WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom and ABB Asea Brown Boveri Ltd v. Claudette Drakes, Name Equities
Case No. D2014-1489
1. The Parties
The Complainants are Alstom of Levallois-Perret, France, and ABB Asea Brown Boveri Ltd of Zürich, Switzerland, represented by Lynde & Associes, France.
The Respondent is Claudette Drakes, Name Equities of Brooklyn, New York, United States of America (the "US").
2. The Domain Name and Registrar
The disputed domain name <abbalstom.com> (the "Disputed Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2014. On September 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 2, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2014. The Response was filed with the Center on October 8, 2014.
The Center appointed John Swinson as the sole panelist in this matter on October 22, 2014. 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 Complainants are:
- Alstom, a French company created in 1928 and incorporated in 1991. It is a global leader in power generation and rail infrastructures. It has a worldwide presence, including in the US; and
- ABB Asea Brown Boveri Ltd ("ABB"), a Swiss company incorporated in 1988. It is one of the largest global players in the market for electric power generation, transmission and distribution, industrial and building systems. It is also a world-leading supplier of industrial robots and modular manufacturing machines. It is known under the abbreviation ABB and also has a US presence.
The Complainants are competitors in the field of energy. They have previously been involved in a partnership. In 1999, Alstom's energy division merged with ABB in a 50/50 joint company known as "ABB ALSTOM Power". The next year, Alstom bought ABB's share in the joint company.
The Complainants own the following trade marks.
- Alstom owns numerous registrations for ALSTOM, for example, International Registration No. 706292 (registered August 28, 1998) and US Registration No. 4570546 (filed February 24, 2011, registered July 22, 2014).
- ABB owns numerous registrations for ABB, for example, International Registration No. 615830 (registered February 9, 1994) and US Registration No. 1777685 (registered June 22, 1993).
The Complainants also own numerous domain names that reflect their respective trade marks, all of which redirect to the relevant Complainants' main website.
The Respondent is Name Equities, which is in the business of registering, managing and developing domain names and websites on behalf of clients. In correspondence with the Complainant, the Respondent (Claudette Drakes of Name Equities) states that she registered the Disputed Domain Name on behalf of a client. In its Response, the Respondent submits that this client is a Mr. Abbal Stom, who operates a business selling health products which increase male libido at a local market in Guyana, South America. The Respondent attached a copy of a business registration certificate for Abbal Stom, which is dated March 7, 2013 from the Republic of Guyana.
The Respondent registered the Disputed Domain Name on June 15, 2013. The website at the Disputed Domain Name currently redirects to a page advertising energy drinks. The company that owns this website was unaware of this redirection and has no affiliation with the Respondent. In the past the website at the Disputed Domain Name has resolved to a parking page, which featured pay-per-click ("PPC") links relating to energy production.
5. Parties' Contentions
The Complainants' contentions are as follows.
The Complainants, who are competitors, seek to consolidate their disputes with the Respondent. They have a common legal interest. The Disputed Domain Name combines both their trade marks and this may lead users to think that the Complainants have made, or intend to make, a partnership. The commencement of different proceedings by each Complainant would be inefficient and unnecessary.
Identical or Confusingly Similar
The Disputed Domain Name is a combination of the highly distinctive trade marks of both Complainants. Both trade marks are fanciful terms with no specific meaning. Previous UDRP panels have considered the trade marks to be famous or well-known.
The combination of the trade marks of two separate companies in a domain name does not hinder a finding of confusing similarity, if that combination makes it likely that users will get confused as to the affiliation or sponsorship of the domain name or corresponding website. Given the Complainants are in the same industry and have partnered in the past, such user confusion is likely.
Rights or Legitimate Interests
The Respondent is not commonly known by the Disputed Domain Name. The Respondent claims that it registered the Disputed Domain Name on behalf of a client, but has provided no evidence of the client's rights in the Disputed Domain Name.
The Complainants have not authorized, licensed or permitted the Respondent to use their trade marks.
The Respondent has not made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a parking page containing PPC links, which likely generate revenue for the Respondent.
Registered and Used in Bad Faith
The Respondent is intentionally attempting to attract, for commercial gain, users to the website at the Disputed Domain Name. Due to the worldwide reputation of both of the Complainants (including in the US), the Respondent would have been aware of the ALSTOM and ABB trade marks when it registered the Disputed Domain Name. The Respondent could have informed itself of the Complainants' reputations by conducting a simple Google search.
The Complainants are skeptical of the Respondent's explanation that it registered the Disputed Domain Name to refer to its client's business name, as it has provided no evidence of this business name or any other information relating to this client.
The commercial nature of the website at the Disputed Domain Name is clear. The PPC links all relate to the same field as the Complainants' businesses, creating a likelihood of confusion.
The Respondent's contentions are as follows.
The Respondent acknowledges that the Response is late. It submits that the delay was due to the burden and expense required for its client to travel from a remote location in Guyana to provide evidentiary documents.
Identical or Confusingly Similar
The Respondent does not make any submissions in relation to this element.
Rights or Legitimate Interests
The Disputed Domain Name would not call to mind a partnership between the Complainants. The Respondent has rights or legitimate interests in the Disputed Domain Name as it reflects the name of its client's business.
The Complainants' trade marks do not cover dietary supplements and similar. The Respondent's client has a right to develop his own use of the name Abbal Stom in an unrelated field.
Additionally, the Respondent appears to submit that Abbal and Stom are common names (through providing data from "Name-List.net").
Registered and Used in Bad Faith
The Complainants have not proven that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name without being aware of the Complainants or their trade marks. The client was similarly unaware. Neither of the trade marks is well-known in Guyana.
The Complainants do not hold trade mark rights in "abbalstom", they hold separate trade mark rights in ABB and ALSTOM.
The links available at the website that the Disputed Domain Name resolves to have not been selected by the Respondent or its client, they are automatically generated. The Respondent informed the Complainants that it would remove any links that were of concern to the Complainants.
There are various other domain names which incorporate the Complainants' trade marks, and neither Complainant has complained about those domain names.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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 onus of proving these elements is on the Complainants.
A. Procedural Matters
Paragraph 10(a) of the Rules gives the Panel broad discretion in the conduct of the proceeding. In the present case, the Panel elects to exercise its discretion and receive and consider the late Response. The Panel is of the view that this acceptance will not prejudice the Complainants.
The Respondent has "engaged in common conduct that has affected the [C]omplainant's individual rights in a similar fashion" and it would be "equitable and procedurally efficient to permit the consolidation" (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0")). On this basis, the Panel finds it appropriate that the Complaint be brought by both Complainants.
The Respondent submits that it registered the Disputed Domain Name on behalf of a client. In its Response it refers to its client, a Mr. Abbal Stom, as the Respondent. In the absence of any evidence of an agency arrangement, the Panel has no basis on which to conclude that this is in fact the case. The registrant details provide that the registrant of the Disputed Domain Name is Claudette Drakes, Name Equities, and in the absence of any evidence to the contrary, will treat these entities as the proper Respondent.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights (i.e. the ALSTOM and ABB trade marks).
The Complainants assert that they own the relevant trade marks (being ALSTOM and ABB), and have provided evidence of ownership. The Panel accepts that the Complainants each individually own the ALSTOM and ABB trade marks as described.
The addition of generic Top-Level Domains (i.e. the ".com" suffix) may be disregarded when comparing the similarities between a domain name and a trade mark (see Missoni S.p.A. v. Ahmed Salman, WIPO Case No. D2007-1485 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429). Therefore, the Disputed Domain Name consists of a combination of the ALSTOM trade mark and the ABB trade mark.
Several UDRP panels have found that where the trade marks of two separate companies are combined in a domain name there is still a likelihood of confusion between either mark and the domain name (see e.g. Minnesota Mining and Manufacturing Company v. Belowcost, WIPO Case No. D2001-0420; ABB Asea Brown Boveri Ltd v. Mr. Gholami, Isfahan Micro Control Co. Ltd, WIPO Case No. D2012-0201 and Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236). The Panel finds that this is the case here. Internet users would likely think that both the Complainants were affiliated with, or sponsored the Disputed Domain Name and the associated website. The fact that the Complainants' businesses are in the same industry, and that the Complainants have previously partnered, would increase likelihood of this confusion.
In light of the above, the Complainants succeed on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainants have made out a prima facie case. This finding is based upon the following:
- the Complainants have not consented to the Respondent's use of their trade marks;
- currently, the Disputed Domain Name is being used to redirect Internet users to a website which advertises energy drinks. (This has likely been done because the Respondent's client allegedly operates a health libido stall in a South American marketplace.) The company behind this website was unaware of this redirection. This is not a fair commercial use of the Complainants' trade marks, nor does it constitute a bona fide offering of goods or services; and
- in the past, the website that the Disputed Domain Name resolved to appeared to be commercial in nature. It was a "link farm" website which directed Internet users to various goods and services relating to the Complainants' industry (including a link titled "Alstom"). The Disputed Domain Name is not a dictionary or common word and was not being used in a descriptive sense (i.e. to describe the sponsored links hosted). Accordingly, the Panel infers that it was being used to misleadingly divert Internet users. This was not a fair commercial use of the Complainants' trade marks, nor does it constitute a bona fide offering of goods or services.
The Respondent submits that its client, a Mr. Abbal Stom, has rights or legitimate interests in respect of the Disputed Domain Name as the Disputed Domain Name reflects both his personal name and his registered business name. In the absence of any evidence of an agency arrangement, it is the Respondent (i.e. Claudette Drakes, Name Equities) that requires rights or legitimate interests in the Disputed Domain Name, not its client.
Even if an agency arrangement had been proved, the Respondent has provided no evidence of its client's identity (such as a photocopy of a driver's license or passport). A certificate of business registration in Guyana has been provided. However, in the absence of any evidence of trading, the Panel finds that this certificate does not necessarily show legitimacy (see e.g., Land Rover v. Liumei, WIPO Case No. D2011-1402). Further, the Disputed Domain Name is not being used in relation to Mr. Abbal Stom's purported business (it redirects to a third party website).
In light of the above, the Complainants succeed on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent states that it is in the business of registering, managing and developing domain names and websites on behalf of clients. Due to the nature of its business, one would assume that the Respondent would be aware of the potential for domain names to infringe trade mark rights, and would have engaged in relevant searches prior to registration. Even brief enquiries (e.g. a simple Google search) would have brought up material regarding the Complainants' previous partnership. On the evidence provided, in the circumstances of this dispute the Panel concludes that the Respondent was "willfully blind" in failing to make these enquiries (see e.g., Sumol+Compal Marcas, S.A. v. BuyDomains.com, WIPO Case No. D2013-0566 and cases cited therein).
The Panel finds that the following further evidence bad faith registration and use:
- in the past, the Respondent has used the website at the Disputed Domain Name to direct users to goods and services which compete with the Complainants'. The Respondent would have received PPC revenue from the website. In light of this, the Panel infers that the Disputed Domain Name was registered, at least in part, in order to profit from the trade mark value (of both the ALSTOM and ABB trade marks) in the Disputed Domain Name; and
- the Respondent has redirected the Disputed Domain Name to a third party website, without the third party's knowledge.
In light of the above, the Panel finds that the Complainants have succeeded on the third element of the Policy.
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 <abbalstom.com> be cancelled.
Date: October 28, 2014