WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Bryan Owen
Case No. D2019-0445
1. The Parties
The Complainant is ALSTOM of Saint-Ouen, France, represented by Lynde & Associes, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, United States of America (“United States”) / Bryan Owen of Birmingham, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <aalstomco.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, 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 February 27, 2019 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 March 1, 2019.
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 March 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2019. The Center received an email communication from the Respondent on March 23, 2019. On March 25, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on April 12, 2019. 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 is a French multinational company, which was formed from a merger between Compagnie Française Thomson Houston and the Société Alsacienne de Constructions Mécaniques in 1928. It is operating worldwide in rail transport markets, active in the fields of passenger transportation, signalling and locomotives.
The Complainant owns trademark registrations in different countries containing the element “alstom” such as:
- United States Trademark Registration No. 85250501 ALSTOM (word mark) filed on February 24, 2011, registered on July 22, 2014, for goods and services in Classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42
- European Union Trademark Registration No. 948729 ALSTOM (word mark) filed on September 30, 1998, registered on August 8, 2001, for goods in services in Classes 1, 6, 7, 8, 9, 11, 12, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.
- International Registration No. 706292 ALSTOM (word mark) filed on April 10, 1998, registered on August 28, 1998, for goods in services in Classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42 designating notably Algeria, China, Cuba, Germany, Egypt, Democratic People and others Republic of Korea, Japan, Mexico, Morocco, Russian Federation, Thailand, Viet Nam, United Kingdom, …
The Complainant has registered the domain name <alstom.com> incorporating the ALSTOM trademark which is resolving into the corporate website of the Complainant.
The disputed domain name <aalstomco.com> was registered on November 4, 2014 using a privacy shield service. After the filing of the Complaint, the Registrar disclosed the personal data of the underlying registrant. The disputed domain name expires on November 4, 2019. The corresponding website at “www.aalstomco.com” was redirected to a parking page since at least 2015.
5. Parties’ Contentions
The Complainant contends that all three criteria stated in paragraph 4(a) of the Policy are met in the present case.
(i) The Complainant states that the disputed domain name is identical or confusingly similar to their trademark.
According to the Complainant, the disputed domain name wholly and identically reproduces the Complainant’s prior ALSTOM trademarks. Although the second level domain of the disputed domain name is headed by an additional “a” in the first position, and ends the additional syllable “co”, it remains directly recognizable within the disputed domain name because the accompanying elements will not retain the consumer’s attention. The first letter “a” has no impact whatsoever from a phonetical standpoint and the “co” element, as a commonly used abbreviation for the generic term “company”, will not be remembered by the average consumer.
Additionally, the Complainant refers to the UDRP cases, ALSTOM v. Daniel Bailey, WIPO Case No. D2010-1150 and Alstom S.A., and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., WIPO Case No. DCO2016-0030 to establish the name “Alstom” as famous and/or well known.
Furthermore, the generic Top-Level-Domain (“gTLD”), here “.com”, must be excluded from consideration because such gTLD has no legal significance. The following case is brought forward to support this assertion: Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and Distribution Engineering, WIPO Case No. D2016-0032.
Internet users will directly recognize the Complainant’s trademarks in the disputed domain name and will believe that it has been registered by the Complainant.
(ii) Furthermore, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the ALSTOM mark. In addition, it is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain either, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark.
According to the Complainant, the Respondent has been using the disputed domain name as part of an email address. Under the fake email address email@example.com it sent out fictional employment notices supposedly on behalf of the company ALSTOM. Attached to such email was allegedly an employment agreement for print-out and signature. This appears to be a fraudulent email scheme. Under the same circumstances, the panel considered in Société Air France v. Registration Private, Domains by Proxy LLC, WIPO Case No. D2018-0005, that the Respondent had no rights or legitimate interests in relation to a domain name which did not resolve to an active website.
In the light of the above, ALSTOM contends that the Respondent has no rights or legitimate interests in respect to the disputed domain name.
(iii) Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
In the view of the Complainant, the Respondent’s bad faith is established because the disputed domain name incorporates the Complainant’s trademarks, and was acquired long after ALSTOM’s mark became well known. In many cases, the UDRP panel considered that the registration of a well-known trademark, of which the Respondent must reasonably be aware, constitutes bad faith (for instance, Veuve Clicquot Ponsardin v. The Polygenix Group c., WIPO Case No. DCO2000-0163). Again, the Complainant cites the UDRP cases, ALSTOM v. Daniel Bailey, supra, and Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., supra, to establish the name “Alstom” as famous and/or well known.
Furthermore, the Respondent attempted to conceal its identity firstly by registering the disputed domain name via an anonymization company, and secondly by giving false information regarding its disclosed address. The address indicated by the Respondent does not exist according to Google Maps. According to the Complainant, the Respondent is trying to hide its identity, which should be considered as an additional evidence of bad faith.
The Complainant alleges that the Respondent registered at least two domain names incorporating third party’s reputed trademarks without due cause and using false contact information and/or anonymized contact information.
In addition, the disputed domain name <aalstomco.com> is being used to send job scams by email. To that end, the Complainant has, in Annex 8 to the Complaint, submitted an email, that has allegedly been sent from the email address firstname.lastname@example.org to a “Ms. Khoza”, containing a fictional employment offer supposedly on behalf of ALSTOM.
The Respondent sent an email to the Center on March 23, 2019, acknowledging receipt of the Complaint, contending that it had not infringed any rights.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainants’ trademark; 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.
In the following, the Panel will discuss in consecutive order, if each of these requirements are met here.
A. Identical or Confusingly Similar
The test for identity or confusing similarity under paragraph 4(a)(i) of the Policy demands a direct comparison between the Complainant’s mark and the textual string of the disputed domain name which is claimed to affect the Complainant.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
In this case, the second level domain of the disputed domain name of the Respondent includes the word “alstom” in its entirety, which is identical to the Complainant’s ALSTOM mark. The mark is solely accompanied by the letter “a” in first position, as well as by the syllable “co” at the end of the second level domain of the disputed domain name. Therefore, a confusing similarity is established.
The Complainant’s mark ALSTOM starts with the letter “a”. Therefore adding the letter “a” in first position has no impact from a phonetical and little from a visual point of view. The syllable “co” is a commonly used abbreviation for the generic term “company”. Adding a generic term is insufficient to dispel any confusing similarity between the disputed domain name and the Complainant’s trademark.
Furthermore, the gTLD “.com” does not affect the finding of confusing similarity in any way.
Thus, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s mark, ALSTOM and comes to the conclusion that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant is required to prove that a respondent has no rights or legitimate interests in the disputed domain name.
In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent, such as decided in Media West - GRS, Inc., Media West - MNC, Inc., Ganett Pacific Corporation, Gannett Co., Inc., Ganett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) email@example.com, WIPO Case No. D2006-0478.
The Respondent, in its email of March 23, 2019, did not submit any response on the substance and did not show any proof of rights or legitimate interests in the disputed domain name. As contended by the Complainant, the Respondent was not authorized, licensed or otherwise allowed to make use of its protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name, and as explained below, the Respondent is not engaged in any bona fide activity with the disputed domain name.
Therefore the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Whether a disputed domain name has been registered and is being used in bad faith for the purposes of the Policy may usually be determined by evaluating the criteria set forth in paragraph 4(b) of the Policy.
Panels view the provision of false contact information underlying a privacy or proxy service as an indication of bad faith. In this case, the Respondent used a privacy service and gave false information regarding its disclosed address. Due to the fact, the street provided by the Respondent in the WhoIs record does not exist in Birmingham, the Respondent’s address is most likely to be false. The Respondent does not refute this inference. Therefore bad faith is indicated.
Many Panels have also held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. WIPO Overview 3.0, section 3.4. This Panel agrees with this view. The way on which the disputed domain name was used in the present case, namely by creating an email address pretending to originate from ALSTOM, which was used to contact an uninvolved third party with a fictional employment notice supposedly on behalf of the company ALSTOM asking the addressee to open a document and sign it, establishes bad faith on the side of the Respondent. UDRP panels have found that this constitute bad faith for purposes of paragraph 4(b)(iv) of the Policy, as decided in Kettle & Barebells Functional Foods AB v. Alexander Bell, WIPO Case No. D2018-2885.
The Panel also accepts the Complainant’s evidence, which the Respondent has not disputed, that the Respondent has used the disputed domain name for the purpose of sending what appears to be a fraudulent email containing a non-existing provisional offer of employment. In view of the foregoing, it is to be assumed that the disputed domain name was used for a fraudulent purpose. This is also supported by the fact that the Complainant presents evidence for the register of the domain name <robertwalterrs.com> by the Respondent under the same false Birmingham address. In conclusion, the Respondent registered at least two domain names incorporating third parties trademarks, and attempted to hide its identity both time. Beyond that, one of the third parties, Robert Walters, is a specialist professional recruitment consultancy, which supports the assumption of fraud using fictional employment notices. On the basis of the criteria set out above, such use of the disputed domain name constitutes use in bad faith. The Panel therefore concludes that the disputed domain name has been registered and is being 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, <aalstomco.com> be transferred to the Complainant.
Date: April 23, 2019