WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Danielle Murillo, Danielle Murillo
Case No. D2020-0121
1. The Parties
The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Danielle Murillo, Danielle Murillo, United States of America (“United States” or “US”).
2. The Domain Name and Registrar
The disputed domain name <alstomgrp.com> is registered with Domain.com, LLC (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 the Complainant on January 20, 2020 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 January 23, 2020.
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 January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2020.
The Center appointed Frank Schoneveld as the sole panelist in this matter on February 28, 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 holds the following trademark registrations that comprise the word “Alstom” in numerous jurisdictions around the world, including:
- International Registration No. 706292 ALSTOM registered on August 28, 1998, designating (among others) Algeria, China, Cuba, Germany, Egypt, Democratic People’s Republic of Korea, Japan, Mexico, Morocco, Russian Federation, Thailand, Viet Nam, and the United Kingdom;
- European Union Trademark Registration No. 000948729 ALSTOM registered on August 8, 2001; and
- US Trademark Registration No. 4570546 ALSTOM registered on July 22, 2014.
The disputed domain name was registered on May 15, 2019 and resolves to a “403” or a “404” error message.
The Complainant is the registrant of the domain names <alstom.com> registered since January 20, 1998 and <alstomgroup.com> registered on November 14, 2000, both redirecting to the Complainant’s corporate group’s website “www.alstom.com”.
The denomination “Alstom Group” is the expression appearing in the email addresses of the Complainant’s employees as firstname.lastname@example.org.
The Complainant is a French company created in 1928. The Alstom Group employs 34,000 professionals in more than 60 countries. Between April 1, 2018 and December 31, 2018, Alstom’s order intake reached EUR 10.5 billion with turnover reaching EUR 6.0 billion. In the United States, the Alstom Group employs 2,400 people across 11 sites.
An electronic search done by the Complainant on January 23, 2020 of the Business Filing Search database of the Office of the Minnesota Secretary of State for the Respondent’s name “Danielle Murillo” returned “No results match the criteria entered”.
5. Parties’ Contentions
The Complainant contends that it is a global leader in the world of transport infrastructure and that the United States, where the Respondent indicates having her address, is one of the key countries for the Alstom Group including because it is where one quarter of metro cars in the United States are Alstom-made. The Complainant also contends that it owns a great number of companies and trade name rights with the denomination “Alstom”, such as: Alstom Transport Technologies, Alstom Power Systems, Alstom Holdings, Alstom Shipworks and Alstom Aptis in which, in particular, the denomination “Alstom Group” is widely used by the Complainant to designate the company Alstom and its subsidiaries.
The Complainant considers that the disputed domain name is confusingly similar to its numerous trademarks ALSTOM in that it wholly and identically reproduces the prior marks ALSTOM of the Complainant, arguing that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The Complainant notes that “Alstom” is directly recognizable within the disputed domain name in particular because the second term “grp” is the abbreviation of the word “group”, which is purely descriptive when appearing directly next to a company name, and that in this context, the public will be led to believe that the disputed domain name belongs to the “Alstom Group”, an expression that is widely used by the Complainant who is notably the owner of the domain name <alstomgroup.com> redirecting to its website “www.alstom.com”. The Complainant argues that given the reputation of ALSTOM and their activities worldwide, the disputed domain name will be directly considered by the public as belonging to the Complainant (which is the sole distinctive word within the disputed domain name). The Complainant submits that with regard to the suffix “.com”, it only indicates that the disputed domain name is registered in the “.com” gTLD and that numerous WIPO UDRP decisions have held that the addition of the gTLD “.com” is not to be taken into consideration when examining the identity or similarity between the relevant mark(s) and disputed domain name(s). The Complainant contends that, accordingly, Internet users will directly recognize the Complainant’s trademarks in the disputed domain name and will mistakenly believe that it has been registered by the Complainant.
The Complainant states that:
(i) the Respondent is not affiliated in any way to the Complainant;
(ii) the Complainant has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating its trademarks;
(iii) to the best of the Complainant’s knowledge, the Respondent did not apply for or obtain any trademark registrations related to the sign ALSTOM; and
(iv) the Respondent is not commonly known under the name “Alstom” either.
The Complainant notes that the webpage to which the disputed domain name devolves, displays a 403 or a 404 error message and has done so since its registration date, arguing that there is therefore, 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. The Complainant concludes that the Respondent has no rights or legitimate interests in respect to the disputed domain name.
The Complainant contends that the Respondent’s bad faith should be established because:
(a) the disputed domain name completely incorporates the Complainant’s trademarks and was acquired long after the Complainant’s marks became well-known;
(b) the Respondent attempted to conceal her identity by giving false information regarding her contact details; and
(c) the Respondent has not made demonstrable preparations to use the disputed domain name.
The Complainant asserts that, in view of the well-known character of the name “Alstom”, it is virtually impossible that the Respondent was not aware of the Complainant’s activities at the time it registered the disputed domain name, arguing that in many WIPO UDRP cases it has been considered that the registration of a well-known trademark, of which the Respondent must reasonably be aware, constitutes bad faith, so that it is very unlikely that a third party may adopt the subject sign in good faith. The Complainant argues that registration of the disputed domain name takes advantage of the prior mark’s reputation and is likely to confuse Internet users seeking to reach the Complainant’s real Internet website “www.alstomgroup.com” so that Internet users facing the disputed domain name <alstomgrp.com>, which incorporates the Complainant’s trademark together with the element “grp” (abbreviation of the word “group”), will immediately believe that it belongs to the Alstom Group.
The Complainant also submits that the Respondent attempted to conceal her identity by giving false information regarding her contact details in that:
- the Registrant’s organization “Danielle Murillo” is not incorporated in the Minnesota Company Registry;
- the Respondent’s address seems fake, since when the Complainant searched this address on Google Map, the Complainant was redirected to another address;
- the Respondent’s email address does not correspond to the Respondent’s name (“Danielle Murillo”), and the person’s name used in the Respondent’s email address corresponds to an officer of the company ENGIE Factory; and
- the Respondent misspelled the name of the company “Engie Factory” in her email address, by replacing the letter “I” with the letter “i” (which is also allegedly an act of typo-squatting).
The Complainant argues that all the above facts make it quite clear that the Respondent is trying by all means to hide her identity, and it seems that the Respondent assumed a third party’s identity in order not to be identified and that this behavior should be considered as additional evidence of the Respondent’s bad faith.
The Complainant asserts that the Respondent has not made demonstrable preparations to use the disputed domain name and, to the contrary, the website corresponding to the disputed domain name displays a “403” or a “404” error message since its registration date, and that there is no evidence that any fair and legitimate use of the disputed domain name has been made since it was registered. The Complainant contends that (i) panels have consistently held that passive holding of domain names should, under certain circumstances, be considered as bad faith; and that (ii) the disputed domain name has no substance at all and has only had the goal to impinge upon the Complainant’s legal rights. The Complainant seeks transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have the disputed domain name transferred the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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
The disputed domain name is made up partly and identically of the Complainant’s registered trademark ALSTOM together with the letters “grp” which appear to be an abbreviation of the word “group”. In the absence of any submission from the Respondent, it is reasonably clear that a dominant feature of the disputed domain name is the Complainant’s registered trademark. In that circumstance, it can be concluded that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, so that the requirements of UDRP paragraph 4(a)(i) are satisfied.
B. Rights or Legitimate Interests
The Complaint indicates that the Respondent is not affiliated in any way to the Complainant and that the Complainant has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating the Complainant’s trademark ALSTOM, the mark which makes up the dominant part of the disputed domain name. The Respondent’s name does not incorporate any of the disputed domain name and a search of the Minnesota business registry – the State in the United States where the Respondent has her address - resulted in there being no business registered by the Respondent in that jurisdiction, being the one most likely to find registration if the Respondent might have rights in the disputed domain name. Further, there is nothing to suggest the Respondent might be commonly known by the disputed domain name or has some other legitimate interest in respect of the disputed domain name. Also, after nearly 10 months since registration, the failure of the disputed domain name to devolve to a webpage on the Internet suggests that the Respondent has no right or legitimate interest in respect of the disputed domain name.
In the absence of any contrary indication from the Respondent, and in view of the matters mentioned above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds no particular significance to the Respondent’s address when searched electronically by the Complainant using a map search engine, that the Complainant was redirected to another address. The courier delivering documents from the WIPO Center appears to have had no difficulty in delivering to the address provided by the Respondent. Also, there is no requirement that the contact email for a Registrant include the Registrant’s name. There is nothing preventing a Registrant using another person’s email as a contact email address. In this case, there is no clear evidence provided that the email address provided as the contact address for the Registrant (the Respondent) was anything other than legitimate except for the misspelling of one letter. In view of the Complainant’s allegation concerning misspelling of the Respondent’s email contact address, it would have been very simple to send a message to the email address provided but with the correct spelling, in order to verify if it was a correct contact email. However, there is no evidence that this was ever done. The Panel makes no finding as to whether or not the Respondent’s contact address was fake and might amount to evidence of bad faith.
The Panel accepts that the Respondent knew, or ought to have known, of the Complainant’s trademark ALSTOM which has been registered as a trademark in the United States for more than five years before the disputed domain name was registered. Further, the letters in the order “alstomgrp” are not letters that would be likely to occur randomly to a domain name registrant, and even less likely would it be a coincidence for the Registrant to use those letters in a combination of the Complainant’s trademark and a common abbreviation in English of the word “group”. This is particularly true when the Complainant uses almost the same combination of letters, namely “alstomgroup”, in the emails of its many thousands of employees in the United States and elsewhere. The high degree of similarity is too strong to simply be a coincidence, especially when the Respondent provides no alternative explanation for such a coincidence. In addition, the Respondent has created a likelihood of confusion with the Complainant’s registered mark ALSTOM by using it in combination with “grp” in the disputed domain name so that Internet users will likely consider (mistakenly) that it refers to the Complainant when clearly it does not.
In the absence of any rights or legitimate interest in the disputed domain name and there being no credible evidence for the Respondent’s choice of a domain name that includes a trademark that should have been known to the Respondent, an inference arises of bad faith registration and use of the disputed domain name.
This inference of bad faith is supported by the above mentioned manner in which the disputed domain name incorporates the Complainant’s mark. For all the reasons given above, and since the Respondent has failed to respond to the inference of bad faith, the Panel finds that the disputed domain name has been registered and is being used 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 <alstomgrp.com> be transferred to the Complainant.
Date: March 10, 2020