WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom, General Electric Company v. Zheng Ming, Sichuan

Case No. DCO2017-0025

1. The Parties

The Complainants are Alstom of Saint-Ouen, France, and General Electric Company of Schenectady, New York, United States of America ("United States") (collectively the "Complainants"), represented by Lynde & Associes, France.

The Respondent is Zheng Ming, Sichuan of Chengdu, Sichuan, China, represented by Bijing Chofn Intellectual Property Agency Co., Ltd, China.

2. The Domain Names and Registrar

The disputed domain names <gealstom.co> and <gecalstom.co> are registered with 1API GmbH (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 24, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2017. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended until August 18, 2017. The Response was filed with the Center on August 18, 2017.

The Center appointed Francine Tan as the sole panelist in this matter on August 24, 2017. 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 Complainants, Alstom of France ("Alstom") and General Electric Company of the United States ("the GE Company" or "GEC"), requested a consolidation of the proceeding involving the disputed domain names as the Complainants have a common grievance against the Respondent and it would be equitable and procedurally efficient to permit the consolidation. Each of the disputed domain names affects the Complainants' individual rights in the same way. Furthermore, in 2015, GEC bought Alstom's power and grid business to develop its own energy division. Therefore, the Complainants have a common legal interest in the Complaint.

A Panel Order was issued on September 12, 2017, in which the Panel requested the Complainants' response and further submissions in response to the submission of the Respondent's Chinese trademark registrations for GEALSTOM and GECALSTOM. The Panel also requested additional clarification from the Respondent. The Complainants submitted their comments on September 18, 2017, and the Respondent submitted her comments on September 25 and 26, 2017.

4. Factual Background

Alstom was established in 1928 and is one of the world's leading companies offering transport infrastructures. Alstom is located in more 60 countries, with around 32,000 professionals in its employ. In Asia alone, it employs around 3,200 professional staff. Alstom has operated in China, where the Respondent is located, for more than 30 years, providing vital equipment and services for the power generation and rail transportation markets. In April 2015, Alstom concluded a contract for the delivery of 30 tramways in the Songjiand District of Shanghai.

Alstom has registered the trademark ALSTOM in many jurisdictions around the world, including in China. Its trademark registrations include International Registration No. 706292 (registered on August 28, 1998), 706360 (registered on August 28, 1998) and European Union Trade Mark Registration No. 948729 (registered on August 8, 2001).

Alstom has registered numerous domain names under various generic and country code Top-Level Domains that reflect its ALSTOM trademark, including:

<alstom.com> (registered from January 20, 1998),
<alstom.cn> (registered from July 7, 2004),
<alstom.co.uk> (registered from June 15, 1998),
<alstom.org> (registered from April 1, 2000),
<alstom.eu> (registered from April 1, 2006), and
<alstom.biz> (registered from November 19, 2001).

The above-mentioned and other domain names of Alstom redirect to its group website at "www.alstom.com".

The GE Company was established in 1878. It engages in the fields of technology, energy, industrial and financial services, providing a wide range of products and services to customers in more than 100 countries. Its revenue in 2015 was approximately USD 117.4 billion. The GE Company has been using the initials "GE" and "GEC" in commerce since 1899. It has sold billions of dollars' worth of products and services under the GE marks and has spent billions of dollars advertising the GEC trademark. It employs around 305,000 people around the world.

The GE Company holds numerous trademark registrations that comprise the "GE" and "GEC" elements, including Chinese Trademark Registration Nos. 547476 (registered on March 30, 1991) and 556960 for GEC (filed on April 9, 1990), Chinese Trademark Registration No. 762857 for GEC (registered on November 29, 1993), International Registration No. 910197 (registered on November 9, 2005 designating China amongst many other countries) and International Registration No. 910465 (registered on November 10, 2005 designating China amongst many other countries).

The Complainants have been commercially linked since at least 1928. The activities run together by Alstom and the GE Company are presented on the website "www.ge-alstom.com". The Complainants are the registrants of numerous domain names including the elements "GE" and "GEC" as well as "ALSTOM" and "ALSTHOM", e.g.:

<gecalsthom.com> (registered on December 25, 2008),
<gec-alsthom.com> (registered on September 21, 2010),
<gec-alstom.co> (registered on May 8, 2015),
<ge-alstom.co> (registered on October 16, 2015), and
<ge-alsthom.com> (registered on April 24, 2014).

The disputed domain names were registered on September 19, 2016. They resolve to inactive websites. On January 17, 2017, Alstom's representative sent a cease-and-desist letter in Chinese to the Respondent and to request a transfer of the disputed domain names. The letter was sent by email; the postal address of the Respondent was not complete or false so the registered letter could not be sent. Further reminders by email were sent in February and March 2017. No replies were received from the Respondent.

5. Parties' Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant's ALSTOM, GE and GEC trademarks. The disputed domain names combine the element "GE" or "GEC" with the element "ALSTOM". These marks of the Complainants are recognizable. The element "gec" corresponds to the well-known acronym of the complete corporate name of the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain names. It is not affiliated in any way to the Complainants. The Complainants have not authorized, licensed or permitted the Respondent to register the disputed domain names or other domain names incorporating their trademarks. The Respondent has not, to the best of the Complainants' knowledge, applied for or obtained any trademark registrations related to the terms "ALSTOM", "GE" or "GEC". The Respondent is not commonly known under the names "ALSTOM" or "GE" or "GEC". The Respondent has not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

The disputed domain names were registered and are being used in bad faith. They incorporate the Complainants' said trademarks and were registered long after these marks had become well known. In view of the fame of the ALSTOM, GE and GEC trademarks, it is virtually impossible for the Respondent not to have been aware of the Complainants' activities at the time it registered the disputed domain names. The disputed domain names were registered in September 2016, at a time when public announcements had already been made in the national and international press of the merger deal between Alstom and the GE Company. The merger of the Complainants was made public since at least as early as April 30, 2014.

Further, the Respondent gave false or incomplete registration information and has intentionally not provided its real identity. The Respondent's company name was identified as "Sichuan", which is incomplete and does not exist. These constitute additional evidence of its bad faith when registering the disputed domain names. The inactivity of the Respondent's websites does not constitute fair and legitimate use of the disputed domain names. The only reason why the Respondent registered the disputed domain names was to take unfair advantage of the significant reputation in the ALSTOM, GE and GEC trade marks. These disputed domain name registrations are detrimental because it means that the rightful owners, namely the Complainants, are unable to register the ".co" version of the combination of their trademarks. The disputed domain names are also likely to lead the public to assume that the websites to which they resolve are associated with the Complainants.

B. Respondent

The Respondent filed a Response. She argued that:

(i) The relevant portions of the disputed domain names, i.e. "gealstom" and "gecalstom", are quite different from ALSTOM, GE and GEC. Internet users would not read the disputed domain names as "ge-alstom" and "gec-alstom". The ALSTOM, GE and GEC marks are not "inherently recognizable" within the disputed domain names and they differ conceptually, visually and phonetically. The dispute domain names are all in lower case and GE, GEC nor ALSTOM are not highlighted. There is therefore a very low chance that Internet users will associate the disputed domain names with the said trademarks of the Complainants.

(ii) There is no evidence that GE, GEC and ALSOM are well known trademarks. The influence of the said marks in daily life is limited. For consumers in irrelevant markets, they would not know or have heard of GE, GEC or ALSTOM.

(iii) The disputed domain names are originally created by the Respondent. It was designed to be read as "geal-stom" and "gecal-stom", respectively. Since these disputed domain names are original and the first use is by the Respondent in China, the Respondent therefore claims legitimate rights in the disputed domain names.

(iv) The Respondent has trademark rights in the disputed domain names. On December 23, 2014, the Respondent filed trademark applications with the Chinese Trademark Office for protection in relation to goods and services in Classes 9, 35, 37 and 42. These marks include "GEALSTOM" and "GECALSTOM". The applications were filed in the name of 四川诺曼菲斯能源技术有限公司 (in English, "Sichuan Morman Fiss Sustainable Energy Technology Co., Ltd."). The Respondent and Sichuan Mormon Fiss are "interconnected or associated". The Respondent is the representative of Sichuan Mormon Fiss. The Respondent has a business connection to Sichuan Mormon Fiss and therefore the Respondent claims legitimate rights in the disputed domain names.

(v) The Respondent has a bona fide intention to use the disputed domain names and has "made the necessary effort and preparation to attempt to use the domain names commercially or noncommercially".

(vi) The GEALSTOM and GECALSTOM marks were registered in China under the name of Sichuan Mormon Fiss and since the Respondent is "interconnected" with this company, the registration of the disputed domain names was based on its legitimate prior rights. The Respondent has no intention to sell, rent or transfer the disputed domain names to the Complainants. It is not a business competitor of the Complainants and does not intend to hamper the Complainants' business.

6. Parties' Contentions (Supplemental Filings Pursuant to Panel Order)

A. Complainants

The Complainants argued:

(a) The Chinese trademark registrations for GEALSTOM and GECALSTOM referenced by the Respondent are not in the name of the Respondent but a Chinese company with the translated name "Sichuan Morman Fiss Sustainable Development" ("Sichuan Mormon Fiss"). There is no document evidencing the relationship between the Respondent and Sichuan Mormon Fiss.

(b) Even if the Respondent produces evidence of a relationship with Sichuan Mormon Fiss, the Respondent still has no rights or legitimate interests in the disputed domain names. The Respondent failed to provide Registration Certificates of the GEALSTOM and GECALSTOM design marks. Sichuan Mormon Fiss is not the owner of the disputed domain names. Even if there is a relationship between Sichuan Mormon Fiss and the Respondent, this does not demonstrate that the Respondent has rights or legitimate interests in the disputed domain names. Trademarks registered in the name of a company cannot accord a legitimate interest in a domain name in the name of an individual, even if the individual is a representative of the company.

(c) The Respondent seeks to demonstrate a legitimate interest in the registration of the disputed domain names by relying on trademarks which infringe the Complainant's rights. Moreover, Alstom opposed the registration of the invoked GEALSTOM and GECALSTOM design marks was opposed, which shows that the owner of these marks has not authorized the filing of the marks. Although the opposition was rejected, the matter is not final and the legal remedies are not exhausted. The disputed domain names, like the GEALSTOM and GECALSTOM design marks, were filed unlawfully without the Complainants' consent.

(d) The aforesaid shows bad faith by the Respondent. Further, the GEALSTOM and GECALSTOM design marks were applied for at a time when public announcements had already been made about 8 months before, in national and international press of the merger of the GE Company and Alstom. The GEALSTOM and GECALSTOM design marks are strongly similar to a logotype adopted by the Complainants in the 1990s in the field of transportation.

(e) There is a recurring behavior of the Respondent and its supposed linked entities which has to be noted. The Chinese trademark database in the Chinese name of Sichuan Mormon Fiss shows applications for marks such as AEGALSTHOM, UKGEC, UGE and GECNORMAFIX. Further the Chinese International Economic and Trade Commission responsible for deciding domain name disputes with the extension ".cn" ordered the transfer of the domain names <alsthom-ge.cn>, <alstom-ge.cn>, <alsthom-gec.cn>, <alstom-gec.cn>, <ge-alsthom.cn>, <gealsthom.cn>, <ge-alstom.cn>, <gealsthom.cn>, <gecalsthom.cn>, <gec-alsthom.cn>, <gecalstom.cn> and <gec-alstom.cn> to Alstom, notwithstanding the invoked GEALSTOM and GECALSTOM design marks (the "CIETC decision").

(f) The disputed domain names have remained inactive since their registration. No fair and legitimate use of the disputed domain names has been proven.

B. Respondent

The Respondent argued in response:

(i) That she (the Respondent, an individual) is an employee by Sichuan Mormon Fiss and her social insurance is paid by the company. In light of this "business association" with Sichuan Mormon Fiss, she has legitimate rights in the disputed domain names.

(ii) The oppositions filed by the Complainant against the GEALSTOM and GECALSTOM design marks failed. The GEALSTOM and GECALSTOM design marks are officially registered.

(iii) The GEALSTOM and GECALSTOM design marks were originally devised by the Respondent and the disputed domain names were based on these marks.

(iv) The Complainants provided no evidence that the Respondent knew of the merger before the disputed domain names were registered.

7. Discussion and Findings

7.1 Preliminary Issue: Consolidation of the Complainants

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states at section 4.11.1 that: "paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation."

The Panel is of the view that the request for consolidation should be accepted. The Complainants each have rights in the ALSTOM, GE and GEC marks, respectively and they have a common grievance and common legal interest. The Panel agrees it would be procedurally efficient to deal with the issues in one proceeding, given the circumstances of this case. The Respondent has not responded on this issue. In any event, the Panel does not see that the Respondent would suffer any prejudice from consolidation.

As for the remedy sought by the Complainants, if they succeed, it has been noted that the Complainants have specifically requested that the disputed domain names be transferred to Alstom.

7.2. Substantive Issues

The Policy requires a complainant to establish all three elements of paragraph 4(a). The Complainants have the burden of proof.

A. Identical or Confusingly Similar

The Complainants have established they each, respectively, have trademark rights in the marks ALSTOM, GE and GEC. These letters and words can be found in the disputed domain names, with no other additional elements, apart from the gTLD ".co". It is a well-established principle that the gTLD has no bearing on the issue of the identity or confusing similarity between a domain name and a complainant's trademark. Therefore, the only issue to be considered is whether the elements "gealstom" and "gecalstom" in the disputed domain names are identical or confusingly similar to the Complainants' trademarks. The Panel finds that the disputed domain names are identical to the marks (i) GE and ALSTOM and (ii) GEC and ALSTOM, respectively, being a plain combination of the Complainants' marks.

The Complainants have therefore satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In this case, the Panel finds that the Complainants have established by their Complaint and Supplemental Filings a prima face case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden thereupon shifted to the Respondent to show that she has rights or legitimate interests. In this instance, the Respondent produced evidence of Chinese trademark registrations for the marks GEALSTOM and GECALSTOM and made an assertion of a "business relationship" with the trademark registrant, Sichuan Mormon Fiss. However, there is nothing in the evidence produced by the Respondent which establishes the so-called "business relationship", the Respondent being at most apparently merely an employee. There is nothing which explains the Respondent's alleged rights to register the disputed domain names on the basis of the trademark registrations owned by Sichuan Mormon Fiss. Mere employment by Sichuan Mormon Fiss does not translate into rights or legitimate interests in the disputed domain names. There is a stark absence of any logical connection or nexus between the Respondent and Sichuan Mormon Fiss which lends weight to the argument that the Respondent has rights or legitimate interests by virtue of her employment by Sichuan Mormon Fiss and her employer's Chinese trademark registrations. Moreover, the Panel, whilst accepting the fact that the Chinese trademark registrations for the GEALSTOM and GECALSTOM design marks subsist on the Chinese trademarks register, is also mindful of the fact that this state of affairs is still considered unresolved and unsettled by the Complainants.

Additionally, while the Panel need not make a determination on the status of the Respondent's relied-upon marks, it notes from section 2.12.2 of the WIPO Overview 3.0 that:

"The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP…"

Given the evidence submitted by the Complainants regarding the Respondent's relied-upon marks and the pattern of questionable trademark and domain name registrations by Sichuan Mormon Fiss, the Panel is reluctant to find that the Respondent has rights or legitimate interests in the disputed domain names on the basis of the Chinese trademark registrations for the GEALSTOM and GECALSTOM design marks.

The Panel therefore finds that the Complainants have satisfied the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, shall be evidence of the registration and the use of a domain name in 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 online 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 Panel finds that the Respondent's choice of the disputed domain names which are a combination of the initials "GEC" and the ALSTOM trade mark, respectively, of the GE Company and Alstom (which have a business connection through the merger deal), not to be pure coincidence. The Respondent notably did not deny any prior knowledge of the Complainants. Against the backdrop of the CIETC decision wherein the domain names <alsthom-ge.cn>, <alstom-ge.cn>, <alsthom-gec.cn>, <alstom-gec.cn>, <ge-alsthom.cn>, <gealsthom.cn>, <ge-alstom.cn>, <gealsthom.cn>, <gecalsthom.cn>, <gec-alsthom.cn>, <gecalstom.cn> and <gec-alstom.cn> were transferred to Alstom and the fact that the design of the GEALSTOM and GECALSTOM Chinese registered marks are strongly similar to the logotype adopted by the Complainants in the 1990s (in relation to which the Respondent failed to respond or rebut), the Panel concludes that the Respondent's intention in registering the disputed domain names must have been to prevent the Complainants, as owners of the respective trade marks from reflecting the marks in a corresponding domain name. There has indeed been apparently a pattern of such conduct, if indeed the Respondent is affiliated with Sichuan Mormon Fiss.

The Panel is not persuaded by the Respondent's arguments and finds on a balance of probabilities that the registration and use of the disputed domain names have been in bad faith.

The Panel therefore concludes that the third element of paragraph 4(a) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <gealstom.co> and <gecalstom.co> be transferred to the first Complainant, Alstom.

Francine Tan
Sole Panelist
Date: October 5, 2017