WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Sam Morris
Case No. D2020-0047
1. The Parties
The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Sam Morris, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <alstomsgroup.com> (“Disputed 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 January 10, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2020.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 20, 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.
4. Factual Background
The Complainant is a French Company founded in 1928. The Complainant is a global leader of power generation, power transmission and rail infrastructure. The Complainant has 36,000 employees in more than 60 countries.
In addition, the Complainant has important activities in Nigeria, where the Respondent indicates having its address.
The Complainant owns numerous trademark registrations worldwide including, among others:
- European Union trademark (“EUTM”) No. 000948729 for ALSTOM, registered on August 8, 2001, and
- Nigerian Trademark, No. 140668, 140670, 140671 and 140673 for ALSTOM (& Design), application date December 4, 2018.
Furthermore, the Complainant owns numerous domain names incorporating the ALSTOM trademark including <alstom.com> registered since January 20, 1998; and <alstomgroup.com> registered on November 14, 2000.
The Respondent registered the Disputed Domain Name on April 26, 2019.
The Disputed Domain Name redirects to an inaccessible web page. Annex 7 of the Complaint.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM trademark since the Disputed Domain Name uses the combination of the elements ALSTOM and the dictionary term “group”. The addition of the letter “s" between the terms “ALSTOM” and “group” only refers to the Complainant’s group of companies.
Accordingly, Internet users will directly recognize the Complainant trademark and trade name within the Disputed Domain Name and will believe that the Disputed Domain Name belongs to the Complainant.
Finally, the Disputed Domain Name is almost identical to the Complainant domain name <alstomgroup.com>, which is used to support email addresses of all employees of the Alstom group of companies.
Rights or legitimate interests
The Complainant states that the Respondent is not affiliated in any way to Alstom. In addition, the Complainant has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating the Complainant’s trademark.
Furthermore, the Respondent has not applied for or obtained any trademark registration related to the sign ALSTOM. Moreover, the Respondent is not commonly known under the Disputed Domain Name.
Registration and use in bad faith
The Complainant alleges that the Disputed Domain Name incorporates in its entirety the Complainant’s trademark and was registered long after the Complainant trademark became well known.
In addition, the Complainant states that the Respondent has a history in registering domain names that infringe trademark rights.
Consequently, the Complainant claims that the Respondent appears to be intentionally trying to capitalize on typographical error made by users to divert potential customers of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <alstomsgroup.com> is confusingly similar to the Complaint’s trademark ALSTOM. The Disputed Domain Name wholly incorporates the Complainant’s trademark and is clearly recognizable in it.
Furthermore, the addition of the term “group” and the letter “s” between both terms does not change this finding of confusing similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4 (a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that he has acquired any rights with respect to the Disputed Domain Name.
Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contentions.
Finally, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on April 26, 2019, while the Complainant’s EUTM ALSTOM No. 000948729 was registered on August 8, 2001.
The Complainant’s trademarks are well known as it has been recognized by previous decisions under the Policy (See WIPO Case No. D2019-2544, Alstom S.A. v. Name Redacted and WIPO Case No. D2010-1150 ALSTOM v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO)).
Therefore, the Panel concludes that the Respondent was aware of the Complainant’s rights when he registered the Disputed Domain Name.
Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its ALSTOM trademark.
The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and he has intentionally created a likelihood of confusion with the Complainant’s ALSTOM trademark in order to confuse Internet users.
Due to this conduct, it is obvious that the Respondent intentionally created a likelihood of confusion with the Complainant’s trademark and the Disputed Domain Name in order to confuse Internet users.
The Disputed Domain Name is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Moreover, as previously noted, the Disputed Domain Name carries a risk of implied affiliation. Additionally, the Panel notes that the Disputed Domain Name is almost identical to the Complainant’s <alstomgroup.com> domain name.
Therefore, taking all circumstances into account and for all above reasons, this Panel concludes that the Respondent has registered and is using the Disputed Domain Name 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 <alstomsgroup.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: March 5, 2020