WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. Jai Shan
Case No. D2017-1213
1. The Parties
The Complainant is ALSTOM of Saint-Ouen, France, represented by Lynde & Associes, France.
The Respondent is Jai Shan of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <alstomubunye.com> (the "Disputed Domain Name") is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 22, 2017. On June 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 23, 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 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2017.
The Center appointed Nicholas Weston as the sole panelist in this matter on July 26, 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.
4. Factual Background
The Complainant was founded in France in 1928 and operates a rail infrastructure and power generation business in more than 60 countries, including China. The Complainant holds registrations for the ALSTOM trademark and variations of it in numerous countries including China, which it uses to designate goods and services in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, and 35 - 42. The International trademark registration has been in effect since 1998. There is also an International registration for the mark ALSTOM UBUNYE that has been in effect since July 20, 2016. According to the Complainant's website, approximate global revenue for sales of ALSTOM branded products in the financial year 2016-2017 was EUR 7.3 billion.
The Complainant has continuously owned and operated websites resolving from the domain names <alstom.com> and <alstom.co.uk> since 1998.
The Disputed Domain Name <alstombunye.com> was registered on August 11, 2016, and resolves to a parking page.
5. Parties' Contentions
The Complainant cites the International trademark registration no. 706292 for the mark ALSTOM and International trademark registration no. 1323418 for the mark ALSTOM UBUNYE in various countries as prima facie evidence of ownership.
The Complainant submits that the mark ALSTOM is well known and that its rights in that mark predate the Respondent's registration of the Disputed Domain Name <alstomubunye.com>. It submits that the Disputed Domain Name is confusingly similar to their trademark because the Disputed Domain Name incorporates in its entirety the ALSTOM UBUNYE trademark and that the similarity is not removed by the addition of the generic Top-Level Domain ("gTLD") ".com".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant's trademark. The Complainant also contends that use, which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules. The Complainant contends the Respondent acquired the Disputed Domain Name "for the purpose of selling it". The Complainant also contends that, in return for transfer of the Disputed Domain Name, the Respondent requested "an amount well exceeding the costs of registration of the domain name".
The Respondent did not formally reply to the Complainant's contentions. However, the Panel notes that the Complainant's authorized representative received a number of email communications from the Respondent including one dated November 15, 2016 which stated that he "just liked the name" and offered to transfer the domain name for EUR 5,500. On April 12, 2017 the Respondent emailed the Complainant's authorized representative a further offer to transfer the Disputed Domain Name for EUR 1,300 (supplied in Annex 3 to the Complaint).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ALSTOM in China and in many countries throughout the world. The Complainant has also produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ALSTOM UBUNYE in a number of countries. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ALSTOM trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant's trademark ALSTOM; (b) followed by the word "ubunye"; and (c) the gTLD ".com", all in one continuous domain name.
It is well-established that the gTLD used as part of a domain name may be disregarded (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.2). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: "alstomubunye".
It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it can be confusingly similar to that mark despite the addition of other words: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent's rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1.)
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is offering for sale a domain name that corresponds with the Complainant's mark "for a huge amount of monetary compensation", thereby illegitimately seeking to trade on the fame of the Complainant's mark. There is no evidence of demonstrable preparations to use the Disputed Domain Name with a bona fide offering of goods or services. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant's trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel has no evidence before it to suggest the Respondent might have any rights or legitimate interests in the Disputed Domain Name and finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By engaging in conduct inconsistent with a bone fide offering of goods and services, it can be inferred that the Respondent is opportunistically using Complainant's mark in order to sell the Disputed Domain Name at a significant premium to its out-of-pocket costs. The Respondent's selection of the Disputed Domain Name in the circumstances, would tend to support a finding that the Respondent obtained the Disputed Domain Name to take advantage of the Complainant's mark and as such that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark ALSTOM is so well known a mark globally, that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it. (See Alstom v. Zahir Khan, Palki Event Inc., WIPO Case No. D2017-1124 ("the substantial reputation, goodwill and fame which that mark acquired"); ALSTOM S.A. v. Zhouhaotian, WIPO Case No. D2015-1739 ("the Complainant's ALSTOM marks are distinctive and well known"); Alstom v. Wayne Weeks, WIPO Case No. D2013-2029 ("the mark ALSTOM is both distinctive and famous"); ALSTOM v. jerry jonn, WIPO Case No. D2010-2075 ("ALSTOM is a well-known trade mark"); Alstom v. Future ISP, WIPO Case No. D2010-1376 ("the disputed domain name incorporates a well-known trademark"); and ALSTOM v. Daniel Bailey (Registrant ID: tuuROSvPJbZdd2XO), WIPO Case No. D2010-1150 ("Respondent used Complainant's well-known trademark")).
Further, a gap of ten years between registration of a complainant's trademarks and respondent's registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name nearly two decades after the Complainant established registered trademark rights in the ALSTOM mark.
The Panel accepts the Complainant's uncontested submission that the Respondent registered the Disputed Domain Name after the announcement of the Complainant's acquisition of Commuter Transport & Locomotive Engineering, a South African rolling stock refurbishment business, and its subsequent rebranding to the name ALSTOM UBUNYE ("ubunye" meaning "unity" in Zulu) received international media coverage in April 2016, and that this was the most likely reason for the Respondent registering the Disputed Domain Name.
The Panel also accepts the evidence that in November 2016 the Respondent offered the Disputed Domain Name for sale to the Complainant for the sum of EUR 5,500 and in April 2017 for EUR 1,300; and finds that use of the Disputed Domain Name in this manner by offering its sale to the Complainant at a significant premium to the out-of-pocket costs of registration is in bad faith and contrary to paragraph 4(b)(i) of the Policy (see Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <alstomubunye.com> be transferred to the Complainant.
Date: August 7, 2017