WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. WhoisGuard, Inc. / James Kabbani, alstomtransporte
Case No. D2021-0399
1. The Parties
Complainant is ALSTOM, France, represented by Lynde & Associes, France.
Respondent is WhoisGuard, Inc., Panama / James Kabbani, alstomtransporte, United States of America (“United States” or “U.S”).
2. The Domain Name and Registrar
The disputed domain name <alstomtransporte.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2021. On February 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2021, 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 February 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 17, 2021.
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 Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 17, 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
Complainant is ALSTOM, a French company created in 1928 and a global leader in the world of power generation, power transmission, and rail infrastructure. Today, Complainant employs 36,000 professionals in more than 60 countries, including in Panama, where the company actively contributes to the development of the urban transport since 2010.
In the Unites States, Complainant has provided and continues to provide its mobility solutions to both private and public operators across the country, in cities such as New York, Boston, Baltimore, Washington, D.C., Atlanta, Philadelphia, and the San Francisco Bay Area.
In Latin America, Complainant is present in Chile, Argentina, Brazil, Peru, Ecuador, Colombia, Venezuela, Dominican Republic, and Mexico, with sites and ongoing projects in each of these countries.
In order to protect its trademark worldwide, Complainant registered the sign “ALSTOM” in numerous jurisdictions, including the following trademark registrations:
- Panama Trademark N° 271735-01 () in classes 9, 12, 37 and 42, filed on February 12, 2019;
- Panama Trademark N° 271736-01 () in classes 9, 12, 37 and 42, filed on February 12, 2019;
- US Trademark N° 85250501 ALSTOM in classes 1, 6, 7, 8, 9, 11, 12, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45, filed on February 24, 2011;
- US Trademark N° 85507371 () in classes 1, 6, 7, 8, 9, 12, 13, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42 and 45; filed on January 3, 2012;
- International Registration N°706.292 ALSTOM filed on August 28, 1998, duly renewed, covering goods and services in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42 designating notably Austria, Benelux, China, Germany, Egypt, Democratic People’s Republic of Korea, Morocco, Portugal, Russian Federation, Viet Nam, United Kingdom, Norway.
- European Union Trademark Registration N°948.729 ALSTOM filed on September 30, 1998, duly renewed, in classes 1, 2, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42.
Complainant is also the registrant of numerous domain names under various generic and country code Top Level Domains (“TLDs”) that reflect its trademark, such as:
- <alstomtransport.com> registered since September 26th, 2001;
- <alstom.com> registered since January 20, 1998;
- <alstom.net> registered since April 1, 2000;
- <alstom.co.uk> registered since June 15, 1998;
- <alstom.info> registered since July 31, 2001;
- <alstom.cn> registered since July 7, 2004;
- <alstom.org> registered since April 1, 2000;
- <alstom.fr> registered since May 10, 2010;
- <alstom.ca> registered since November 25, 2000;
- <alstom.kr> registered since February 28, 2007.
Complainant also owns a great number of companies and trade name rights on the denomination “ALSTOM”, such as: ALSTOM Transport Technologies, ALSTOM Transport, ALSTOM Power, ALSTOM Hydro, ALSTOM Grid, ALSTOM Holdings, ALSTOM Power Turbomachines, ALSTOM Management, ALSTOM Wind, etc.
The disputed domain name <alstomtransporte.com> was registered by Respondent on June 9, 2020 and resolves to an error page.
5. Parties’ Contentions
Complainant submits that the disputed domain name, of which the first term “alstom” is the most distinctive part, is a reproduction of Complainant’s registered trademarks ALSTOM, trade names and domain names.
In addition, Complainant affirms that the expression “transporte” – which constitutes the second part of the disputed domain name <alstomtransporte.com> - refers to Complainant’s sector of activity. In this regard, Complainant notes that the addition of the letter “e” at the end of the word “transporte” does not add any distinctive meaning to the domain name when compared to the word “transport”, which is the name of the companies ALSTOM Transport Technologies and ALSTOM Transport SA, as well as from the domain name of which Complainant is also the holder <alstomtransport.com>.
Moreover, Complainant argued that the addition to a reputation mark of a word describing the sector in which the said trademark is well known – such as “transporte” - has already been considered by WIPO as being an “insubstantial difference”.
Thus, Complainant states that consumers, when visiting the website hosted by the disputed domain name <alstomtransporte.com>, can reasonably believe that it is associated or affiliated with Complainant. However, Respondent is not sponsored by or affiliated with Complainant, nor is licensed, authorized, or otherwise permitted to use its registered trademark or trade name. Considering this scenario, paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules would be fulfilled.
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the sign ALSTOM, since (i) it has no prior rights to the sign; (ii) there is no evidence of use of the disputed domain name in connection with a fair use or a bona fide offering of goods and services; and (iii) Respondent is not commonly known by the disputed domain name. Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be also fulfilled.
Moreover, Complainant affirms that the disputed domain name was clearly registered and is being used by Respondent in bad faith for the following reasons: (i) the disputed domain name fully incorporates Complainant’s trademarks and was registered long after Complainant’s trademark became well known; (ii) in view of the well-known character of the name ALSTOM, which has no meaning other than to refer to Complainant’s trademarks, it is virtually impossible that Respondent was not aware of Complainant’s activities at the time it registered the disputed domain name; and (iii) the disputed domain name reverts to an error page and does not appear to be used with regards to any genuine activities. The webpage hosted by the disputed domain name even appears to incite users to download credulous content or a virus.
ln conclusion, Complainant alleges that the registration of the disputed domain name by Respondent has the sole intention of impinging upon Complainant’s legal rights and damage its reputation, which constitutes registration and use in bad faith pursuant to paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would have been fulfilled.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in an UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
A. Identical or Confusingly Similar
Complainant showed that it owns several trademark registrations worldwide for the mark ALSTOM and that its influence in the segments of power generation, power transmission and rail infrastructure, under the trademark ALSTOM, predate the registration of the disputed domain name by Respondent.
The Panel finds that, in the present case, the disputed domain name incorporates the entirety of Complainant’s trademark ALSTOM, followed by the term “transporte” which does not prevent Complainant’s trademark from being recognizable in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of the first element of paragraph 4(a) of the Policy are satisfied.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <alstomtransporte.com>.
The Panel finds that Respondent’s use of the disputed domain name incorporating Complainant’s trademark with the addition of the term “transporte” does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
Firstly, the Panel finds that it is highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark ALSTOM at the time of registration of the disputed domain name, especially because: (i) the term ALSTOM is not used in any other circumstance but to make reference to the Complainant’s company; (ii) Complainant's trademarks, trade names and domain names, all of them containing the mark ALSTOM, were registered long before the disputed domain name was registered by Respondent; and (iii) the domain name reverts to an error page with no content other than a single link which appears to incite users to download credulous content or a virus.
Furthermore, the Panel notes that Respondent’s disputed domain name is almost identical to Complainant’s domain name <alstomtransport.com>, differing only by the addition of the letter “e”.
Given all the above mentioned, the evidence shows that Respondent was likely deliberately trying to create confusion and mislead Complainant’s costumers in an illegitimate way. As previously mentioned, the disputed domain name reverts to an error page with no content other than a single link which appears to incite users to download credulous content or a virus. The Panel finds that this is evidence of bad faith. The fact that Respondent did not present any response to the Complaint reinforces the conclusion that Respondent acted in bad faith.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. As such, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <alstomtransporte.com> be transferred to Complainant.
Gabriel F. Leonardos
Date: March 31, 2021