WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Opurum Emmanuel

Case No. D2021-3186

1. The Parties

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

The Respondent is Opurum Emmanuel, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <alstomprefab.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 1, 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 October 6, 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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 23, 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 SA, is a French multinational company globally active in power generation, power transmission and rail infrastructure. The Complainant has been present in the Respondent’s home country, Nigeria, since 2000 and has undertaken numerous (urban) transport projects there as well as in several neighboring countries.

The Complainant is the owner of multiple trademarks comprising the word “Alstom” across various jurisdictions globally. According to the trademark certificates submitted by the Complainant in Annex 4 to the Complaint, these registrations include:

International Registration No. 706292 for ALSTOM (figurative), registered on August 28, 1998 in International Classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42 and covering the following jurisdictions: Afghanistan, Albania, Algeria, Armenia, Azerbaijan, Bahrain, Belarus, Bhutan, Bosnia and Herzegovina, Botswana, Brunei, Cambodia, China, Colombia, Cuba, Democratic People’s Republic of Korea, Egypt, Gambia, Georgia, Ghana, Iceland, Indonesia, Iran, Japan, Kazakhstan, Kenya, Kyrgyzstan, Laos, Lesotho, Liberia, Liechtenstein, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, North Macedonia, Norway, Oman, Russian Federation, Rwanda, San Marino, Serbia, Sierra Leone, Singapore, Sudan, Switzerland, Syria, Tajikistan, Thailand, Tunisia, Ukraine, United Kingdom, Uzbekistan, and Viet Nam.

International Registration No. 706360 for ALSTOM (figurative), registered on August 28, 1998 in International Classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42 and covering the following jurisdictions: African Intellectual Property Organization, Albania, Algeria, Armenia, Azerbaijan, Belarus, Bhutan, Bosnia and Herzegovina, Cambodia, China, Colombia, Cuba, Democratic People’s Republic of Korea, Egypt, Gambia, Georgia, Ghana, Iceland, Indonesia, Israel, Japan, Kazakhstan, Kenya, Kyrgyzstan, Lesotho, Liberia, Liechtenstein, Madagascar, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, New Zealand, North Macedonia, Norway, Oman, Russian Federation, San Marino, Serbia, Sierra Leone, South Korea, Sudan, Swaziland, Switzerland, Syria, Thailand, Tunisia, Tajikistan, Ukraine, United Kingdom, Uzbekistan, Viet Nam, Zambia, and Zimbabwe,

European Union Trade Mark No. 000948729 for ALSTOM, registered on August 8, 2001 in International Classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42;

European Union Trade Mark No. 000948802 for ALSTOM (figurative), registered on June 6, 2002 in International Classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42;

United States of America Trademark Registration No. 4570546 for ALSTOM, registered on July 22, 2014 in classes 7, 9, 12, 35, 37, 39, 42;

European Union Trademark Registration No. 018020648 for ALSTOM (figurative), registered on August 28, 2019 in International Classes 7, 9, 12, 37, 39, 42;

European Union Trademark Registration No. 018085525 for ALSTOM (figurative), registered on May 22, 2020 in International Classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42;

In addition, the Complainant is the registrant of various domain names containing the trademark ALSTOM. According to the WhoIs extracts submitted as Annex 5 to the Complaint, these include: <alstomgroup.com>, <alstomtransport.com>, <alstom.net>, <alstom.co.uk>, <alstom.info>, <alstom.cn>, <alstom.org>, <alstom.fr>, <alstom.ca>, <alstom.kr>, <alstom.biz>, <alstom.tech>, <alstom.club>, <alstom.pro>, <alstom.careers>, and <alstom.com>.

The disputed domain name was registered on June 8, 2021, well after the Complainant secured rights to the trademarks. The disputed domain name is not currently used. According to the evidence provided by the Complainant, the corresponding webpage “www.alstomprefab.com” leads to a parking page hosted by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy are present. The three elements being: (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.

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the disputed domain name <alstomprefab.com> is confusingly similar to its trademarks comprising the word “Alstom”.

The disputed domain name consists of a combination of the element “alstom” (identical to the Complainant’s trademarks) and of the element “prefab” and of the suffix “.com”. The Complainant claims that the denomination “prefab” will be directly perceived by Internet users as referring to the word “prefabricated” and that the terms “Alstom” and “prefab” clearly stand out from the disputed domain name and the public will naturally read “Alstom-prefab”, even without the actual presence of a hyphen.

Moreover, the Complainant asserts that the risk of confusion is heightened due to the fact that the name “Alstom” is famous and its ALSTOM trademarks are well-known. Accordingly, Internet users would mistakenly believe that the disputed domain name has been registered by the Complainant or a company in the Alstom Group in order to present their activities. In support of this assertion the Complainant referred to ALSTOM v. Daniel Bailey, WIPO Case No. D2010-1150 and General Electric Company v. Islam Gamal and Begad Negad, WIPO Case No. D2016-0553 in particular.

Finally, the Complainant claims that the suffix “.com” only indicates that the domain name is registered in the “.com” generic Top-Level Domain (“gTLD”) and that the addition of the gTLD “.com” is not to be taken into consideration when examining the identity or similarity between the relevant mark(s) and disputed domain name(s). In support of this claim the Complainant referred to Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and Distribution Engineering, WIPO Case No. DCO2016-0032.

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name because it is neither affiliated in any way to Alstom nor has it been authorized, licensed or permitted by the Complainant to register or use a domain name comprising their trademarks. Furthermore, the Complainant contends that the Respondent has not applied for or obtained any trademark registrations relating to the word “Alstom”.

(iii) the disputed domain name has been registered and is being used in bad faith

The Complainant asserts that the disputed domain name has been registered and is being used in bad faith. Referring to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, the Complainant states that the Panel can take all circumstances into account in determining such bad faith.

The Complainant mentions the following circumstances.

First, the disputed domain name imitates the Complainant’s trademarks and was acquired long after the Complainant’s marks became well-known. Referring to Veuve Clicquot Ponsardin v. The Polygenix Group co., WIPO Case No. D2000-0163 and Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and Distribution Engineering, WIPO Case No. DCO2016-0032, the Complainant alleges, that in view of the well-known character of the name “Alstom”, it is virtually impossible that the Respondent was not aware of the Complainant’s activities at the time it registered the contested domain name. The Panel understands that the Complainant argues that this shows the disputed domain name was registered in bad faith. The Complainant invokes WIPO case Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., WIPO Case No. DCO2016-0030, where it was held that “The Panel is unable in the circumstances to conceive of any legitimate use that the Respondent could make of the disputed domain names and infers that the Respondent registered and has maintained the disputed domain names in the knowledge of the Complainant’s trademark and with the intention of impersonating the Complainants or otherwise taking unfair advantage of the Complainants’ goodwill attaching to their trademarks”.

Second, the Complainant alleges that the Respondent has made efforts to conceal their identity by registering the disputed domain name via an “anonymization company”. The Complainant also mentions that the postal contact information provided is not sufficiently precise to allow for the Respondent to be contacted by the Complainant.

Third, the disputed domain name is only used for a parking page indicating that the domain is for sale. Moreover, the Complainant provides a screenshot of a website accessible at “www.prefabstoreng.com” which, according to the Complainant, is equally owned by the Respondent. This screen shot shows what looks like an online store branded with a typographic logo similar to the Complainant’s figurative trademarks reading “alstom prefab Nigeria Limited”. The Complainant claims that this is in fact not an online store but appears to be a front for other activities as it is not possible to actually purchase the goods listed and the website content seems to have been copy-pasted from other websites. Finally, the Complainant mentions Open Invest Co. v. Opurum Emmanuel, WIPO Case No. D2021-1557, in which the UDRP found that the Respondent used another domain name to deceive and defraud consumers.

The Complainant concludes that it results from the above circumstances that the Respondent’s use of the disputed domain name is only intended to impinge upon the Complainant’s legal rights and damage its reputation. The Complainant alleges that the registration and use of the disputed domain name take unfair advantage of the Complainant’s reputation.

Additionally, but without offering evidence, the Complainant claims that the Respondent uses the disputed domain name to send credulous emails pretending to be the Complainant, which amounts to fraud and may constitute identity theft.

Finally, the Complainant claims that the registration and use of the disputed domain name are likely to lead the public to assume that the disputed domain name if associated with the Complainant and will therefore result in confusion as to who owns and operates this domain name.

B. Respondent

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

6. Discussion and Findings

The Panel finds that it has jurisdiction to hear this dispute as the Policy has been incorporated by reference into the registration agreement between the Registrar and the Respondent.

The Panel notes that while the Respondent has been duly notified, he did not reply to the Complainant’s contentions within the time period established by the Rules. Pursuant to paragraph 14 of the Rules the Panel shall nonetheless proceed to a decision on the Complainant’s complaint and it may draw such inferences from the Respondent’s failure to respond as it considers appropriate.

Paragraph 4(a) of the Policy requires that in order for its complaint to succeed, the Complainant must prove that the following three elements are present:

(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.

The above three elements will each be discussed in further detail below.

A. Identical or Confusingly Similar

The Complainant is required to establish: (1) that it owns rights in a trademark or service mark, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

Firstly, the Panel finds that the Complainant has clearly evidenced that it owns registered trademark rights to ALSTOM. The Panel is satisfied with the evidence provided in support of the existence of trademarks comprising the word “Alstom”. Also, while most of the trademarks listed are figurative, the dominant portion of these trademarks is the word “Alstom” and it is standing case law that trademark registrations with design elements prima facie satisfy the requirement that a complainant shows “rights in a mark”. Furthermore, the Complainant has proven that it also owns word marks in the word “Alstom” in the European Union and United States of America. It should finally be noted that paragraph 4(a)(i) of the Policy does not set minimum requirements as to the jurisdiction(s) of the trademarks a complainant relies on, nor as to the number, nature or scope of protection of such trademark(s).

Secondly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks since the disputed domain name contains the trademarked word “Alstom”. The word “Alstom” also has no meaning other than as the name of the company Alstom. The other word “prefab” will indeed likely be perceived as referring to the word “prefabricated” and therefore read separately from the word “Alstom”. In any event, as the trademark ALSTOM is recognizable within the disputed domain name, the addition of “prefab” does not prevent the Panel’s finding of confusing similarity under the first element. As for the applicable Top Level Domain, i.e. the suffix “.com”, the Panel agrees with the Complainant that this can be disregarded under the first element confusing similarity test (CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that shall demonstrate a right or legitimate interest:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”

The Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by a complainant is generally sufficient to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that a respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

The Panel notes that the Respondent has not responded to any of the Complainant’s contentions, let alone submitted evidence to the contrary, and that, pursuant to paragraph 14 of the Rules, the Panel may draw such inferences from the Respondent’s failure to respond as it considers appropriate. In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors.

The Complainant states in its Complaint that the Respondent is not affiliated in any way to Alstom nor has it been authorized, licensed or permitted by the Complainant to register or use a domain name comprising their trademarks. Furthermore, the Complainant contends that the Respondent has not applied for or obtained any trademark registrations relating to the word “Alstom”. The Panel finds that these statements make out a prima facie case that the Respondent indeed lacks rights or legitimate interests, especially also in light of evidence provided elsewhere in the Complaint which may point to an intention on the Respondent’s part to illegitimately use the disputed domain name in the future. The Complainant has shown that the disputed domain name is currently parked, but that the Respondent likely owns another domain name (<prefabstoreng.com>) which is currently used for what looks like an online shop branded with a logo resembling the Complainant’s trademarks containing the words “Alstom Prefab”. In fact, the Complainant shows, supported by evidence, that this “online shop” appears to be a front for other activities as it is not possible to actually purchase the goods listed there and the website content seems to have been copy-pasted from other websites.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy non-exhaustively lists four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

“(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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant has not demonstrated the application of one of the above circumstances. However, the Panel agrees with the Complainant that other circumstances can be taken into account to determine the Respondent’s bad faith registration and use of a domain name. The list of circumstances in paragraph 4(b) of the Policy is not exhaustive and several other UDRP panels have confirmed that other circumstances can be taken into account, including the UDRP panels in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 mentioned by the Complainant.

The Panel finds that the circumstances and evidence presented by the Complainant offer sufficient proof that both the Respondent’s registration and current use of the disputed domain name are in bad faith.

The Panel will first discuss the Respondent’s registration of the disputed domain name. The Complainant argues that the Respondent knew or should have known at the time of registration that the disputed domain name included the Complainant’s trademarks because these are “well-known”. As the Complainant has not presented any evidence other than a reference to decisions of other UDRP panels in support of its statement that its trademarks are “well-known”, the Panel is unable to come to a similar conclusion on the character of the Complainant’s trademarks. However, the Panel does agree with the Complainant that the Respondent should have known about the Complainant’s trademarks at the time of registration of the disputed domain name. The word “Alstom” is a highly distinctive mark as it has no meaning other than as the name of the company Alstom. The Panel also believes that knowledge of the ALSTOM trademarks may be inferred from the fact that these trademarks have been registered in many countries and existed for a long time prior to the Respondent’s registration of the disputed domain name. Other UDRP panels, including in SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 and American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950, have previously held that these are other relevant factors based on which it can be inferred that the Respondent knew or should have known that its registration of the disputed domain name would be identical or confusingly similar to the Complainant’s trademarks.

As for the use of the disputed domain name, it should be noted that, according to evidence provided by the Complainant, the disputed domain name is currently not being used and leads to a parking page hosted by the Registrar. It is however a well-established view of UDRP panels, including the UDRP panels in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 mentioned by the Complainant, that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. The Panel agrees with this view and is of the opinion that the following circumstances provided by the Complainant show that the disputed domain name is being used in bad faith.

The Complainant’s numerous ALSTOM trademarks globally pre-date the registration of the disputed domain name by many years. Therefore, and in the absence of any evidence of current or future good faith use of the disputed domain name by the Respondent, the Panel finds that it can be inferred that the disputed domain name is maintained for future bad faith use. This is further supported by circumstances and evidence submitted by the Complainant. The Complainant has shown that the Respondent likely owns another domain name (<prefabstoreng.com>) which is currently used for what looks like an online shop branded with a logo resembling the Complainant’s trademarks containing the words “Alstom Prefab”, but in fact appears to be a front for other, presumably illegitimate, activities as it is not possible to actually purchase the goods listed there and the website content seems to have been copy-pasted from other websites.

Furthermore, the Complainant has pointed the Panel to another WIPO case, Open Invest Co. v. Opurum Emmanuel, WIPO Case No. D2021-1557, in which the Respondent was found to use the domain name it had registered to deceive and defraud consumers. This shows that the Respondent has in the past engaged in bad faith registration and use of another domain name.

The Panel has not found sufficient evidence on the fact that the Respondent deliberately concealed their identity, nor that the disputed domain name has been used to send credulous emails pretending to be the Complainant.

However, reviewing all the circumstances provided by the Complainant, the Panel finds that sufficient circumstances remain to support the Panel’s conclusion that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 <alstomprefab.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: December 7, 2021