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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom S.A. v. Joao Mota, Joao Mota Inc.

Case No. D2019-3034

1. The Parties

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

The Respondent is Joao Mota, Joao Mota Inc., Portugal.

2. The Domain Name and Registrar

The disputed domain name <allstomgroup.com> (the “Domain Name”), 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 December 9, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 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 December 16, 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 December 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 10, 2020.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 21, 2020. 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.

The original Complaint named “GDPR Masked” as the Respondent. The identity of the underlying registrant was not unmasked until disclosed by the Registrar on Registrar verification. This prompted the filing of the amended Complaint.

4. Factual Background

The Complainant is a company founded in France in 1928. It operates internationally in the field of transport infrastructure. In 2018, the Complainant’s turnover was in the region of EUR 6 billion. It operates under its ALSTOM trade mark, which is the subject of many trade mark registrations. For present purposes it is only necessary to mention one of them, namely:

European Union Trade Mark Registration No. 000948729 filed on September 30, 1998 and registered on August 8, 2001 for a wide variety of goods and services in 16 different classes.

The Complainant is also the registrant of several domain names featuring its ALSTOM trade mark including <alstomgroup.com> registered on November 13, 2000, which redirects to its website connected to its domain name, <alstom.com>, registered on January 20, 1998. The <alstomgroup.com> domain name is used by the Complainant for headquarters staff email addresses.

The Domain Name was registered on November 12, 2019 and is not connected to an operational website, simply a webpage informing the visitor that the site is inaccessible.

On November 25, 2019 the Complainant received an email from its contact at its bank, JP Morgan, informing it that the JP Morgan Cybersecurity Team had identified the existence of the Domain Name and regarded it as a security risk for the Complainant.

On November 27, 2019 the Complainant’s representative wrote to the entity then identified as the registrant of the Domain Name, GDPR Masked (see section 3 above) drawing the addressee’s attention to the Complainant’s trade mark rights and asserting that the Domain Name had been used to send fraudulent emails to the Complainant’s bank. The letter requested disclosure of the identity of the underlying registrant, suspension of the Domain Name and access to the website associated with it. The Complainant followed up the request by filing an online form with the Registrar, but no substantive response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s ALSTOM trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the name “Allstom”, the word “group” and the “.com” generic Top-Level Domain (“gTLD”) identifier. For the purposes of this assessment it is permissible for UDRP panels to ignore the gTLD identifier where, as here, it serves no purpose beyond the technical one. Thus ,“allstomgroup” is to be compared with ALSTOM. “Group” being a descriptive term, the Complainant’s ALSTOM trade mark is readily recognizable in “allstom”, a close typographical variant of the Complainant’s trade mark.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent has no obvious connection with the Complainant or indeed the name, “Allstom”, featuring in the Domain Name. There is no evidence before the Panel that the Respondent is known by the Domain Name or any approximation to it. The Respondent has made no overt use of the Domain Name whether commercial or non-commercial.

The Complainant contends that the Respondent registered the Domain Name intentionally as a very close replication of the Complainant’s <alstomgroup.com> domain name, the Respondent’s intention being to cause confusion among Internet users and for the purpose of defrauding them and/or the Complainant. The Complainant uses its <alstomgroup.com> domain name for a route through to its main operating website and for email addresses for its headquarters staff. The potential for confusion is obvious.

While the Complainant asserts that Annex 7 to the Complaint demonstrates that the Respondent has used the Domain Name for fraudulent emails, the Panel can find nothing in that Annex to support that contention. However, it is the fact that the Complainant’s bank alerted the Complainant to the existence of the Domain Name and identified it as a cybersecurity risk for the Complainant, being as it is such a close variant of the Complainant’s <alstomgroup.com> domain name.

The Panel finds that the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent. In the absence of any Response from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The bad faith registration and use allegations made by the Complainant against the Respondent as referred to in C above are serious allegations and on their face sufficient to give rise to a prima facie case against the Respondent. One would think that an innocent party with a reasonable explanation for having registered such a domain name would be quick to come forward in defence of its position. The Respondent has chosen not to do so.

In the particular circumstances of this case the Panel finds on the balance of probabilities that the Respondent has no answer to the Complainant’s allegations. The Panel finds on the evidence before it that the Domain Name was registered in bad faith to exploit the reputation and goodwill in the Complainant’s trade mark.

While the Respondent does not yet appear to have made any active use of the Domain Name, the Panel finds that the risk identified by the Complainant’s bank is a very real risk, especially noting the similarity between the Complainant’s domain name <alstomgroup.com> and the Domain Name, and, as such, represents an unjustifiable threat hanging over the head of the Complainant. The Panel identifies that continuing threat to be a continuing use of the Domain Name in bad faith.

The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 Domain Name, <allstomgroup.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 22, 2020

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