WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Contact Privacy Inc. Customer 0155604942 / Milen Radumilo
Case No. D2020-0120
1. The Parties
Complainant is Alstom, France, represented by Lynde & Associes, France.
Respondent is Contact Privacy Inc. Customer 0155604942, Canada / Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <transport-alstom.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, 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 Complainant on January 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 22, 2020.
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 Respondent of the Complaint, and the proceedings commenced on January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2020.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on February 26, 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 disputed domain name <transport-alstom.com> was registered on August 31, 2019.
Complainant is a global leader in the world of power generation, power transmission and rail infrastructure, employing 36,000 professional in more than 60 countries.
Complainant is the owner of European Union Trademark Registration Number 000948729 for ALSTOM registered on August 8, 2001 in Classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
Complainant is the registrant of the following domain names:
<alstomtransport.com> registered on September 26, 2001;
<alstom.com> registered on January 20, 1998;
<alstom-power.com> registered on March 31, 2000;
<alstom.net> registered on April 1, 2000;
<alstom.co.uk> registered on June 15, 1998;
<alstom.info> registered on July 31, 2001;
<alstom.cn> registered on July 7, 2004;
<alstom.org> registered on April 1, 2000;
<alstom.fr> registered on May 10, 2010; and,
<alstom.ca> registered on November 25, 2000.
According to the Complaint, the disputed domain name leads to a webpage that states “your computer has been infected” and a file starts automatically downloading on the computer of the visitor to the website.
On October 17, 2019, Complainant’s representative sent a cease and desist letter to Respondent.
Complainant sent reminders to Respondent on November 19, 2019, December 11, 2019, and January 3, 2020 with a copy sent to Registrar.
Complainant also attempted to submit messages to Respondent through the Registrar’s platform.
Respondent never responded to Complainant’s correspondence.
5. Parties’ Contentions
The disputed domain name is confusingly similar to Complainant’s ALSTOM trademark in that it combines “alstom” and the word “transport” which refers to Complainant’s core business.
The addition of “-” between “alstom” and “transport” only serves to highlight the ALSTOM mark.
Prior WIPO panels have determined that the ALSTOM mark is famous and well known. Accordingly, Internet users will directly recognize Complainants’ ALSTOM name within the disputed domain name and will believe that it was registered by Complainant or by a company owned by Complainant.
The addition of a descriptive word to a well-known trademark is considered an insubstantial difference.
The additional of “.com” should not be considered when determining the identity or similarity of the disputed domain name to Complainant’s ALSTOM mark.
Respondent has failed to prove its rights or legitimate interests in the disputed domain name. Respondent is not affiliated in any way to Complainant and Complainant has not authorized, licensed or permitted Respondent to register or use a domain name incorporating the ALSTOM mark.
Respondent has not applied for or obtained any trademark registration related to ALSTOM nor is it commercially know as ALSTOM.
Respondent’s bad faith in registering the disputed domain name is established because the disputed domain name incorporates Complainant’s ALSTOM mark and was acquired long after Complainant’s ALSTOM mark became famous. Given the fame of the ALSTOM mark, it is virtually impossible Respondent was not aware of Complainant’s ALSTOM mark when it registered the disputed domain name.
According to the Complaint, Respondent’s bad faith use of the disputed domain name is proven because the disputed domain name reverts to a webpage which automatically downloads a virus onto Internet users’ computers. Given that the disputed domain name incorporates the ALSTOM mark, Respondent is targeting Complainant’s customers and employees with the virus.
Lastly, Respondent remained silent and did not reply to Complainant’s cease and desist letter and numerous follow up reminders.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated it owns registered trademark rights in the ALSTOM trademark in the European Union and throughout the world. The addition of the dictionary term “transport” is insufficient to avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name; has not at any time been generally known by the disputed domain name; and is not making a legitimate noncommercial of fair use of the disputed domain name. Complainant has also presented prima facie evidence Respondent is using the disputed domain name to place a virus on the computers of Internet users who are seeking to find Complainant’s websites.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any right or legitimate interest in the disputed domain name.
In the absence of any evidence indicating a legitimate reason for registering the disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after Complainant first registered and used its famous ALSTOM mark. The evidence provided by Complainant makes it clear Respondent undoubtedly knew of Complainant’s ALSTOM mark and knew that it had no rights or legitimate interests in the disputed domain name. There is no benign reason for Respondent to have registered a domain name that is virtually identical to Complainant’s famous name and mark.
Further, the use of the disputed domain name by Respondent is clearly in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Complainant has submitted evidence that Respondent has used the disputed domain name in order to download a virus to the users’ computers. Given the fame of Complainant’s ALSTOM mark, the obvious inference is that Respondent hoped to trick either customers or employees of Complainant to visit the website at the disputed domain name in order to place a virus on their computers for nefarious means. This is a textbook example of bad faith use on the part of Respondent.
The Panel finds that the only plausible basis for registering and using the disputed domain name has been for illegitimate and bad faith purposes.
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 <transport-alstom.com> be transferred to the Complainant.
Colin T. O’Brien
Date: March 11, 2020