WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. jerry jonn
Case No. D2010-2075
1. The Parties
The Complainant is ALSTOM of Levallois Perret, France, represented by Dreyfus & associés, Paris, France.
The Respondent is jerry jonn of Surrey, Canada.
2. The Domain Names and Registrars
The disputed domain name <alstomshop.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. The disputed domain names <alsthom-sucks.com>,
<alsthomsucks.com>, <alstom-europe.com>, <alstomeurope.com>, <alstom-hydro.com>,
<alstom-mall.com>, <alstommall.com>, <alstom-projects.com>, <alstom-services.com>, <alstom-shop.com>, <alstom-store.com>, <alstom-stores.com>, <alstomstores.com>, <alstom-support.com>,
<alstomsupport.com> and <projectsalstom.com> are registered with GoDaddy.com, Inc. (all 17 together the “Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2010. On December 2, 2010, the Center transmitted by email to GoDaddy.com, Inc. and Xiamen eName Network Technology Corporation Limited dba eName Corp a request for registrar verification in connection with the Domain Names. On December 3, 2010 and December 6, 2010, GoDaddy.com, Inc. and Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On December 6, 2010, the Complainant requested to suspend the proceedings whilst the parties attempted to settle the proceedings. The Center notified the parties and registrars of the suspension on December 7, 2010. The suspension was extended once. On February 4, 2011, the Complainant requested to reinstitute the proceedings. The Center confirmed the reinstitution of the proceedings on February 7, 2011.
On February 7, 2011, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings in relation to the domain name <alstomshop.com>. On the same day, the Center sent an email communication to the Complainant regarding the registrar information. On February 10, 2011, the Complainant filed an amended Complaint and requested that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
The Center verified that the Complaint together with the amended 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 February 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2011. On February 26, 2011, the Respondent sent an email communication indicating “My client agreed to transfer for free”. The Respondent did not file the Response by the due date. The Center notified the Respondent’s default on March 7, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on March 14, 2011. 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 Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings 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 proceedings. According to the information received from Xiamen eName Network Technology Corporation Limited dba eName Corp, the language of the registration agreement in relation to <alstomshop.com> is Chinese. There is no issue with the other disputed domain names registered with GoDaddy.com, Inc. as the language of the registration agreement is English.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceedings should be English as the Respondent is proficient in the English language. This is evidenced by the fact that the Respondent corresponded with the Complainant by email in the English language after the Complaint was filed; the rest of the 16 Domain Names which are covered by the Complaint are registered with a United States based registrar which has an English registration agreement; the <alstomshop.com> domain name includes a generic English term “shop” whilst the other Domain Names also include English terms like “mall”, “store” and “support” and some of Domain Names are connected to websites in the English language. Isolating <alstomshop.com> from the other Domain Names would delay the proceedings and would represent a significant cost to the Complainant. The Complainant is based in France and has no knowledge of Chinese. To proceed in Chinese would be very costly and impose an undue burden on the Complainant.
The Panel accepts the Complainant’s submissions in paragraph 10 of the Complaint regarding the language of the proceedings and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English and the Respondent did not comment on the language of the proceedings by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.
4. Factual Background
The Complainant is a French multinational industrial group with interests in the power generation, transmission and transportation industries. With sales of Euros 23 billion, it employs more than 95,000 people in 70 countries serving customers worldwide. The Complainant has a presence in Canada (where the Respondent is based) with offices in Montreal, Quebec and Calgary. The Complainant is the owner of numerous ALSTOM trade marks worldwide including International Trade Mark No. 931242 registered on March 1, 2007 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 and Canadian Trade Mark Registration TMA 562412 registered on May 23, 2002. Alstom is also the corporate and trade name of the Complainant.
The Complainant owns the following domain names: <alstom.com>, <alsthom.com>, <alstompojects.com> and <alstomservices.com>.
The Domain Names were all registered between April to August 2010 by the Respondent. The Domain Names are connected to parking pages including 14 with sponsored links and <alstomshop.com> to an error page.
5. Parties’ Contentions
The Complainant contends that is has registered rights in the trade mark ALSTOM. ALSTOM is a
well-known trade mark because of the Complainant’s worldwide reputation. The Domain Names are identical or confusingly similar to the ALSTOM trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights to the trade mark ALSTOM and that ALSTOM is a well-known trade mark.
The Complainant’s registered trade mark, ALSTOM is the dominant portion of the Domain Names. The addition of the descriptive/generic terms “hydro”, “mall”, “projects”, “services”, “shop”, “store(s)”, “support”, and geographical term “Europe” do nothing to minimise the risk of confusion. The Panel considers that the word “alsthom” is a misspelling of ALSTOM mark and is visually and aurally almost identical to ALSTOM mark. In fact, the Complainant also owns a domain name <alsthom.com>. The addition of the negative term “sucks” at the end of “alsthom” does nothing to dispel confusion (see 1.3 majority view in WIPO Overview of WIPO Panel Views on Selected UDRP Questions). For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”.
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated with the Complainant nor is he authorised or licensed by the Complainant to use and register its trade mark ALSTOM or a confusingly similar mark as part of a domain name. The Respondent does not have any prior rights or legitimate interest in the Domain Names as the ALSTOM trade mark registrations preceded the Domain Names by many years and the Respondent is not commonly known by the name ALSTOM. The term “alstom” is an invented word with no meaning in English or any other language. The Respondent has not made demonstrable preparations to use the Domain Names or name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Most of the Domain Names resolves to parking pages containing pay-per-click links which are likely to generate revenues for the Respondent. Two of them resolved to GoDaddy parking pages whilst one resolves to an error page.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s well-known trade mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s trade mark in its entirety and registered 15 domain names containing the ALSTOM trade mark and two containing a misspelling of the mark is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. 14 of the 17 Domain Names resolved to parking pages containing pay-per-click links. There is a clear intention to attract for commercial gain Internet users to the websites connected to these Domain Names by creating a likelihood of confusion with the Complainant’s trade mark. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
With respect to the three domain names, <alsthom-sucks.com>, <alsthomsucks.com> and <alstomshop.com> which did not have active websites at the time the Complaint was filed, the consensus view is that the lack of active use of the domain name does not prevent a finding of bad faith. Examples of circumstances that can indicate bad faith include the complainant having a well-known trade mark, no response to the complaint and the impossibility of conceiving good faith use of the domain name. The Panel concludes that as ALSTOM is a well-known trade mark, it is impossible for anyone unconnected to the Complainant to use the three Domain Names in good faith. Further, the Respondent did not file a response to the Complain. As such, taking into account all the circumstances, the Panel finds that the Domain Names were registered and are being used in bad faith.
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 Names, <alsthom-sucks.com>,<alsthomsucks.com>, <alstom-europe.com>, <alstomeurope.com>, <alstom-hydro.com>,<alstom-mall.com>, <alstommall.com>, <alstom-projects.com>, <alstom-services.com>, <alstom-shop.com>, <alstom-store.com>, <alstom-stores.com>, <alstomstores.com>, <alstom-support.com>, <alstomsupport.com>, <projectsalstom.com> and <alstomshop.com> be transferred to the Complainant.
Dated: March 28, 2011