WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Pankaj Tomar
Case No. D2011-2031
1. The Parties
The Complainant is Alstom of Levallois Perret, France, represented by Dreyfus & associés, France.
The Respondent is Pankaj Tomar of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <alstomsolar.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 17, 2011, GoDaddy.com, Inc. 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 November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Response was filed with the Center on December 12, 2011.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 22, 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 Complainant informed the Center and the Respondent by email of December 22, 2011 of the settlement discussions with the Respondent and informed of its willingness to suspend the proceedings for 30 days. The Respondent did not object to the suspension of the proceedings nor did it deny its involvement in settlement discussions with the Complainant. In fact, the record shows that the Complainant and Respondent exchanged email communications on December 22 and 23, 2011, affirming that they were in settlement discussions. The record further shows that the Complainant conveyed settlement terms to the Respondent via email on December 23, 2011 and requested the Respondent’s reply.
Although the record shows an absence of a formal request by both parties to suspend the proceedings, it appeared, from this Panel’s review, that the parties were involved in settlement discussions. Given the foregoing, and the absence of prejudice to either party, the Panel had determined that suspension of the proceeding was in order. However, before the Center could issue the Administrative Panel Procedural Order to suspend the proceedings to the parties, the Complainant informed the Center by email of January 4, 2012, that the settlement negotiations were unsuccessful and requested resumption of the proceedings.
Accordingly, the Panel decided to proceed to issue a decision and notified the parties as such on January 4, 2012. However, given the interruption caused by request for suspension and subsequent communications so close to the original January 5, 2012 date by which the decision was to be submitted to the Center, the Center set a new date of January 12, 2012.
It is noted that following the December 12, 2011 due date for the Respondent’s response, both the Complainant and the Respondent continued to send the Center communications to advance each party’s respective positions. Among other things, this included a formal supplemental filing by the Complainant on January 4, 2012.
4. Factual Background
The Complainant is a major French industrial group which holds interests in power generation and transmission, and transportation sectors. It is, among other things, a leader in electrical grid solutions, and is involved in the solar market via a partnership with Bright Source Energy. It conducts its activities on a global basis, including in India, where it has operated for over 100 years and employees approximately 4,000 people.
The Complainant is the registered owner of the ALSTOM trademark throughout the world, including International and Community Registrations for the ALSTOM mark claiming a wide cross-section of goods and services, as well as Indian Registrations dating to as early as September, 1998. The Complainant is also the owner of several domain name registrations composed, in whole, of the ALSTOM trademark.
The Respondent Pankaj Tomar is an individual of Delhi, India. The Respondent allegedly obtained the Disputed Domain Name as his family’s domain name.
5. Parties’ Contentions
The Complainant’s main arguments are the following:
1. Identical or Confusingly Similar
The Complainant contends that the Disputed Domain Name is identical to its registered ALSTOM trademarks and domain names. Accordingly, the Complainant argues that the Disputed Domain Name is identical and/or confusingly similar to a trademark in which it has rights.
2. Rights or Legitimate Interests
The Complainant contends that:
- The Respondent is not affiliated with the Complainant in any way, that the Complainant has not authorized the Respondent to use and register its ALSTOM trademark or to seek the registration of any domain name incorporating said mark.
- The Respondent has no prior rights or legitimate interests in the Disputed Domain Name and has never used the term “alstom” in any way before or after the Complainant started its business.
- The Respondent is not known under “alstom” or any similar term.
- The Respondent never responded to the Complainant.
- The Respondent has not used nor made any demonstrable preparation to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.
- The Respondent has been using the Disputed Domain Name to direct Internet users to a web page with the title “Alstom Solar World Leader in Solar Power,” potentially misleading Internet users to wrongly believe that this page is Complainant’s official website for solar activities.
- Following the sending of a cease and desist letter by the Complainant to the Respondent, the Disputed Domain Name mentioned that “ALSTOMSOLAR” stands for the following:
A - Adya
L - Loves
S - Shorya (son)
Tom - Family name
Solar - Loves sun … And fascinated about sun that it …
Accordingly, the Complainant contends that all of the foregoing show that the Respondent has no rights or legitimate interests to the Disputed Domain Name.
3. Registered and Used in Bad Faith
The Complainant contends that the Respondent knew or must have known of its ALSTOM trademark at the time he registered the Disputed Domain Name because it is well-known throughout the world and especially in India, and therefore he registered the Disputed Domain Name in bad faith.
The Complainant also contends that the registration of a domain name that reproduces its own mark in its entirety and merely combines same with the generic and descriptive term “solar” shows that the Respondent had the Complainant in mind when it registered the Disputed Domain Name and proves the Respondent’s registration in bad faith.
Similarly, the Complainant’s contention that the Disputed Domain Name resolves to an Internet page showing “Alstom Solar World Leader in Solar Power” evidences the Respondent’s knowledge of the Complainant’s ALSTOM trademark, and this in turn, evidences the Respondent’s bad faith.
The Complainant also contends that the Respondent registered the Disputed Domain Name in order to prevent the Complaint from reflecting its mark and new activities in solar energy through the use of the Disputed Domain Name.
Finally, the Complainant contends that the Respondent’s ownership of more than 100 domain name registrations may be to generate pay-per-click revenues and such cannot be considered use in good faith.
The Respondent contends that it registered the Disputed Domain Name for the benefit of his family, namely after the names of his wife and son. The Respondent further claims that he has no intention to use the Disputed Domain Name in connection with any solar business, and that he has never attempted to sell any of his 107 domain name registrations.
6. Discussion and Findings
6.1 Supplemental Filings
The Center informed the parties on multiple occasions that the admissibility of any supplemental filings (i.e., written claims made after the December 12, 2011 deadline for the Response) (hereinafter collectively referred to as “Supplemental Filings”) would be decided by the Panel in its sole discretion pursuant to paragraphs 10 and 12 of the Rules.
The Panel is compelled to note the unusually high number of Supplemental Filings by both parties and the absence of any legitimate justification for such filings (i.e., the discovery of new evidence or other similar substantive basis), other than to reiterate positions that had already been articulated. Given these circumstances, this Panel has determined that none of the communications by and between the parties and none of the filings of record following December 12, 2011 will be considered for purposes of rendering the final decision in this case. Accordingly, the decision in this case will be based on the Complainant’s Complaint and the Respondent’s Response only.
6.2 Analysis of the Complaint
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed Domain Name 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel must 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, pursuant to paragraph 15(a) of said Rules.
A. Identical or Confusingly Similar
The Complainant has established its rights in the mark ALSTOM by virtue of the evidence of its numerous trademark registrations and its various registered domain names composed of the ALSTOM mark. The Panel is therefore satisfied that ALSTOM is a registered trademark owned by the Complainant.
The next question is whether the Disputed Domain Name is identical or confusingly similar to the ALSTOM trademark. The answer is that it is. The Disputed Domain Name consists, first of all, of the entirety of the Complainant’s ALSTOM trademark. Further, the Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM trademark when the “.com” TLD is discounted.
Secondly, although the Disputed Domain Name contains the additional word “solar” it is considered a generic and/or descriptive term that does not detract from nor minimize the effect and dominance of the ALSTOM trademark in the Disputed Domain Name.
For the above reasons, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s ALSTOM trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Disputed Domain Name. Those circumstances are described as follows:
(i) before any notice to you 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 (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 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 Complainant owns trademark registrations for ALSTOM that are registered in India and internationally. The Complainant also owns various domain names composed of the ALSTOM trademark. On the other hand, the Respondent does not appear to own a registered trademark with the term “alstom” and does not otherwise appear to trade under the name “alstom.” Moreover, the Complainant has not authorized, licensed, or otherwise consented to the use of the mark ALSTOM by the Respondent or any person operating the website to which the Disputed Domain Name directs Internet users. Further, the Respondent has not provided any evidence that it is commonly known by the Disputed Domain Name. In fact, the Respondent acknowledges that it merely registered the Disputed Domain Name for his wife and son, without evidence in support, nor further explanation as to the use of the Disputed Domain Name. Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
For the above reasons, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The evidence shows that the Respondent had attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s ALSTOM trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In support, the Panel notes the Complainant’s evidence that the Disputed Domain Name resolved to an Internet page showing “Alstom Solar World Leader in Solar Power.” This demonstrates the likelihood that the Respondent had knowledge of the Complainant’s ALSTOM trademark.
Accordingly, the Panel finds that the only credible explanation for the use of the Disputed Domain Name is to take advantage of the similarity between the Disputed Domain Name and the Complainant’s website to draw Internet users to that website for commercial advantage. No convincing evidence has been presented showing that the Respondent has any connection to the name “alstom.”
For the above reasons, the Panel finds that the Complainant has shown that the Disputed Domain Name has been registered and is being used in bad faith by the Respondent.
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 <alstomsolar.com> be transferred to the Complainant.
Andrew J. Park
Dated: January 13, 2012