WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ALSTOM v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Danica Kobpoew, ruletwoww
Case No. D2021-1465
1. The Parties
The Complainant is ALSTOM, France, represented by Lynde & Associes, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Danica Kobpoew, ruletwoww, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alstrngroup.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On May 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 17, 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 May 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 May 18, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021.
The Center appointed Nick J. Gardner 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.
On July 8, 2021, the Panel issued the following Procedural Order:
“The Center formally notified the Parties by email of the Complaint under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) on May 25, 2021. After reviewing the Complaint and the Parties’ submissions, the Panel notes that the Notification of Complaint may not have reached the Respondent by email due to an apparent file size issue.
Accordingly, out of an abundance of caution, the Panel hereby grants the Respondent a five-day period (through July 13, 2021) in which to indicate whether it wishes to participate to this proceeding. The Center shall forward the relevant Complaint, annexes to the Complaint, and the Notification of Complaint and Commencement of Administrative Proceeding separately.
If the Panel does not hear anything from the Respondent within this period, the proceedings will be resumed and a Decision will be issued.
The Decision due date is extended until July 25, 2021”.
Nothing further was heard from the Respondent.
4. Factual Background
The Complainant is a French company created in 1928. It is a major international company in the fields of power generation, power transmission and rail infrastructure, employing 36,000 professionals in more than 60 countries. It develops and markets a range of systems, equipment, and services in the railway industry, and has activities around the world.
The Complainant owns various trademark registrations for the word ALSTOM in numerous jurisdictions around the world, including for example French trademark No. 98727762 dated April 10, 1998. These trademarks are referred to as the ALSTOM trademark in this decision. It is also the registrant of numerous domain names under various generic and country code Top-Level Domains (“TLDs”) that reflect the ALSTOM trademark including <alstom.com> registered on January 20, 1998.
The Disputed Domain Name was registered on May 6, 2021. The filed evidence shows it has been linked to a page containing pay-per-click links which appears likely to have been automatically generated. The Disputed Domain Name has also been used in email correspondence which purports to be from specific employees of the Complainant and which attempts to fraudulently obtain payment for specified amounts to a bank account which does not belong to the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM trademark.
The Respondent has no rights or legitimate interests in the term “Alstom” or “alstrn”.
The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the use of the Disputed Domain Name in connection with manifestly fraudulent emails is clear evidence of bad faith. It says the Respondent’s motive was dishonest financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Danica Kobpoew, ruletwoww and references to the Respondent are to that person and/or entity.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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
The Panel finds the Disputed Domain Name is confusingly similar to the ALSTOM trademark. It is clear that visually it is easy to mistake the letters “rn” in the Disputed Domain Name as the letter “m” and consequently misread the word “alstrn” as “alstrom”, the further omission of the letter “o” being easy to miss. The creation of a confusingly similar domain name was manifestly the Respondent’s intention as evidenced by the fraudulent emails in evidence. The Panel concludes that is what the Respondent achieved.
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. […] Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”
It is well established that the TLD, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ALSTOM trademark. The Complainant has prior rights in the ALSTOM trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the fact that the Disputed Domain Name was used in emails which in substance impersonated the Complainant and were fraudulent in nature lead the Panel to conclude the registration and use were in bad faith.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 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 your website or location or of a product or service on your website or location.
In the present circumstances, the Panel agrees with the Complainant that factor (iv) applies, as the Respondent is clearly engaged in email fraud which relies on a likelihood of confusion and which is clearly with a view to dishonest financial gain. This is manifestly indicative of bad faith as has been held in many previous decisions under the Policy – see for example Nordic Waterproofing AB v. Contact Privacy Inc. Customer 1245905149 / Name Redacted, WIPO Case No. D2020-0217. The Panel also notes that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled
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 <alstrngroup.com> be transferred to the Complainant.
Nick J. Gardner
Date: July 25, 2021