WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Trading ten
Case No. D2021-0451
1. The Parties
The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Trading ten, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <alstomfx.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 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 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 16, 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 o February 19, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on March 19, 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 ALSTOM is a French company incorporated in 1928 which offers a variety of goods and services. Currently the Complainant is a world leader in the transport infrastructures sector, employing 34,000 professionals in more than 60 countries worldwide.
The Complainant owns numerous companies and trade name rights for the denomination “Alstom”, such as: Alstom Transport Technologies, Alstom Power System, Alstom Holding, Alstom Shipwprks, and Alstom APTIS.
The Complainant holds trademark registrations for ALSTOM mark, such as the following:
- the European Union Trade Mark Registration No. 00948729 filed on September 30, 1998 and registered on August 8, 2001 for ALSTOM (word), covering goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, and 42; and
- the International Trademark Registration No. 706292 registered on August 28, 1998 for ALSTOM (word), 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 and designating many jurisdictions worldwide.
Previous decisions under the Policy have recognized that the Complainant’s mark is distinctive and well-known globally. See for example Alstom v. Jeremiah poole, WIPO Case No. D2020-2802 and cases cited therein.
The Complainant’s main website is available at <alstom.com>.
The disputed domain name <alstomfx.com> was registered on July 25, 2020 and, at the time of filing the Complaint, it was used in association with a website displaying the activities of an entity called “alstomfx.com”, presenting themselves as an investment company and providing no contact information, except an email address.
When the Panel visited the website under the disputed domain name, under the section “about ALSTOMFX” there was the following information: “Alstomfx - a pacesetting trading training institute. Our goal is to educate you with the relevant knowledge on the majors you need to know about Binary Options Trading, Forex Trading and cryptocurrency Trading which include blockchain technology.” Also, the visitors were invited to create accounts to conduct transactions.
On September 16, 2020 the Complainant sent a cease and desist letter to the Respondent listed in the WhoIs informing it with regard to its trademark rights. A follow up letter was sent on October 2, 2020. No response was received.
According to the Complaint, before commencing this dispute the Complainant managed to legally delete an Instangram account which was reproducing the name “Alstomfx” and a highly similar logo to that presented on the website under the disputed domain name, such Instagram account being connected to services in the field of tourism.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark, trade and domain names, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The second Respondent seems fictive particularly because its contact details are inconsistent. The Complainant requests the transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the ALSTOM trademark.
The disputed domain name <alstomfx.com> incorporates the trademark ALSTOM with two additional letters, “fx”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not prevent 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”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark ALSTOM, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark ALSTOM, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “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”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.
In fact, at the time of filing the Complaint, the disputed domain name resolved to a website where the Respondent was apparently providing investing services under the name “Alstomfx”. However, on such website there are not accurate or complete contact details of the entity providing the purported services; the Internet visitors were asked to register accounts, thus providing personal and confidential information; and there is no response from the Respondent during the entire procedure to put forward any arguments in its favor in this present proceeding.
Accordingly, such use of the disputed domain name cannot qualify as an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.
Furthermore, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety in combination with two additional letters, “fx”, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant uses the Alstom name for many decades and holds trademark rights for ALSTOM since at least 1998.
The disputed domain name was registered in 2020 and reproduces the Complainant’s well-known mark together with the letters “fx” that can derive from “forex/foreing exchange”, closely associated with the Complainant’s financial services industry.
From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, with knowledge of the Complainant and targeting its trademark.
Paragraph 4(b)(iv) of the Policy provides that the 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” is evidence of registration and use in bad faith.
Given the circumstances in this case particularly because the disputed domain name incorporates the Complainant’s distinctive trademark and the website operated under the disputed domain name offers similar services to those of the Complainant, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
Furthermore, as noted by the Panel when visiting the website under the disputed domain name, the Respondent was using the disputed domain name to request Internet visitors to create accounts on such website, in an attempt to obtain confidential information from third parties. This is a classic phishing scheme and establishes bad faith use and registration.
The Respondent registered the disputed domain name under a privacy service, provided innacurate contact information in the WhoIs, did not respond to the Complainant’s prior letters and did not put forward any arguments in its favor in this present proceeding. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <alstomfx.com> be transferred to the Complainant.
Date: April 1, 2021