WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ALSTOM Transport Technologies v. Jai Shan

Case No. D2021-1961

1. The Parties

Complainant is ALSTOM Transport Technologies, France, represented by Lynde & Associes, France.

Respondent is Jai Shan, China.

2. The Domain Name and Registrar

The disputed domain name <coradiastream.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for response was July 19, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on July 20, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on July 27, 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 a French company, founded in 1928, operating in the transportation infrastructure industry. It has operations around the world, including in Hong Kong, China, where Respondent is based. Complainant operates a train business under the CORADIA mark, and markets regional trains under the CORADIA STREAM mark. Complainant is the proprietor of numerous trademark registrations, including the following:

- International Registration No. 722311 for CORADIA (word mark) registered on September 21, 1999, for goods in class 12;

- French Trademark No. 4388587 for CORADIA STREAM (word mark) registered on September 14, 2017 for goods and services in classes 12, 37 and 39;

- International Registration No. 1405606 for CORADIA STREAM (word mark) registered on February 20, 2018 for goods and services in classes 12, 37 and 39.

Complainant has registered several domain names comprising the CORADIA and CORADIA STREAM marks, including <coradia.net>, <coradia.fr>, <coradiastream.net> and <coradiastream.fr>.

The disputed domain name was registered on March 15, 2018. It does not resolve to an active website. The record contains copies of Complainant’s cease and desist letters to Respondent dated December 1, 2020 and February 17, 2021. The record also contains copies of correspondence between the Parties concerning sale of the disputed domain name by Respondent. As the Parties were unable to reach agreement, Complainant filed this Complaint.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it is a global leader in the transportation infrastructure business, with operations in 60 countries, 34,000 employees, and annual turnover of EUR 5.6 billion. Complainant has offered trains under the CORADIA brand since 1999, and established the CORADIA STREAM brand for regional electric trains in 2017. The disputed domain name is identical to its CORADIA STREAM mark. A previous WIPO UDRP panel has acknowledged that the CORADIA mark is unique and has no meaning of its own.

Under the second element, Complainant states that Respondent is not affiliated with Complainant and does not have Complainant’s permission to use its mark. Respondent does not have any trademark registrations for CORADIA or CORADIA STREAM, nor is it conducting any business under this mark. When contacted by Complainant requesting transfer of the disputed domain name, Respondent demanded payment, demonstrating a lack of rights or legitimate interests.

Under the third element, Complainant states that the disputed domain name is identical to its registered CORADIA STREAM mark. Complainant’s CORADIA mark has been in use since 1999 and has acquired a reputation among consumers. The CORADIA mark is totally arbitrary and it is virtually impossible that Respondent was unaware of Complainant’s mark. The disputed domain name was registered for the purpose of selling it to Complainant. The registration of the disputed domain name prevents Complainant from registering its prior trademark CORADIA STREAM with the generic Top-Level Domain (“gTLD”) “.com”, thus disrupting Complainant’s business activities. Complainant has identified three previous UDRP decisions against Respondent, including one targeting another mark of Complainant itself.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the 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) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the CORADIA STREAM mark through registrations in France and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s CORADIA STREAM mark with the disputed domain name, the Panel finds that the disputed domain name is identical to Complainant’s mark, as it comprises Complainant’s CORADIA STREAM mark in its entirety and without any alteration.

It is the well-established view of UDRP panels that the gTLD “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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 circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and is not commonly known by the disputed domain name. Furthermore, the disputed domain name is identical to Complainant’s mark, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent has not proved rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. Rather, the disputed domain name is inactive, and Respondent has attempted to sell it to Complainant for a sum exceeding the costs of registering the domain name. Such use cannot establish rights or legitimate interests. See WIPO Overview 3.0, section 2.5.2, and cases cited thereunder.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant provides uncontroverted evidence that the CORADIA mark has been in use since 1999, and CORADIA STREAM since around 2017. Complainant also states, and Respondent does not challenge, that CORADIA has no meaning in ordinary language and has gained a reputation. These rights predate the registration of the disputed domain name, which is containing Complainant’s CORADIA mark and is identical to Complainant’s CORADIA STREAM mark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4. Respondent has not provided any information that would rebut this presumption.

The Panel finds that Respondent has demonstrated bad faith by passive holding of the disputed domain name and by attempting to sell it to Complainant. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. Further, the Panel finds that Respondent acquired the disputed domain name primarily for the purpose of selling it to Complainant for a sum in excess of the costs related to the registration. Complainant has provided sufficient evidence that its CORADIA mark is widely known, and Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name. Respondent has not presented any rational basis for registering the disputed domain name and, in response to Complainant’s cease-and-desist letter, demanded payment for the disputed domain name. Finally, Respondent has engaged in a pattern of registering domain names containing marks of third parties, including Complainant. Such circumstances clearly indicate bad faith in registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.1.1 and cases cited thereunder.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <coradiastream.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: August 10, 2021