WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM , ALSTOM Holdings v. Dmitry Sychov
Case No: D2002-0927
1. The Parties
The Complainant is ALSTOM and ALSTOM Holdings, 25 avenue Kléber, 75116 Paris, France; represented by Sophie Coignet of France.
The Respondent is Dmitry Sychov, Dachny Prospect 29/2/3, 198217 Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <gecalsthom.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2002. On October 8, 2002, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On October 8, 2002, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 14, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2002. No Response was filed with the Center. On November 6, 2002, the Center formally notified the Respondent that it had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of its response in the present case.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 11, 2002. 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.
4. Factual Background
The following facts appear in the complaint and have not been contested by the Respondent:
The Complainant is a French company that specialises in energy and transport infrastructures, providing its customers with components, systems and services in the areas of power generation, power transmission, power distribution, power conversion and rail and marine transportation. The Complainant has offices in more than 70 countries, including Russia, the United States, Canada, Brazil, Mexico, India, Turkey, South Africa, China, and Australia, currently employs 120,000 people and has annual sales in excess of 22 billion Euro. Complainant is listed on the Paris, London and New York stock exchanges. Complainant has marketed and sold goods and services under the mark ALSTOM since its Initial Public Offering on June 22, 1998. Prior to this date, Complainantís trade name was GEC ALSTHOM. GEC ALSTHOM was created in December 1988 through a merger of General Electric Companyís ("GEC") power division, known as GEC Power Systems, and Compagnie Générale díElectricitéís ("CGE") energy and transportation businesses, known as ALSTHOM. CGE had been using the mark ALSTHOM in connection with these areas of its operations since 1961. CGE and GEC jointly owned GEC ALSTHOM with each entity having a fifty- percent share in the new company. The merger of Franceís and the United Kingdomís established power companies into GEC ALSTHOM resulted in one of the largest industrial suppliers in the world, with a name that was already renowned.
According to the documentary evidence submitted, Complainant has developed valuable goodwill, trademark and common law rights in its marks throughout the world. The ALSTHOM and ALSTOM marks are distinctive and serve to identify the source of Complainantís products and services to consumers. Complainant has documented that it currently owns the following trademark registrations:
French registration for the mark ALSTHOM, No. 1 596 583, filed on February 15, 1961, with the renewal notification for goods and services in classes 1, 2, 4, 6, 7, 8, 9, 11, 12, 16, 17, 24, and 35 to 42;
International registration for the mark ALSTHOM, No. R 375 054, filed on May 5, 1966, and renewed on May 5, 1986, in classes 1, 2, 7, 8, 9, 11 and 12;
International registration for the mark ALSTHOM, No. R 312 805, filed on December 14, 1970, and renewed on December 14, 1990, in classes 1, 2, 6, 7, 8, 9, 11, 12, 16, 17, 35 and 42;
U.S. registration for the mark ALSTHOM, No. 960,670, registered on June 12, 1973, and renewed on June 12, 1993, in classes 2, 6, 7, 9, 11, 17, 37 to 42;
Russian registration for the mark ALSTHOM, No. 42471 registered as from January 8, 1971, and last renewed for ten years as from July 8, 2001;
French registration for the mark ALSTOM, No. 98 727 759, filed on April 10, 1998, in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, and 35 to 42.
International registration for the mark ALSTOM, No. 706 292, filed on August 28, 1998, (under French priority) in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, and 35 to 42;
French registration for the mark ALSTOM, No. 98 727 762, filed on April 10, 1998, in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, and 35 to 42;
International registration for the mark ALSTOM, No. 706 360, filed on August 28, 1998 (under French priority), in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, and 35 to 42;
Community registration for the mark ALSTOM, No. 000948729, filed on September 19, 1998 (under French priority), in classes 1, 2, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, and 35 to 42;
On February 13, 2001, the Respondent registered the domain name <gecalsthom.com>.
Respondent is not a licensee of Complainant and is not otherwise authorised to use any of Complainantís trademarks nor Complainantís prior trade name.
On April 4, 2001, counsel for Complainant sent an e-mail to Respondent at the address given in WhoIs, demanding that Respondent transfer to Complainant the domain name.
On May 5, 2001, Respondent refused, saying that: "the domain name is <gecalsthom.com> not ALSTHOM.com or ALSTOM.com. It can be confusingly identical or can be not and only the Court will say the truth."
The Panel has received through WIPO one supplemental transmission from Complainant consisting of a copy of an e-mail sent by Respondent to Complainant on October 8, 2002. Because this submission was filed on October 8, 2002, a day after the Complaint was filed and prior to the transmission of case file to the Panel and because Complainant promptly submitted copy of the e-mail to the Panel and did so without rearguing the merits of the case, the Panel has concluded that it is appropriate to accept this supplemental submission. The Panel has not received any requests from Complainant or Respondent regarding further submissions or extensions of deadlines and has not found it necessary to request any further information from the parties.
See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 30, 2000) and Trans Continental Records, Inc. v. Compana LLC WIPO Case No. D2002-0105 (April 30, 2002).
5. Partiesí Contentions
The Complainant asserts that the domain name at issue is identical to Complainantís prior trade name GEC ALSTHOM and confusingly similar to complainantís current trademarks ALSTHOM and ALSTOM.
Complainant asserts that a domain name that contains two marks has been held to be confusingly similar to each of the individual marks, regardless of the relationship between the owners of the marks, see WIPO Case No. D2001-0420 Minnesota Mining and Mfíg Co. V. Belowcost, in this case the panel held that "where the trademarks of two separate companies are combined in a domain name, there is a likelihood of confusion between either mark and the domain name".
In addition, Complainant quoting WIPO Case D2000-1713 (February 8, 2001)Tata Sons Ltd. V. Ramadasoft, reports that the incorporation of a prior trade name within a domain name has been held to be confusingly similar to the current mark.
Complainant affirms that there is no evidence that Respondent has any rights or legitimate interests in the domain name because (i) the terms "ALSTHOM" and "GEC" are not descriptive terms in which Respondent can claim it has an interest, (ii) there is no indication that Respondent uses the name GEC ALSTHOM as a trade name, is commonly known by that name, or operates a business with any legitimate relationship to the name. The WhoIs information indicates that Respondentís business name is "accelware"; (iii) Complainant never consented to the use by Respondent of its trademarks, trade name, former trade name and corporate name; (iv) Respondent does not have any relationship with Complainant that would entitle it to use Complainantís trademark.
To support the contention that Respondent has no legitimate interest in the contested domain name, the Complainant asserts that: there is no evidence that Respondent has used the domain name in connection with a bona fide business.
Complainant states that: in October 2001, the domain name resolved to a website that was operating as a search engine and proved links to a number of other websites. Sometime thereafter, the website became non-operational. Sometime in January 2002, Respondent reactivated the website and it is currently operational as a portal providing links to other websites that offer a variety of free merchandise. Upon information and belief, the linked websites are not related to Respondent. The only content posted on the website, other than these links, is the wording <gecalsthom.com>, appearing in non distinctive typeface at the head of the page.
Complainant further affirms that the above is not a legitimate use of the domain name, it has been recognised that the use of a confusingly similar domain name to redirect users to unrelated sites does not establish any rights in a domain name when the use is made in bad faith. See America On-Line, Inc. v. Zuccarini, WIPO Case No. D2000-1495 (January 22, 2001).
Finally Complainant asserts that the Respondent has registered and used the domain name <gecalsthom.com> in bad faith. In particular Complainant contends that the Respondent registered and used the domain name intentionally to benefit from the goodwill associated with the ALSTOM marks, i.e. Respondent has used Complainantís marks to intentionally attract, for commercial gain Internet users to its website.
Respondent has not contested the allegations in the Complaint.
6. Discussion and Findings
Respondentís failure to answer.
Paragraph 14 (a) of the rules directs that where the Respondent has defaulted in providing a response to the allegations of the complaint, the Panel is to proceed to a decision on the basis of the complaint. Paragraph 14 (b) further directs that the Panel shall draw such inferences from the undisputed allegations in the complaint, as the Panel considers appropriate.
Applicable rules and Principles of Law
Paragraph 15 (a) of the rules instructs the Panel of the principles the Panel is to use in resolving a dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that in order for the Complainant to prevail on the merits, the Complainant must establish that the following three elements exist with respect to the domain name in question: (i) the domain name registered by the Respondent 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of the registered trademarks ALSTOM and ALSTHOM, furthermore its former trade name was GEC ALSTHOM. Respondent has not challenged the validity of Complainantís trademarks and former trade name nor the similarity between the marks and the contested domain name.
The domain name <gecalsthom.com> incorporates in its entirety complainantís trademark ALSTHOM and it is identical to Complainantís former trade name GEC ALSTHOM.
The Panel believes that the domain name is confusingly similar to the registered trademarks in which the Complainant has rights because:
1) As affirmed in WIPO Case D2001-0420 (July 12, 2001) Minnesota Mining and Manufacturing Company v. Belowcost : "Where the trademarks of two separate companies are combined in a domain name, there is still a likelihood of confusion between either mark and the domain name."
2) The domain name is identical to Complainantís former trade name and similar to Complainantís current trademark, thus it is likely that the public would assume that there is a connection between the domain name and Complainant.
3) Both marks ALSTOM and ALSTHOM are distinctive terms without any alternate meaning. Thus the mere addition to the domain name of the term GEC is not sufficient to avoid confusing similarity with Complainantís trademarks.
B. Rights or Legitimate Interests
The Policy outlines (paragraph 4 (c)) illustrative circumstances which, if found by the Panel to be proved, shall demonstrate Respondentís rights or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii). These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondentís 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) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non commercial 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.
There is no evidence in the records that the Respondent has any rights or legitimate interests in respect of the contested domain name. Namely, there is no indication that Respondent uses the name GEC ALSTHOM as a trade name, is commonly known by that name, or operates a business with any legitimate relationship to the name; Complainant never consented to the use by Respondent of its trademarks, trade name, former trade name and corporate name; Respondent does not have any relationship with Complainant that would entitle it to use Complainantís trademark.
Furthermore, evidence in the records regarding the nature of the website associated with Respondentís domain name reveals that there is no relationship between the content or the purpose of the website and the domain name. As held in WIPO Case No. D2000-1495 (January 22, 2001).America On-Line, Inc. v. Zuccarini: "use of a domain name, which is confusingly similar to a registered trademark, to redirect users to unrelated sites does not establish any rights in a domain name when the use is made in bad faith".
Furthermore, though the names are being used by the Respondent, since the purpose appears to be to attract unwitting users to the Respondent site, for commercial gain. As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847 (October 12, 2000) "..use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." The Respondent has filed no response to the complaint and thus has not made any assertion of its rights to or interest in the domain name at issue. The Panel finds it appropriate to draw an adverse inference from the Respondentís failure to respond to the Complaint. Thus the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Respondent has failed to respond to the allegations made in the Complaint, and the Panel is permitted to draw such inference therefrom as it considers appropriate, under paragraph 14 (b) of the Rules. Quoting WIPO Case D2000-1713 (February 8, 2001) Tata Sons Ltd. V. Ramadasoft the Panel believes that "the Respondentís failure to present any evidence must be considered on the issue of bad faith. Failure of a party to submit evidence on facts in its control permits the Panel to draw an adverse inference regarding those facts. Here, the potential evidence of good faith registration and use was in Respondentís control. Respondentís failure to present any such evidence or to deny Complainantís allegations leads to the inference that the evidence would not have been favourable to Respondent or that the Respondent accepts the allegations of the Complainant."
The circumstances of the present case which have led to the conclusion by the Panel are:
1) Complainantís uncontested (by Respondent) claim about the world wide fame of its trademarks and related registrations and use of the trademarks also in Russia. 2) Respondent has registered a renowned trademark that is composed of an arbitrary term, in which it has no rights, as a domain name. 3) Respondent has given no plausible explanation for having chosen to register the contested domain name. 4) Respondent is not commonly known by the domain name registered. 5) The domain name is not related to Respondent. 6) Respondent has used the domain name (and corresponding website) to re-direct Internet users to other unrelated sites. 7) Respondentís self explanatory e-mail sent to Complainant on October 8, 2002, (after having received notification of Complaint), saying "I can not understand why you have hired WIPO for $1500 plus spend time filling the complaint instead of coming with the same money to me to deal something out".
The Panel considers that Respondentís conduct in respect of the domain name <gecalsthom.com> is at least in breach of paragraph 4 (iv) above. Namely, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
Based on the evidence presented, the Panel can only conclude that the Respondentís registration and holding of the domain name at issue amounts to an instance of bad faith. Therefore the panel finds that the Respondent has registered and used the domain name 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 name <gecalsthom.com> be transferred to the Complainant.
Date: November 21, 2002