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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Contact Privacy Inc. Customer 1244065242 / Michelle Chung, Chung Limited Co

Case No. D2019-2718

1. The Parties

The Complainant is Alstom, France, represented by Lynde & Associes, France.

The Respondent is Contact Privacy Inc. Customer 1244065242, Canada / Michelle Chung, Chung Limited Co, United States of America.

2. The Domain Name and Registrar

The disputed domain name <alstomgruop.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 November 7, 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 November 8, 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 November 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on December 6, 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 public company that operates worldwide in the transport infrastructure sector. It has 34,000 employees in more than 60 countries and a turnover of 6 billion EUR in 2018. In particular, it has had a presence in Canada for 80 years and now operates through 4 sites there. The Complainant owns numerous trade mark registrations worldwide including European Union Trade Mark (“EUTM”) No. 948729 for ALSTOM filed on September 30, 1998, and registered on August 8, 2001, and Canadian trade mark registration 0891929 for ALSTOM filed on September 30, 1998, and registered on May 23, 2002. It also owns numerous domain names incorporating the ALSTOM mark including <alstom.com> registered since January 20 1998; and <alstomgroup.com> registered on November 14, 2000.

The disputed domain name was registered on March 3, 2019, and re-directs to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in its ALSTOM mark as set out above. It says that the disputed domain name wholly incorporates its ALSTOM mark and that it is directly recognizable in the disputed domain name. It notes that the disputed domain name also contains a misspelled version of the word “group” after its incorporation of the ALSTOM mark and otherwise only includes the “.com” generic Top Level Domain (“gTLD”) name element. Accordingly, the Complainant submits that the disputed domain name is confusingly similar to its ALSTOM mark.

The Complainant notes that it wrote on at least two occasions to the Respondent to request the real identity of the owner of the disputed domain name and that the disputed domain name be suspended. It notes that these efforts received no more of a response than an automated message. In addition, the Complainant says that it has never authorised, licensed, or permitted a third party to use the disputed domain name and it notes that the disputed domain name has been inactive since its registration date. Therefore, submits the Complainant, there is no evidence that the Respondent has made use, or prepared to use, the disputed domain name in connection with a bona fide offering of goods or services and as a result has no rights or legitimate interests in the disputed domain name.

As far as bad faith is concerned the Complainant submits that the disputed domain name, which wholly incorporates the ALSTOM mark, was acquired long after the Complainant’s mark became well known. Further it says that the ALSTOM mark is so well known that it is virtually impossible that the Respondent was not aware of the Complainant’s business activities when it registered the disputed domain name and the Complainant cites Alstom S.A. and general Electric Company v. Sichuan Electricity Transmission and Distribution Engineering, WIPO Case No. DCO2016-0032. In short it says that the Respondent has sought to take unfair advantage of the significant reputation attaching to the ALSTOM mark.

The Complainant notes that the real owner of the disputed domain name is hiding its identity behind the Respondent privacy service and failed to respond to the Complainant’s communications asserting its prior rights in the ALSTOM mark.

It says that the registration of the disputed domain name incorporating the ALSTOM mark, together with a misspelling of the word “group”, is obviously an example of typosquatting that is calculated to capture Internet users seeking the Complainant’s website at <alstomgroup.com>.

The Complainant further notes that the Respondent has not made demonstrable preparations to use the disputed domain name and that to the contrary it resolves to a website that has been inactive since its registration date. It says that in these circumstances such passive holding amounts to use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights in EUTM 948729 for ALSTOM and in Canadian trade mark registration 0891929 for ALSTOM. The disputed domain name wholly incorporates the Complainant’s mark. The addition in the disputed domain name of the misspelled word “gruop” does not detract from a finding that the disputed domain name is confusingly similar to the Complainant’s trade mark. Consequently, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant says that it used and registered the ALSTOM mark many years before the registration of the disputed domain name and that it has never authorised, licensed, or permitted a third party to use the disputed domain name incorporating its very well reputed ALSTOM mark. It submits further that there is no evidence that the Respondent has made bona fide preparations to use the disputed domain name which has been inactive since its registration date. Further, the Complainant notes that the Respondent has failed to respond other than automatically to its pre-action communications asserting rights in the ALSTOM mark.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case and accordingly the Complainant has made out its case under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant has operated internationally, including in Canada, under its ALSTOM mark for many decades. Its ALSTOM mark has a high degree of distinctiveness and through wide use enjoys a very considerable degree of renown. The Complainant maintains a web presence including through its website at the domain name<alstomgroup.com>.

The disputed domain name was only registered in 2019 and wholly incorporates the ALSTOM mark together with a misspelling of the word “group”. It is apparent that this is a case of typosquatting in which the Respondent has sought to emulate the Complainant’s <alstomgroup.com> domain name but with a misspelling of the word “group”. Although the disputed domain name redirects to an inactive website, the Panel is of the view that it is more likely than not that the North American based Respondent was well aware of the Complainant’s ALSTOM mark when the disputed domain name was registered and did so on purpose and in order to take advantage of the reputation attaching to the ALSTOM mark.

The disputed domain name redirects to an inactive website. The Complainant asserts that this amounts to passive use by the Respondent in bad faith. The factors that panels have previously considered to amount to a passive holding in bad faith are set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and include:

(i) the degree of distinctiveness or reputation of the complainant’s mark;

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;

(iii) the respondent’s concealing its identity or use of false contact details; and

(iv) the implausibility of any good faith use to which the disputed domain name may be put.

The Panel has already found that the Complainant’s mark is very distinctive. The Complainant has failed to provide any evidence of actual or contemplated good faith use and has failed to respond to the Complainant’s communications. In addition, it appears that the Respondent has sought to conceal its identity by using a privacy service. It is apparent that the ALSTOM mark enjoys a very substantial reputation and the Panel notes that it is a highly distinctive word mark. This appears to be a classic example of typosquatting in which the Respondent has sought to take advantage of the renown attaching to the ALSTOM mark and to confuse Internet users who seek to reach the Complainant’s real Internet site at the domain name <alstomgroup.com>. Overall it seems implausible that there is any good faith use to which the disputed domain name could be put by the Respondent.

As a result, the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element of the Policy.

7. Decision

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 <alstomgruop.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: December 19, 2019

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