WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom S.A. v. Name Redacted1
Case No. D2019-2544
1. The Parties
The Complainant is Alstom S.A., France, represented by Lynde & Associes, France.
The Respondent is Name Redacted.
2. The Domain Name and Registrar
The disputed domain name <alstom-holdings.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On October 18, 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 October 22, 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 amendment to the Complaint on October 25, 2019.
On October 22, 2019, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On October 25, 2019, the Complainant requested that English be the language of the proceedings and provided respective arguments in support of its request. The Respondent has not provided any response regarding the language of the Proceedings.
The Center verified that the Complaint together with the amendment to 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 October 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2019. The Respondent did not submit any response. The Center received informal email communications from a third party on November 4 and November 6, 2019. Accordingly, the Center notified the Respondent’s default on November 20, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on December 3, 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, 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.
The Complainant owns the trademark ALSTOM from as early as 1998 in numerous jurisdictions worldwide, including international registration No. 706292, registered on August 28, 1998. The Complainant also owns 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.
The Complainant also owns a number of companies and trade name rights on the word “ALSTOM”, including ALSTOM Holdings.
The disputed domain name was registered on August 6, 2019 and resolves to an inactive webpage.
The Complainant sent cease and desist letter to the Respondent in Russian language on October 16, 2019 with no response by the Respondent.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name contains ALSTOM famous trademark. Addition of hyphen and “.com” elements do not preclude the similarity. The term “holdings” is a usual legal form and ads to the similarity.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with the Complainant, nor licensed, authorized or permitted by the Complainant for use of its trademark in the disputed domain name. The Respondent is not commonly known with the disputed domain name. The Respondent sends fictive commercial notices using the disputed domain name’s email server pretending to be the Complainant, which confirms no legitimate interest of the Respondent. The Respondent did not apply for registration of any ALSTOM trademarks.
The disputed domain name was registered and is being used in bad faith. While incorporating famous Complainant’s trademark in the disputed domain name the Respondent knew of the Complainant’s activities, especially taking into account the Respondent is French. This is also confirmed by further activities of the Respondent when sending fictive commercial notices via the disputed domain name to obtain sensitive data from the Complainant’s clients, which constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions. The Center received an email from a third party in French on November 4 and November 6, 2019, claiming that it has no connection to the disputed domain name, and that it was victim of identity theft.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
According to section 4.5.1 of the WIPO Overview 3.0 previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the disputed domain name is written in Latin script, (ii) the disputed domain name reproduces the Complainant’s trademark adding English term “holdings”, (iii) the Respondent contacted the Complainant’s clients with letters in French and English, (iv) the Respondent failed to reply to the cease and desist letter sent by the Complainant in Russian. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 , in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the Complainant’s trademark in its entirety.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that adding of “holdings” and hyphen do not prevent finding the confusing similarity in the present case.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has rights in its registered trademark.
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The Respondent has intentionally and fraudulently attempted to pass itself off as the Complainant by using an email address associated with the disputed domain name in an effort to obtain sensitive data from Internet users. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Allianz SE v. WhoIs Privacy Protection Service, Inc. / Allianz Survey WIPO Case No. D2016-1658).
The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s priory registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in France and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s famous trademark was registered in bad faith.
According to section 3.4 of the WIPO Overview 3.0 Panels have 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. The Panel finds that in the present case use of the disputed domain name to send deceptive emails constitutes bad faith.
The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 <alstom-holdings.com> be transferred to the Complainant.
Date: December 11, 2019
On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the disputed domain name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.