WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. wangxiansheng
Case No. D2021-1255
1. The Parties
The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is wangxiansheng, Singapore.
2. The Domain Name and Registrar
The disputed domain name <alstompumps.com> is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 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 April 29, 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 April 30, 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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2021.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on July 6, 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 Alstom, a French company involved in the business power generation, power transmission and rail infrastructure. The Complainant’s owns the trademark ALSTOM and has numerous trade mark registrations for ALSTOM and ALSTOM (figurative mark). The Complainant’s earliest registration for its mark ALSTOM dates back to August 28, 1998 and it also holds a trademark registration for ALSTOM (figurative mark) dated September 10, 1998 in Singapore; which is where the Respondent is located. ALSTOM is a coined mark which has no meaning in the English language. The Complainant is the owner of the domain name <alstom.com> registered on January 20, 1998, which is where the Complainant hosts and maintains its business website.
The disputed domain name <alstompumps.com> has been registered on October 7, 2020. At the time of filing the Complaint, the webpage hosted on the disputed domain name indicated that the disputed domain name is for sale.
5. Parties’ Contentions
The Complainant having its trading name Alstom, claims to be a leader in the world of power generation, power transmission and rail infrastructure, employing 36,000 professionals in more than 60 countries.
The Complainant claims to be carrying out its business activities even in Singapore for the past 20 years, where the Respondent indicates having its address.
The Complainant has several trade mark registrations for ALSTOM and ALSTOM (figurative mark) in several jurisdictions in the world. The Complainant’s earliest registration for its mark ALSTOM dates back to September 30, 1998. The Complainant is also the registrant of numerous domain names, as set out below, under various generic and country code TLDs, which incorporate its trade mark ALSTOM.
i. <alstomtransport.com> registered since September 26, 2001;
ii. <alstom.com> registered since January 20, 1998;
iii. <alstom.net> registered since April 1, 2000;
iv. <alstom.co.uk> registered since June 15, 1998;
v. <alstom.info> registered since July 31, 2001;
vi. <alstom.cn> registered since July 7, 2004;
vii. <alstom.org> registered since April 1, 2000;
viii. <alstom.fr> registered since May 10, 2010;
ix. <alstom.ca> registered since November 25, 2000;
x. <alstom.kr> registered since February 28, 2007.
These domain names redirect to the Complainant’s group website “www.alstom.com”. Documentary proof of its trade mark registrations and WhoIs extracts of its domain name registrations have been attached to the Complaint as Annex 5 and 6 respectively.
The Complainant has contested that the disputed domain name <alstompumps.com> is confusingly similar to its trademark ALSTOM according to paragraph 4(a)(i) of the Policy. The disputed domain name is a combination of the Complainant’s coined mark ALSTOM and the word “pumps” - which refers to the Complainant’s sector of activity. The Complainant has contested that its trademark ALSTOM is wholly and identically contained within the disputed domain name.
The Complainant has relied on past UDRP panel decisions where its mark ALSTOM was considered as famous and/or well-known. These decisions are ALSTOM v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO), WIPO Case No. D2010-1150 and General Electric Company v. Islam Gamal and Begad Negad, YourServ.CoM, WIPO Case No. D2016-0553.
The Complainant has argued that the Respondent has failed to prove its rights or legitimate interests in respect of the disputed domain name under paragraph 4 (a) (ii). The Respondent has not applied for or obtained any trademark registrations related to ALSTOM.
Arguing that the disputed domain name has been registered in bad faith, the Complainant has stated that its mark ALSTOM is of well-known character and hence it is virtually impossible that the Respondent was not aware of it at the time of registration of the disputed domain name. In many cases that the registration of a well-known trademark of which the Respondent must reasonably be aware of constitutes bad faith. To support this argument the Complainant has relied on a past UDRP panel decision in its own matter, namely Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and Distribution Engineering Co., Ltd, WIPO Case No. DCO2016-0032. This case concerned the Complainant’s trademark ALSTOM and the domain name <gecalsthom.co>, where the Panel observed - “the Panel finds that the Domain Name has been registered and is being used in bad faith. The well-known trademarks of Complainant have been existing for a long time. Respondent knew or should have known that the Domain Name included Complainant’s trademarks”.
Rest of the Complainant’s contentions relating to the Respondent’s bad faith can be summarized as below:
i. The disputed domain name is not used in relation to any genuine activities;
ii. The disputed domain name resolves to a webpage offering it for sale;
iii. The Respondent did not respond to the Complainant’s notice and subsequent reminders to put forward his legitimacy or rights to the disputed domain name; and
iv. The Respondent is the registrant of more than 200 domain names and such domain names reproduce well-known third-party marks/domain names and are clear acts of misspelling and cybersquatting, for example, the domain name <htwajueji.com> instead of <huawei.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 5(e) of the Rules where a respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel may draw such inferences as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements required under by a preponderance of evidence:
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. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the registered proprietor of its trademark ALSTOM. The Complainant has produced extracts from databases of WIPO in support of its registrations for the trade mark ALSTOM. The Complainant’s trade mark registrations for ALSTOM and domain name registrations incorporating ALSTOM, predate the registration date of the disputed domain name by several years. The disputed domain name incorporates the Complainant’s mark ALSTOM in its entirety, together with the word “pumps”. This Panel finds that addition of the word “pumps” to ALSTOM is an insubstantial difference. The Complainant’s mark ALSTOM is clearly recognizable in the disputed domain name, and the addition of “pumps” does not serve to avoid a finding of confusing similarity.
The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded for the purposes of comparison under this element. Section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides that gTLDs (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test. See, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ALSTOM and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to establish on a prima facie basis that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trademark ALSTOM by virtue of a statutory registration. Perusal of the Complainant’s documentary evidence and its website “www.alstom.com”, leads this Panel to observe that the Complainant also enjoys common law rights in its trademark ALSTOM. As the Respondent does not hold any trademark registration(s) for the mark ALSTOM and it does not appear to have any statutory rights over the same.
The view of previous UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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 disputed domain name.”
According to paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the disputed domain name by proving any of the following circumstances:
i. before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has failed to file a response to rebut the Complainant’s prima facie case or to advance any claim as to rights or legitimate interests in the disputed domain name (particularly, in accordance with paragraph 4(c) of the Policy). Accordingly, the Panel finds the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy. According to the Policy, bad faith is understood to occur where a Respondent takes unfair advantage of or otherwise abuses a Complainant’s mark (see, section 3.1 of the WIPO Overview 3.0).
This Panel observes that the Respondent has not used the disputed domain name. At the time of filing the Complaint, the webpage hosted on the disputed domain name only indicated that the disputed domain name was available for sale. This leads the Panel to find that the sole intent of the registration of the disputed domain name was to resell the disputed domain name.
Absent any response from the Respondent, little is known about the Respondent (even from perusal of the webpage that was hosted on the disputed domain name), the Respondent has not availed himself of the opportunity to present any case of good faith that it might have had, and, in view of the circumstances, the Panel cannot conceive of any. The Panel finds that on the balance of probabilities, the Respondent’s conduct in registering and using the disputed domain name constitutes opportunistic bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 <alstompumps.com> be transferred to the Complainant.
Date: July 20, 2021