The Complainants are
- ALSTOM, of France, and
- ALSTOM of Italy,
(collectively the “Complainant”), represented by Cabinet Dreyfus & Associés, France.
The Respondent is
- Rex Huang, of Taiwan, Province of China (the “Respondent”).
The disputed domain name <pendolino.net> (the “Domain Name”) is registered with Blue Razor Domains, Inc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2008. On December 24, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2008, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 2 2009.
The Center appointed Anna Carabelli as the sole panelist in this matter on February 11, 2009. 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 Complainant is a global leader in power generation and rail transport infrastructure, employing 76,000 people in 70 countries and serving customers worldwide (Annex 3 of the Complaint).
In particular, the Complainant is the owner of the Pendolino range of high speed trains developed and manufactured by the Italian subsidiary of Alstom, Alstom Ferroviaria S.P.A., which inherited tilting technology after its acquisition of former Italian producer (Annex 3bis and 4 of the Complaint).
Pendolino is an innovative train based on the tilting technology, which allows trains to round curves designed for slower trains at higher speeds, thus optimizing their running times without need to upgrade existing infrastructure and without causing undue discomfort to passengers (Annex 4 and 5 of the Complaint).
According to the Complainant's allegations Pendolino is well known worldwide; it is used in Italy, Spain, Portugal, Slovenia, Finland, the Czech Republic, Slovakia, the United Kingdom, Switzerland, China and will be implemented shortly also in Romania, Ukraine and the Russian Federation. Given the Respondent's default, the Panel will accept as true all reasonable factual allegations by the Complainant on this point (see Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009), also in view of the fact that they were corroborated by a search on the Internet by the Panel.
The Complainant has provided evidence of numerous trademark registrations for the word “pendolino”, registered in the name of Alstom Ferroviaria S.P.A., namely:
- Taiwan trademark registration PENDOLINO No. 734306, registered on November 1 1996, (Annex 13);
- International trademark registration PENDOLINO No. 532615 registered on December 13, 1988 (Annex 14);
- Community trademark registration PENDOLINO No. 001148816 registered on July 10, 2000 (Annex 15);
- Community trademark registration PENDOLINO No. 000256289 registered on July 27, 1999 (Annex 15).
Additionally, the Complainant operates the following domain names, registered in the name of Alstom Ferroviaria S.P.A, incorporating Pendolino trademark (Annex 16):
- <pendolino.com> registered on July 16, 2003;
- <pendolino.eu> registered on July 10, 2006;
- <pendolino.info> registered on September 19, 2001;
- <pendolino.org> registered on March 13, 2001;
- <pendolino.biz> registered on November 7 2001.
On February 27, 2007, the Respondent registered the Domain Name. The Domain Name corresponds to a website containing a number of sponsored links including links to Alstom and Pendolino which direct to pages containing information about the Complainant's history and business. (Annex 9).
On February 20, 2008, the Complainant sent the Respondent a cease and desist letter requesting the Domain Name be transferred to the Complainant (Annex 10). On March 1, 2008, the Respondent replied by e-mail, saying that both Alstom and Pendolino trademarks were unknown to him prior receipt of the cease and desist letter, and that the Domain Name was chosen after a word he learnt from newspapers (Annex 11). On April 11, 2008, the Complainant reiterated its request, but never received an answer. Besides, it seems that the Respondent's e-mail has become inactive (Annex 12).
The Complainant contends that:
- the Domain Name is confusingly similar to the numerous trademarks owned by the Complainant as it reproduces the Pendolino trademarks without a single alteration, and provided that the suffix “.net” indicating the top level domain can be disregarded for the purpose of determining confusing similarity to trademarks in which Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Domain Name, provided that (i) he is not affiliated with, nor authorized by, the Complainant; (ii) he did not prove to be the holder of prior rights or have any legitimate interest in the disputed domain name and has never used the term Pendolino in any way before or after the Complainant started its business; (iii) he is not currently known, nor has been known in the past by the name Pendolino; (iv) he showed he has no interest in protecting his own rights and domain name by affirming that the domain name was chosen on the basis of a word he learnt from newspapers; (v) he has never used the disputed Domain Name in connection with a bona fide offering of goods or services as the use of the domain name clearly serves the purpose of generating revenue via advertised pay-per-click links; (vi) he is not making any legitimate non-commercial or fair use of the Domain Name, as it redirects Internet users to some pages presenting sponsored links;
- the Respondent registered the Domain Name in bad faith as it is obvious that he knew or must have known the Complainant's trademarks at the time of registration of the Domain Name. The PENDOLINO trademarks have a worldwide reputation that the Respondent could not have ignored and, in any case, the Respondent would have easily found the Complainant after a rapid search on the Internet. Moreover, the Domain Name is being used in bad faith provided that (i) the use of a Domain Name reproducing a famous trademark cannot be legitimate; (ii) the website relevant to the Domain Name contains numerous sponsored links, including the embedded links “Alstom” and “Pendolino” which direct to pages containing information about Complainant's history and business. It follows that the use of the Domain Name can only be aimed at attracting users for commercial gain by illegitimately capitalizing on the PENDOLINO trademarks reputation.
In support of its contentions the Complainant refers to previous UDRP panel decisions.
Consequently, the Complainant requests the transfer of the Domain Name to Alstom Feroviaria S.P.A.
The Respondent did not reply to the Complainant's contentions and is in default.
Paragraph 15(a) of the Rules instructs the panel to 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.
Under paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to a trademark 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
The Domain Name entirely incorporates the Complainant's trademark PENDOLINO.
It is an established principle that the addition of the top level domain has no legal significance when comparing the domain name and the complainant's trademark (Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015 and Societe Generale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257; Telstra Corporation. Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Based on the above, the Panel finds that the first element of the Policy has been established.
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate noncommercial or fair use of the domain name.
Clearly, the Respondent has never been authorized by the Complainant to register the Domain Name. The Complainant also contends that the Respondent is not commonly known by the Domain Name.
The Domain Name is mainly used to redirect Internet users to other websites through sponsored links including, among others, the embedded links “Alstom” and “Pendolino”, which direct to pages containing information about the Complainant's history and business. The Panel agrees that such use cannot constitute a use in connection with a bona fide offering of goods and services, nor can it be considered as a noncommercial fair use since the Respondent is using the Domain Name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant's trademark.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO UDRP decisions, in such a case the burden of proof shifts onto the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; Audi AG v. Dr. Alireza Fahimipour WIPO Case No. DIR2006-0003).
The Respondent has failed to submit an answer to the Complaint.
In the light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Based on the evidence submitted by the Complainant, the Panel finds that, when registering the Domain Name, the Respondent knew or should have known the Complainant's trademark PENDOLINO. The Respondent's reply to the Complainant's cease and desist letter (that he decided to register the Domain Name after he read a word in the newspaper) corroborates the above conclusion also considering that the Domain Name is being used for a website containing various sponsored links, including to the Complainant's trademarks and business.
By including the embedded links “alstom” and “pendolino” in his website, the Respondent is clearly trading on the goodwill associated with the Complainant's brand and mark. Such a conduct where the respondent sought or realized commercial gain has been regarded as evidence of use in bad faith by many previous WIPO UDRP decisions (Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferré S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L'Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire's Stores, Inc., Claire's Boutiques, Inc., CBI Distributing Corp. v. LaPorte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383).
In the light of the above, the Panel concludes that the Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <pendolino.net> be transferred to ALSTOM Ferroviaria S.P.A.
Dated: February 25, 2009