The Complainant is Alcatel Lucent of Boulogne-Billancourt, France, internally represented.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Bin G Glu, G Design of Taiyuan, Shanxi, China.
The disputed domain name <alcatelmobile.com> is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2016. On August 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 7, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2016.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on October 13, 2016. 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 is the owner of the ALCATEL trademark in a number of jurisdictions, including international registration number 526405, registered on May 11, 1988 covering, inter alia, telecommunications services.
The Complainant has developed a worldwide business in the telecommunication equipment and services sector.
One of the Complainant’s licensees has recently launched a new website at “www.alcatel-mobile.com”.
The disputed domain name <alcatelmobile.com> was registered on April 12, 2004. The disputed domain name resolves to a parking page that displays an advertisement for the sale of the disputed domain name as well as sponsored links for other competitive mobile products and services.
The Complainant alleges that the disputed domain name combines the distinctive trademark ALCATEL with the generic word “mobile”, commonly used in connection with telecommunications. Therefore, <alcatelmobile.com> is confusingly similar to the trademark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has granted no permission to the Respondent to register the disputed domain name. Besides, the Complainant states that to the best of its knowledge the Respondent owns no rights as trademark, company name or otherwise in the name “Alcatel”.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. In respect to the registration, the Complainant contends that after more than 30 years the ALCATEL trademark has strong reputation and is widely known in the telecommunication industry. Thus, by registering a well-known trademark as a domain name the Respondent could not ignore the existence of the Complainant and its rights in the ALCATEL trademark. Indeed, the Complainant alleges that the ALCATEL trademark is unique in the sense that there exists no third-party’s identical trademark in any country.
Besides, the Respondent registered the disputed domain name via a “proxy” service. This service offered parking page links on the website at the disputed domain name <alcatelmobile.com> with the mention “This domain name may be for sale. Click here for more info”. Such offer suggests that the disputed domain name was registered by the Respondent with the purpose to resell it to the Complainant. The recent website launched by one of the Complainant’s licensees shows current interest and need for the purpose of developing its business. The Respondent’s registration prevents such use.
Further, the Complainant contends that lack of use is tantamount to “passive holding” which satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain name “is being used in bad faith by a Respondent”.
The Respondent did not reply to the Complainant’s contentions.
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
The Complainant has provided clear evidence of its registration and use of the trademark ALCATEL.
The addition of a generic word such as “mobile” is irrelevant in terms of distinctiveness. Previous UDRP panels have consistently found that the addition of merely generic or descriptive wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy. Therefore, the Panel is prepared to accept the submission of the Complainant that the addition of a generic word “mobile” to the Complainant’s trademark ALCATEL to form the disputed domain name <alcatelmobile.com> is insignificant and consequently the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel therefore concludes that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. See Industria Metalúrgica Scanavini S.A. v. Terra Serve, WIPO Case No. D2013-0980.
For such finding the Panel takes into account that there is no evidence that the Respondent owns any trademark rights in the “alcatel” term, the Respondent has not received authorization of the Complainant to register the disputed domain name, and that ALCATEL is a widely-known mark.
Moreover and as the Complaint alleges, the Respondent appears only to have used the disputed domain name in connection with a parking website displaying sponsored links, and offering the disputed domain name for sale. Here some of the sponsored links refer to competitors of the Complainant. In the Panel’s view, such a use may unfairly take advantage of the Complainant’s trademark, potentially providing revenue to the Respondent, while also likely having the effect of diverting Internet users looking for the Complainant’s website to the websites of the Complainant’s competitors. This, in the Panel’s view, is not a bona fide offering of goods and services. See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1: “Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”. However, the Respondent did not come forward with such appropriate allegations or evidence, noting that the use of the disputed domain name is not of a nature that would give rise to rights or legitimate interests within the meaning of the Policy. The Panel further notes that none of the other circumstances set out in paragraph 4(c) of the Policy appears to apply to the facts of this case.
Accordingly, the Panel finds that the Respondent lack rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy.
The disputed domain name is confusingly similar to the well-known ALCATEL trademark. The addition of the term “mobile” evokes precisely the services offered by the Complainant and associated with its marks. Accordingly, it is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have attempted to register the disputed domain name.
Therefore, it is inconceivable that the Respondent chose to include the word “alcatel” in the domain name by accident and even more if it is taken into account that the term “alcatel” is a coined term.
The disputed domain name was registered via a “proxy” service corporation who apparently offered the domain for sale. The fact is that the disputed domain name <alcatelmobile.com> was offered at the best bid. Being a fact that ALCATEL is a well-known mark such an offer is evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy.
Further, bad faith use and registration also have been established under paragraph 4(b)(iv) of the Policy, which provides that it shall be evidence of bad faith use and registration if the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location or of a product or service on [its] website or location”. Here, the automatically generated sponsored links on the Respondent’s website refer to competitors of the Complainant. Whether the Respondent or the proxy corporation were responsible for such advertisement has little or no impact for the purpose of this element. As detailed above, such use likely has the effect of generating revenue via the association of the disputed domain name with the Complainant’s trademark. Therefore, the Panel concludes that the use of the disputed domain name is in bad faith.
The Panel finds that the Complainant has proven that the disputed domain name was registered and used in bad faith.
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 name <alcatelmobile.com> be transferred to the Complainant.
Date: October 21, 2016