WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. WhoisGuard, Inc. / Thai Bui, Thai An commercial and architecture JSC

Case No. D2021-0410

1. The Parties

The Complainant is Alstom, France, represented by Lynde & Associes, France.

The Respondent is WhoisGuard, Inc. Panama / Thai Bui, Thai An commercial and architecture JSC, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <alstom.store> 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 10, 2021. On February 11, 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 the Complainant on February 17, 2021 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 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 the Respondent of the Complaint, and the proceedings commenced on February 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 9, 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 company founded and organized in 1928 under the laws of France, which operates globally in the rail infrastructure, power generation and transmission, employing over 38,000 people in 60 countries. The Complainant owns various companies, which form the Alstom Group, including Alston Transport Technologies, Alstom Transport, Alstom Power, Alstom Hydro, Alstom Grid, Alstom Holdings, Alstom Power Turbomachines, Alstom Management, and Alstom Wind. The Complainant’s group operates worldwide, including Viet Nam, where the Complainant is present for over 30 years through its headquarters in Hanoi, playing a significant role in various metro infrastructures, signaling and telecommunication systems.

The Complainant holds trademark registrations that comprise the term “alstom” in numerous jurisdictions around the world, including the following:

- International Trademark Registration No. 706292, ALSTOM, registered on August 28, 1998, 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, among other jurisdictions, Viet Nam;

- International Trademark Registration No. 706360, ALSTOM, registered on August 28, 1998, 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, among other jurisdictions, Viet Nam;

- International Trademark Registration No. 1528691, ALSTOM, registered on December 4, 2019, in classes 9, 12, 37 and 42, designating among other jurisdictions Viet Nam;

- European Union Trademark Registration No. 948729, ALSTOM, registered on August 8, 2001, in classes 1, 2, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42; and

- United States Trademark Registration No. 85507371, ALSTOM, registered on April 2, 2013, in classes 1, 6, 7, 8, 9, 12, 13, 17, 19 and 24, (collectively the “ALSTOM mark”).

Prior decisions under the Policy have recognized the well known character of the ALSTOM mark ¹.

The Complainant further owns numerous domain names comprising the ALSTOM mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are redirected to the Complainant’s group’s website “www.alstom.com”. Among others, <alstom.com> (registered on January 20, 1998), <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), <alstom.ca> (registered on November 25, 2000), <alstom.kr> (registered on February 28, 2007), <alstom.biz> (registered on November 15, 2001), <alstom.tech> (registered on September 27, 2017), <alstom.club> (registered on October 8, 2015), <alstom.pro> (registered on July 23, 2008), and <alstom.careers> (registered on April 30, 2018).

The disputed domain name was registered on June 10, 2020, and it is currently inactive redirecting to a browser error page. According to the evidence provided by the Complainant the disputed domain name was linked to a website, in English language, allegedly selling t-shirts with political and/or religious messages.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The Complainant sent a cease and desist letter to the Respondent through the email address included in the WhoIs record for the disputed domain name, as well as subsequent reminders. In the absence of response, the Complainant addressed a claim to the Registrar requesting the Respondent’s contact information, and the cutting off all content linked to the disputed domain name. The Respondent’s contact information was not provided, but the content linked to the disputed domain name was cut off.

The disputed domain name is identical to the ALSTOM mark. The generic Top Level Domain (“gTLD”) is typically not to be taken into account for the purposes of comparison under the Policy and, given the generic meaning of the word “store”, the gTLD “.store” strengthen the suggestion of a legitimate connection between the Complainant and the disputed domain name. The gTLD “.store” adds confusion indicating that the website linked to the disputed domain name is the Complainant’s online store. The risk of confusion is heightened by the well known character of the ALSTOM mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated to the Complainant, has not been authorized to register or use a domain name incorporating the ALSTOM mark, is not commonly known under the name “alstom” and has not applied for or obtained any trademark registration related to this term. The Respondent has failed to show any rights or legitimate interests in the disputed domain name not replying to the Complainant’s cease and desist letter and subsequent reminders.

The disputed domain name was registered and is being used in bad faith. Due to the well known character of the ALSTOM mark it is impossible that the Respondent was not aware of the Complainant and its trademark at the time it registered the disputed domain name. The Respondent knew or should have known about the ALSTOM mark, which has no meaning in commerce other than to refer to the Complainant and its trademark. The Respondent silence to the cease and desist letter is further evidence of its bad faith, as well as the numerous domain names associated with the Respondent’s name and its email address, including domain names that reproduce other reputed trademarks. The Respondent appears to be a cybersquatter that registers domain names reproducing reputed third parties’ trademarks or misspellings of these marks. The Respondent registered and has used the disputed domain name in bad faith with the intention of impersonating the Complainant or otherwise taking unfair advantage of the goodwill attached to the ALSTOM mark, with the intention to attract Internet users to the Respondent’s website by creating a likelihood of confusion.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered trademark ALSTOM, both by virtue of its numerous trademark registrations and as a result of its global goodwill and reputation. The disputed domain name incorporates the ALSTOM mark, and the gTLD “.store” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, and 1.11, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.

In the absence of any Response, the Panel notes that the disputed domain name was used, according to the evidence provided by the Complainant, in connection to a website allegedly selling t-shirts, which has been apparently taken down by the Registrar or by the Respondent after the Complainant’s cease and desist letter and its claim before the Registrar. There is no indication or evidence showing that the Respondent is commonly known by the disputed domain name, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name.

A core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety, being identical to this reputed trademark, and uses a gTLD “.store” that may point to the Complainant and its well known mark, indicating its online store. Therefore, the Panel considers that there is a clear risk of implied affiliation. Additionally, the use by the Complainant of numerous domain names consisting of its reputed trademark under various gTLDs and ccTLDs may increase the likelihood of confusion.

It is further remarkable the Respondent has not replied to the Complaint or to the Complainant’s cease and desist letter, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent lacks of any rights or legitimate interests in the disputed domain name, and the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name is identical to the ALSTOM mark, creating the impression that it refers to the Complainant’s online store, suggesting affiliation, sponsorship or endorsement by the Complainant;

(ii) the ALSTOM mark is well-known and the Complainant operates internationally including Viet Nam (where the Respondent is located according to the Registrar verification);

(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;

(iv) the Respondent’s name and email address used for the registration of the disputed domain name, have been used for the registration of various domain names which reproduce other reputed third parties’ trademarks or misspellings of such trademarks (typosquatting);

(v) the Respondent’s website has been apparently taken down either by the Registrar or by the Respondent after the Complainant’s cease and desist letter and its claim before the Registrar;

(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint and/or to the Complainant’s cease and desist letter.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant and its trademark with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to the Respondent’s website, which constitutes bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.

7. Decision

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, <alstom.store> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: April 14, 2021