or Confusingly Similar
The disputed domain name consists of two words “Bouygues” and “Alstom”. The domain name wholly incorporates the Complainants’ trademark. In the present case, the Panel finds the disputed domain name is confusingly similar to the Complainant’s marks.
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainants.
C. Rights or Legitimate Interests
The Panel considers that under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests, the burden shifts to the Respondent. (See Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
Firstly, the Panel considers that in the absence of any license or permission from the Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Such is the case here, in as much as the Complainants are widely known and did not give any license or other permission to the Respondent to use the marks BOUYGUES and ALSTOM.
Secondly, there is no evidence presented to the Panel that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services at present. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The name “bouyguesalstom” has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.” As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the marks BOUYGUES and ALSTOM are widely known in many countries, including the Republic of Korea, the Respondent is likely to have registered the disputed domain names with knowledge of both of the Complainants’ marks.
Secondly, the Respondent offered in its correspondence to sell the disputed domain name to the Complainants for an amount of 5,000 USD, a figure which exceeds the out of pocket expenses. In addition the website “www.bouyguesalstom.com” also offers to sell the domain name. According to the paragraph 4(b)(i) of the Policy, evidence of offers to sell the domain name may be used to show bad faith. E.g CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243.
Thirdly, according to the Complainant’s submission of Domaintools’ website, the Respondent registered 2,846 domain names including the domain name <intelpanamsat.com> which is also offered for sale by the Respondent (Annex 52). It demonstrates that the Respondent profits with the domain names including the disputed domain name.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the domain name <bouyguesalstom.com> in accordance with paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <bouyguesalstom.com> be transferred to the Complainants.
Dated: May 8, 2008