WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Registration Private, Domains by Proxy LLC / Global FB Holdings Inc.
Case No. D2017-1677
1. The Parties
Complainant is Alstom, de Saint-Ouen, France, represented by Lynde & Associes, France.
Respondent is Registration Private, Domains by Proxy LLC of Scottsdale, Arizona, United States of America (“United States”) / Global FB Holdings Inc. of Northbrook, Illinois, United States, represented by SOG / Samardžić, Oreški & Grbović Law Firm, Serbia.
2. The Domain Name and Registrar
The disputed domain name <alstomvr.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2017. On August 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 31, 2017 and September 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. The due date for response was extended until September 30, 2017, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on September 30, 2017.
On October 9, 2017, the Center received a suspension request from Complainant by email. The Center notified the Parties of the suspension of the proceeding on October 10, 2017. On November 10, 2017, upon Complainant’s request to reinstitute the proceeding sent on the same date, the Center notified the Parties of the reinstitution of the proceeding by email.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on November 16, 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
According to WhoIs, the Domain Name was registered on May 28, 2016. The Domain Name resolves to a website displaying an article entitled “All Stomach Viruses Rejection”.
Complainant is a French multinational company, created in 1928, and operating worldwide in rail transport markets. It is active in the fields of passenger transportation, signaling and locomotives, and employs 32,000 people in more than 60 countries.
Complainant is the registered owner of the trade mark ALSTOM (the “ALSTOM Mark”) from as early as 1998 in numerous jurisdictions worldwide (see international registration number 706292, registered on August 28, 1998), as well as the registered owner of numerous domain names under various generic and country code Top-Level Domains (“TLDs”) that reflect the ALSTOM Mark, including:
- <alstom.com> registered January 20, 1998;
- <alstom.co.uk> registered June 15, 1998;
- <alstom.org> registered April 1, 2000;
- <alstom.net> registered April 1, 2000; and
- <alstom.info> registered July 31, 2001.
These domain names all redirect to Alstom’s group website at “www.alstom.com”.
Complainant also owns a number of companies and trade name rights on the word “ALSTOM”, such as ALSTOM Transport, ALSTOM Power, ALSTOM Hydro, ALSTOM Grid, ALSTOM Holdings, ALSTOM Power Turbomachines, ALSTOM Management, ALSTOM Wind and ALSTOM UBUNYE.
5. Parties’ Contentions
Complainant asserts that the ALSTOM Mark is well known worldwide, with the United States being one of its key countries within the Alstrom Group where it has 13 offices in North America alone. Complainant backs up this statement claiming that its rolling stock facility in Hornel, New York, has been manufacturing and servicing trains for nearly 150 years and represents the foundation of Complainant’s extensive North American presence, which includes 1,500 employees. Complainant further asserts that its Rochester, New York based signaling business has over 110 years of local expertise and provides train control systems for 50 percent of all North American metros.
Complainant submits the Domain Name is confusingly similar to its ALSTOM Mark as it reproduces wholly and identically the ALSTOM Mark, and that the addition of “vr” to the ALSTOM Mark is a sign of bad faith registration and is non-relevant for the web user who may believe that this Domain Name is managed by Alstom. Complainant contends that Internet users may recognize the ALSTOM Mark in the Domain Name and will believe it to belong to Complainant. Complainant further contends that Respondent’s registration of the Domain Name acts as blocking registration.
Complainant states that Respondent is not affiliated to Complainant and it has not authorized, licensed or permitted Respondent to register or use a domain name incorporating the ALSTOM Mark.
Complainant contends that the Domain Name was initially registered in the name of Frederic Bavastro, the principal agent of the company Global FB Holdings Inc., but was later anonymized by Domains by Proxy LLC.
When Complainant became aware of the existence of the Domain Name, its representative sent a cease-and-desist letter to Respondent, requesting that the Domain Name be transferred voluntarily to Complainant. After receiving no response, further emails were sent on October 10 and 19, 2016. A response was received on October 27, 2016 from Respondent’s lawyers Samardžić, Oreški & Grbović, who explained that the Domain Name was an acronym for “Avoiding the Likelihood of all types of Stomach Viruses”.
Complainant states that throughout its communications with Respondent, Respondent has stated that it initiates and founds a non-profit information website named “Avoiding the Likelihood of all types of Stomach Viruses” (whose acronym is “alstomvr”) and that its ultimate purpose was to launch an online platform for sharing information on the avoidance of all types of stomach viruses. Complainant notes that initially the Domain Name website was inactive but it now leads to an article entitled “All Stomach Viruses Rejection”, and that more than a year after the registration of the Domain Name, the website presents only one article, without any link, any other article or information nor any presentation of the entity who managed it.
Complainant notes that Respondent is also the owner of other domain names incorporating well-known trade marks with the final letters “vr” and the extension “.com”, which have been anonymized through Domains by Proxy LLC.
Complainant claims that to the best of its knowledge Respondent has not applied for or obtained any trade mark registrations relating to “Alstom” or “Alstomvr”, and Respondent is not commonly known under the name “Alstom”.
Complainant suggests that Respondent has not made demonstrable preparations to use the Domain Name with a bona fide offering of goods or services, and that there is no legitimate business associated with the Domain Name.
Further, in view of the reputation of the ALSTOM Mark Complainant argues that it would be impossible for Respondent, a resident of Unites States, not to have been aware of Complainant’s activities at the time it registered the Domain Name.
Respondent states that it does not challenge any of the trade or service mark rights asserted by Complainant with regard to the ALSTOM Mark. Neither does Respondent contest that it is not a licensee of Complainant.
Further, Respondent does not contest that the Domain Name is similar to the ALSTOM Mark, but it does claim that it has a legitimate interest in the Domain Name and has registered and used the Domain Name in good faith.
Respondent states that it is an initiator and a founder of an information website (the “Website”) which operates and functions on a non-profit basis under the name of “Avoiding the Likelihood of all types of Stomach Viruses”. Respondent envisages that the Website will be used by an array of health care professionals, former and current patients, caretakers, academics and other people interested in the risks associated with stomach viruses. The goal of the Website is to become a well-renowned online information center, which will provide extensive information on how to combat all stomach related viruses and minimize the chances of a person falling ill by catching some of the said viruses. Respondent points out that, although the Website has been launched, it is ever evolving and new content is being prepared as the existing Website’s primary purpose is to create a forum for the aforementioned groups to gather and discuss their ideas.
Moreover, Respondent argues that the Website is already operational and that the fact that the Website does not contain substantial content at this point in time may not be construed to the detriment of the Respondent’s legitimate interests in the Domain Name, as the Website is in its evolutionary process. Hence, although Respondent is not currently commonly known by the Domain Name, it was well on its way to become commonly known by the said name, which Respondent says, is in direct correlation with its legitimate interests pertaining to the “alstomvr” name.
Respondent claims that as the services offered by the Website are for the purpose of providing its visitors with information on all types of stomach viruses, it represents a bona fide offering of services.
Respondent also claims that it is making a legitimate noncommercial and fair use of the Domain Name, without intent for commercial gain to misleadingly divert or to tarnish the trade mark.
Respondent asserts that the incentive for the creation of the Website, and subsequently the registration of the Domain Name for such purpose is not selling, renting or otherwise transferring the Domain Name to Complainant. Rather, instead of opportunistic bad faith, as argued by Complainant, the motive was found in a non-profit cause.
Respondent indicates that it would agree to transfer the Domain Name to Complainant as it has decided to pursue its non-profit cause through an alternative domain name.
6. Discussion and Findings
The Panel notes that Respondent has agreed to transfer the Domain Name to Complainant. Noting, however, that Respondent expressly denies any bad faith, and also noting that attempts at settlement have been unsuccessful, the Panel considers it appropriate to proceed to a substantive decision on the merits.
A. Identical or Confusingly Similar
Complainant has established that it is the owner of the ALSTOM Mark. Complainant has been manufacturing and servicing trains for nearly 150 years and employs numerous staff in a number of countries around the world. Respondent does not dispute that Complainant has rights in the ALSTOM Mark.
The Domain Name is confusingly similar to the ALSTOM Mark. The Domain Name reproduces the ALSTOM Mark in its entirety and that the addition of “vr” to the Domain Name does little if anything to alter the essential character of the Domain Name. On this basis, it is found that:
a) Complainant has rights in respect of the ALSTOM Mark.
b) The Domain Name is not identical to, but for the reasons set out above, is confusingly similar to the ALSTOM Mark.
Accordingly, the first element of the Policy has been met.
B. Rights or Legitimate Interests
While not disputing that Complainant has rights in the ALSTOM Mark Respondent argues that it nevertheless has a legitimate interest in the Domain Name. Respondent alleges that it is the so-called initiator and founder of an information website which operates on a non-profit basis and is known as or has an interest in “Avoiding the Likelihood of all types of Stomach Viruses”. According to Respondent, its website while presently largely inactive, is to be used by an array of people interested in health care and more specifically stomach viruses.
This explanation, while novel and ingenious, is far-fetched and difficult to accept. The Panel infers it is a concoction designed to justify Respondent’s decision to register the Domain Name. In those circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is thus satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of the ALSTOM Mark. Internet users who may wish to communicate with or use Complainant’s content are likely to be attracted to Respondent’s website and be misled as to its origins, sponsorship or association.
The Panel also infers that Respondent must have been aware of Complainant and the ALSTOM Mark at the time it registered the Domain Name, given Complainant’s long-established business and goodwill.
The Panel thus finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <alstomvr.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: December 7, 2017