WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. NetSupport AskMySite, AskMySite.com LLC
Case No. D2020-3206
1. The Parties
The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is NetSupport AskMySite, AskMySite.com LLC, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <coradia.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 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 December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any formal response although it issued an email to the Center on January 18, 2021, which is described in more detail in the Respondent’s contentions section below.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 11, 2021. 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 which engages in activity across the globe in the field of transport infrastructure, employing 34,000 people in 60 countries. The Complainant reported turnover of EUR 6.2 billion between April 1, 2019 and December 31, 2019. The Complainant participates in the manufacture and overhaul of rolling stock worldwide and has operations in the United States, where the Respondent is based.
The Complainant has used the brand and trademark CORADIA to designate a family of trains operating on a variety of power systems for intercity and regional services since 1999. The Complainant is the owner of a range of registered trademarks for this term including, for example, International Registered Trademark No. 722311 for the word mark CORADIA registered on September 21, 1999, in class 12, designating some six countries and territories.
The Complainant was also the owner of United States Registered Trademark No. 75805663 for the word mark CORADIA with priority date of March 22, 1999, registered on July 3, 2001, in class 12. Said trademark was cancelled on April 4, 2008. More recently, the Complainant has filed another United States trademark application for the word mark CORADIA which has not yet proceeded to grant. Said application notes under the heading “Translations” that “The wording CORADIA has no meaning in a foreign language.”
The Complainant is the owner of a variety of domain names containing the CORADIA mark including <coradia.net>, registered on November 27, 2001 and <coradia.fr>, which the Complainant says has been registered since January 1, 1998. While the corresponding WhoIs record notes a creation date of April 30, 2018, the Panel has no reason to disbelieve the original creation date supplied by the Complainant and it is likely that the more recent date results from inter-registrar transfer or similar non-material change.
According to the Registrar verification, the disputed domain name was created on August 26, 2001. There are relatively few historic screenshots available from the Internet Archive “Wayback Machine” over the intervening period to date. These focus on the years 2001 to 2005, 2011, 2013 to 2016, and 2018 to 2019. In the early years, the website associated with the disputed domain name forwarded to a site at “www.askmysite.com”. This site featured a range of advertising and promotional links not focused specifically on any particular industry or line of business. It did not appear to do any specific business in its own right or to reference the name “coradia” in any way. In 2011, the disputed domain name forwarded to a website which has been archived as largely blank although featuring a search box and an invitation to contact the owner of the disputed domain name by way of a link to a website at “www.namedrive.com” which contains a contact form referencing the disputed domain name. Although there are no advertisements showing on the archived site, its appearance, in the Panel’s opinion, is typical of a pay-per-click site of the time. More recently, the website associated with the disputed domain name has been carrying pay-per-click advertising of which archive entries have been retained. Some of this references trains and train ticket reservations, thus directly and indirectly referencing the Complainant’s line of business.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant’s CORADIA trademark is wholly and identically contained in the disputed domain name along with the generic Top-Level Domain (“gTLD”), “.com”. According to past practice, said gTLD is not to be taken into consideration when examining the identity or similarity between the relevant mark and disputed domain name. The term “coradia” is quite singular and original since it is a word of pure invention that has no meaning of its own, other than to designate the railway rolling stock developed, marketed and built by the Complainant, as may be confirmed by “Google” searches.
A previous case under the Policy has found that the Complainant’s said mark is widely known and does not have any meaning in commerce other than to refer to the Complainant’s trademarks. The disputed domain name likewise references the Complainant’s marks. Internet users will directly recognize the Complainant’s mark in the disputed domain name and will believe that it was registered by the Complainant. The disputed domain name is therefore confusingly similar to the Complainant’s mark.
Rights and legitimate interests
The Respondent is not affiliated in any way to the Complainant, which has not authorized, licensed or permitted the Respondent to register or use a domain name imitating its trademark. To the best of the Complainant’s knowledge, the Respondent neither applied for, nor has obtained any trademark registrations related to the mark CORADIA, nor is commonly known under such name.
The content of the website associated with the disputed domain name does not disclose a legitimate interest. For much of the disputed domain name’s more than 19 years, it has remained unexploited. Such exploitation as there has been consists merely of a presentation of the Respondent’s services, a picture of a car, and corresponding parking pages related to the field of transport, more precisely trains. There is no indication of use or preparations to use in connection with a bona fide offering of goods or services and, on the contrary, such use as there has been is in violation of and detrimental to the Complainant’s rights.
Registered and used in bad faith
The Panel must examine all circumstances to determine registration and use in bad faith. In view of the well-known character of the Complainant’s marks it is virtually impossible that the Respondent was not aware of the Complainant’s activities when it registered the disputed domain name. Previous cases under the Policy have found that registration of a well-known trademark, of which the Respondent must reasonably have been aware, constitutes bad faith. The Complainant’s United States registered trademark was registered prior to the registration of the disputed domain name. The Complainant’s trains became well-known in the United States from 1999 onwards. Trains using the CORADIA mark were introduced in Germany, France, Luxembourg, and the United Kingdom from 1999.
A previous case under the Policy found that “coradia” does not have any meaning in commerce other than to refer to the Complainant’s trademark. The panel in such case was unable to conceive of any legitimate use that the respondent could make of the domain names concerned and inferred that the respondent registered and maintained these in the knowledge of the Complainant’s trademark, with the intention of impersonating the Complainant or otherwise taking unfair advantage of the Complainant’s goodwill.
The Complainant maintains two domain names consisting of its mark. The disputed domain name is likely to be confused with these and Internet users will believe that it is linked to the Complainant’s goods and services. There has been no bona fide offering of goods and services associated with the disputed domain name since it refers to a parking page and the content references the Complainant’s line of business, which is damaging to it.
The Respondent’s website offers domain name services but has very few pages and frequently refers to error pages. The real existence and business activity of the Respondent can therefore be questioned. It is reasonable to infer that the Respondent registered the disputed domain name in order to monetize it. The Respondent was found to have acted in bad faith in a case under the Policy dating from 2011 where the domain name concerned was registered in 2003. The use of the domain name concerned was not active but was regarded as passive holding by the panel. It is reasonable to infer that the Respondent is a cybersquatter. Similarly, the disputed domain name has no real content and its only goal is to damage the Complainant’s rights.
The Respondent did not file a formal Response in this matter. However, in an email to the Center dated January 18, 2021, the Respondent stated that the disputed domain name was available to the public for registration and was registered 20 years ago by the Respondent in accordance with an “official order-instruction” sent by one of the Respondent’s valuable European customers. The Respondent asserts that it only carries out technical control, management and support of the disputed domain name. The Respondent states that after detailed investigation, its legal experts have found that the disputed domain name does not enter into conflict with the “business-theme” of the Complainant or of any other, because it is the company name of the Respondent’s customer. The Respondent concludes that its customer is ready to consider reasonable proposals to resolve matters in a mutually acceptable way.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the 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. Preliminary Issue: Respondent Identity
The Respondent has asserted that it is not the holder of the disputed domain name and that it registered the same on behalf of a customer, which it has chosen not to identify. The Panel notes that this is not the first time that the Respondent has done this, in that the Respondent made an assertion in the informal response which it supplied by email in Maggie Sottero Designs, LLC v. NetSupport AskMySite, AskMySite.com LLC, WIPO Case No. D2020-3474 which is identical to that in the present case in all material respects. For the sake of brevity, the Panel notes that it entirely adopts the detailed analysis of the panel in that case on the question of Respondent identity and determines that the Respondent is the proper respondent in the present case and not any alleged underlying registrant which it has not disclosed.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in its extant CORADIA international registered trademark as described in the factual background section above. The Panel notes that the Complainant’s original United States trademark was cancelled after the disputed domain name was registered. This is of no consequence to the first element analysis as the Policy calls for a trademark in which the Complainant “has rights” and there are other registered trademarks for the CORADIA mark which remain in existence and are owned by the Complainant. It is also of no consequence for the first element analysis that any such trademark may not be registered in the Complainant’s jurisdiction. Furthermore, the Panel finds that the Complainant has established unregistered trademark rights in the CORADIA mark dating from 1999 by virtue of its substantial global activities under such term.
Comparing the disputed domain name to the Complainant’s mark, it may be seen that the second level of the disputed domain name is identical to said mark. As the Complainant notes, the gTLD “.com” is not typically taken into consideration in the comparison process.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s CORADIA mark and accordingly holds the first element under the Policy to be established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel considers that the Complainant has established the necessary prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon the present record. The Complainant makes the uncontradicted assertion that its CORADIA mark is singular and original, being a word of pure invention that has no meaning of its own. The Complainant also asserts that the Respondent is not affiliated in any way to it and has no permission to use such mark. Finally, the Complainant submits that the website associated with the disputed domain name does not disclose any legitimate interest across some 19 years of existence.
The Panel has repeated the Complainant’s searches against the website associated with the disputed domain name using the Internet Archive “Wayback Machine”. The Complainant’s screenshots are images only and the Panel wished to be able to review where various hyperlinks from the different sites were being pointed at various dates, such as the contact link pointing to “www.namedrive.com”. On the topic of the Panel undertaking such limited factual research into matters of public record, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The initial use of the disputed domain name was to forward to the Respondent’s website containing what appears to be a directory service incorporating a range of advertising material. According to its 2003 incarnation, the site itself was not named “coradia” but rather “Ask My Site”. There is no logical link between this website and the word “coradia” that is apparent to the Panel other than that this is a reference to the Complainant’s mark. It is possible that the Respondent at this time was using the disputed domain name to maximize traffic and thus to increase the potential reach of its directory and advertising service by pointing a domain name containing the Complainant’s mark to such site. In any event, later incarnations of the website associated with the disputed domain name suggest that the disputed domain name might have been offered for general sale via the contact invitation on “www.namedrive.com”, while others contain pay-per-click advertising in part referencing the business of the Complainant. Given the Complainant’s uncontradicted assertion that its CORADIA mark is unique and has no meaning of its own, the Panel can only see these uses of the disputed domain name as part of a deliberate attempt to target and to take unfair advantage of the Complainant’s rights. Such uses do not confer any rights or legitimate interests upon the Respondent, whether in terms of paragraph 4(c) of the Policy or otherwise (see in particular section 2.9 of the WIPO Overview 3.0 regarding parked pages and pay-per-click links).
The Respondent’s sole assertion on this topic is that its legal experts have found that the disputed domain name does not enter into conflict with the Complainant’s rights because it represents the Respondent’s customer’s company name. Why the Respondent has decided to consult its own legal experts over the question of its customer’s domain name, for which it claims merely to provide technical control, management and support, is not made clear. In any event, as the Respondent has not disclosed its alleged customer’s identity, the Panel has no evidence before it to show that the disputed domain name represents any interested party’s company name, nor would this necessarily establish rights and legitimate interests in the disputed domain name on its own. The mere fact of having registered a suitably named company does not demonstrate that the Respondent, or for that matter any underlying registrant, has been commonly known by the disputed domain name without something more (on this topic, see the full discussion in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672).
Based on the present record, the Panel has been unable to identify rights and legitimate interests on the part of the Respondent in the disputed domain name. Accordingly, in all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and therefore that the Complainant has demonstrated that the Respondent does not have such rights or legitimate interests. The second element under the Policy has therefore been established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Generally speaking, for registration in bad faith to be found under the Policy, it must be demonstrated that the respondent had prior knowledge of the complainant’s rights and an intent to target the same when it registered the domain name concerned. This can be more difficult for a complainant to do if, as here, a considerable period of time has passed between the registration of the disputed domain name and the filing of the Complaint, albeit that any such delay does not in and of itself act as a bar on such filing, nor does it prevent the Complainant from potentially prevailing on the merits (see section 4.17 of the WIPO Overview 3.0). The Respondent hints at the Complainant’s difficulty when it mentions the fact that the disputed domain name has been in existence for twenty years. However, it does not take issue with any of the Complainant’s assertions, beyond quoting its unattributed legal advice, and produces neither any evidence nor any real case of substance to counter these.
The Complainant asserts that the word “coradia” in the disputed domain name has no meaning other than to reference its CORADIA trademark. It also provides relevant evidence showing that such mark was in active use, including in the United States where the Respondent was based, from about 1999. In this context, it matters not that the Complainant’s then-existing United States registered trademark was subsequently cancelled some years after the disputed domain name was registered. What matters is that it was in force at the date of registration of the disputed domain name. In any event, the cancellation is of no significance to the present case as the Complainant has shown a continuity of other registered rights and unregistered trademark rights in the CORADIA mark which came into existence prior to the date of registration of the disputed domain name. The Respondent takes no issue with the rights established by the Complainant.
Due either to the existence of the Complainant’s registered or unregistered trademark rights, and/or to the Complainant’s prominent activities in connection with trains in Europe, the United States and elsewhere from 1999, it is reasonable to infer that the Complainant’s rights are likely to have come to the attention of the Respondent by the point at which it registered the disputed domain name. Notably, the Respondent does not deny such knowledge either on its own behalf or on behalf of its alleged customer. In any event, the disputed domain name exactly matches the Complainant’s mark in the second level with no adornments or any additional distinguishing features and, on the basis of the present record, the Panel can see no other explanation than that its registration resulted from the Respondent’s knowledge of and intention to target such mark by monetizing the disputed domain name.
The Respondent’s case that the disputed domain name represented its client’s company name is implausible, faced with the weight of evidence regarding the Complainant’s CORADIA mark. It is particularly significant to the Panel’s mind that the Respondent chooses to make this submission without disclosing the details of its alleged customer or the company concerned, whose name is said to match the disputed domain name. Furthermore, such alleged customer or company has not sought to present any case on its own behalf or jointly with the Respondent. It should also not be overlooked that the Respondent made the exact same argument in relation to an entirely different domain name in another recent case, where the domain name registration was also of a longstanding nature, namely Maggie Sottero Designs, LLC v. NetSupport AskMySite, AskMySite.com LLC, supra. The panel was not convinced in that case that the Respondent’s bare assertions indicated a good faith registration and the Panel shares that opinion in the present case. The Panel therefore finds that the disputed domain name was registered in bad faith.
Considering the various uses to which the disputed domain name has been put over the years, the Panel does not find any of these that suggest a good faith motivation for either the registration or use of the disputed domain name. On the contrary, such archive entries as are available tend to reinforce the previous finding of registration in bad faith. There is no apparent link between the original content on the website to which the disputed domain name pointed and the name “coradia”. It seems reasonable to the Panel to infer that the disputed domain name was pointed to such website in bad faith in order to benefit from Internet traffic garnered by the notoriety and distinctiveness of the Complainant’s mark as therein reproduced. No use of the disputed domain name by a European company of the same name appears on the archives and no alternative evidence of such use has been produced despite the Respondent’s assertion that this was the reason for its registration.
Later uses of the disputed domain name indicate that it may have been offered for general sale as suggested by the invitation at “www.namedrive.com” to “Inquire about the domain coradia.com”. Given the Complainant’s assertion that its name is unique and has no meaning in any language, this in itself indicates that the disputed domain name may have been registered and used with intent to sell it to the Complainant for an amount in excess of the Respondent’s out of pocket costs. Finally, still later uses of the disputed domain name directly reference the Complainant’s line of business within pay-per-click advertising, and the publication of links which target trademark rights, whether or not automatically generated, is not a good faith activity (see for example section 3.5 of the WIPO Overview 3.0).
The Respondent has chosen to offer an informal explanation for the registration and use of the disputed domain name which lacks essential details and, most importantly, any supporting evidence. The Respondent’s submission also lacks the certificate of truth and accuracy required by paragraph 5(c)(viii) of the Rules and must therefore be treated with considerable caution. In any event, even if the Respondent’s account is taken at face value, there is no explanation as to how the alleged customer came up with the name “coradia”, nor does the Respondent mount any substantive challenge to the Complainant’s submissions that the term is singular and refers to the Complainant alone. Given the lengthy history of the disputed domain name, being of some twenty years’ standing, the Panel would have expected a good faith registrant to be able to put forward a wealth of material to support claims such as those made by the Respondent. The fact that the Respondent has been unable or unwilling to make anything more than bare and unsupported assertions speaks volumes to the Panel.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the third element under the Policy has been established.
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 <coradia.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 2, 2021