WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Future ISP
Case No. D2010-1376
1. The Parties
The Complainant is Alstom of Levallois Perret, France, represented by Dreyfus & associés, France.
The Respondent is Future ISP of Basra, Iraq.
2. The Domain Name and Registrar
The disputed domain name <power-alstom-usa.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2010. On August 13, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On August 13, 2010, Name.com LLC 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 August 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2010. On September 16, 2010, the Respondent sent an email communication to the center in relation to this proceeding.
The Center appointed Knud Wallberg as the sole panelist in this matter on September 20, 2010. 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 above mentioned email from the Respondent of September 16, 2010 was aimed at the Center and stated the following: “Dear Sir, please can you send your letter in Arabic I can't understand it.” On the same day, the Center replied to the Respondent (copying the Complainant) indicating that pursuant to paragraph 11 of the Rules, 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, subject to the authority of the Panel to determine otherwise. The Complainant filed a supplemental filing on September 27, 2010 in which it requested that the language of the proceeding be English, since:
- the Respondent acquired the disputed domain name through the registrar Name.com LLC whose website appears to be only in English language. No change of language is offered on the welcome page of this registrar;
- the disputed domain name includes a generic term, “power” and a geographical term “usa” that both belong to the English language;
- at no time the Respondent indicated to the Complainant it did not understand English language before the proceedings or after the Complaint was filed;
- the Respondent even replied to the cease-and-desist letter of the Complainant using the English language.
In view of the above, the Panel decides that English shall be the language of the proceedings.
4. Factual Background
The Complainant is a French company incorporated under French law.
The Complainant is a global leader in power generation and rail transport infrastructure. It serves the energy market through its activities in the field of power generation and the transport market through its activities in rail and marine.
The Complainant employs 65,000 people in 70 countries, serving customers worldwide. Those locations include Iraq, where the Respondent is apparently based.
The Complainant holds registrations of ALSTOM as trademark in several jurisdictions just as the Complainant holds several domain names consisting of or incorporating “alstom” including <alstom.com>, <alstom.us>, <alstom-power.com> and <poweralstom.com>.
The Complainant’s trademarks include the following:
- ALSTOM + logo, International trademark n° 706292 registered on August 28, 1998, duly renewed and 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.
- ALSTOM, International trademark n° 931242 registered on March 01, 2007 and 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, 42 and 45.
The disputed domain name was registered on February 6, 2010.
5. Parties’ Contentions
The following is summarized from the Complaint.
i). Identical or confusingly similar
The disputed domain name is confusingly similar to the numerous trademarks registered by the Complainant.
The Complainant is the owner of numerous trademarks ALSTOM throughout the world. The disputed domain name entirely incorporates the Complainant’s trademark and trade name ALSTOM with the addition of the terms “power” and “usa”.
Numerous decisions under the Policy have recognized that the addition of a generic term like “power” and of a geographical term like “usa”, does not serve to distinguish the disputed domain name from the Complainant’s trademark. On the contrary, it emphasizes the confusion regarding the connection between the disputed domain name and the Complainant’s activities in the United States in the power generation sector.
It has also been held in numerous decisions that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the relevant marks and the disputed domain name.
ii). Rights or legitimate interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
The Complainant submits that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating those trademarks.
Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name.
And finally, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, as it initially lead the Internet users to a standard idex page and now leads to a webpage where it states that the account has been suspended.
The Respondent barely answered the Complainant’s cease and desist and its reminders. The Respondent has not otherwise demonstrated any rights or legitimate interests regarding the disputed domain name.
iii). Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and has been used in bad faith.
It seems obvious that the Respondent knew or must have known the Complainant at the time it registered the disputed domain name. The Complainant is well-known worldwide. Besides, a simple search via Google or any other search engine using the keyword “alstom” demonstrates that all results relate to the Complainant’s websites or business.
In addition, previous UDRP decisions have found that the Complainant’s trademarks are “not only well-known in Australia, where the Respondent resides, but around the world” (Alstom v. Cameron Jackson, WIPO Case No. D2007-1022).
Therefore, it seems quite difficult to believe that the Respondent was not aware of the existence of the Complainant at the time it registered the disputed domain name. In fact, the addition of the terms “power” and “usa” to the Complainant’s trademark ALSTOM clearly indicates that the Respondent had the Complainant in mind while registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, 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, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark in its entirety. The addition of the generic term “power” as prefix and of the geographical term “usa” as suffix to the trademark to form the disputed domain name, does not dispel a finding of confusing similarity. Moreover, it has also long been held by UDRP panels that gTLD suffixes do not generally preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent has been using – or rather not using – (see below) does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii),of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the extent of use of the Complainant’s trademark including in the country of residence of the Respondent and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.
The Respondent has not been using the disputed domain name except for what appears to be a simple, standardized index page. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP:
“the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s lack of bona fide use of the disputed domain name is likely to disrupt the business of the Complainant since it could, in this Panel’s view, give those Internet users that will look for information on the Complainant on the Internet, in particular in relation to the Complainant’s activities within the power generation sector in the USA, the impression that the Complainant is not active on the Internet. The Panel also notes that the disputed domain name incorporates a well-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For all 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 <power-alstom-usa.com> be transferred to the Complainant.
Dated: October 1, 2010