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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ALSTOM v. julian fernando fonseca

Case No. D2021-3611

1. The Parties

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

The Respondent is julian fernando fonseca, Colombia.

2. The Domain Name and Registrar

The disputed domain name <group-alstom-es.com> (the “Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 1, 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 November 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 November 3, 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 November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on December 21, 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

Established in 1928, the Complainant is a French multinational rolling stock manufacturer operating worldwide. The Complainant is a global leader in transportation infrastructure, employing approximately 34,000 professionals in more than 60 countries worldwide, including in Colombia, where the Respondent purportedly resides.

The Complainant owns the following trademark registrations: ALSTOM, International Trademark Reg. No. 706292, 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 and 42 (designating jurisdictions); ALSTOM, European Union Trademark Reg. No. 00948729, registered on August 8, 2001, in international classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42; ALSTOM, Colombian Trademark App. No. 07023482 (class 9) and App. No. 07023487 (class 12); and ALSTOM, United States of America Trademark Reg. No. 423,6513, registered on November 6, 2012, in international class 12 (hereinafter collectively referred to as the “ALSTOM Mark”).

The Complainant is also the registrant of numerous domain names, including <alstom.es>, registered since June 12, 2001; <alstomgroup.com>, registered since November 14, 2000; and <alstom.com>, registered since January 20, 1998, and redirects to the Complainant’s official website at “www.alstom.com”.

The Disputed Domain Name was registered on August 13, 2021 and resolves to an inactive landing page with no substantive content.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM Mark.

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- the Disputed Domain Name was registered and is being used in bad faith.

- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(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 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

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM Mark as set forth below.

It is uncontroverted that the Complainant has established rights in the ALSTOM Mark based on its years of use as well as its registered trademarks for the ALSTOM Mark in the United States of America and other jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the ALSTOM Mark.

The Disputed Domain Name consists of the ALSTOM Mark in its entirety preceded by and connected by a hyphen to the term “group” and followed by and connected by a hyphen to the geographic term “es”, the country code abbreviation for “Spain”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term or terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a term to a trademark – or an abbreviation thereof -- does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ALSTOM Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s ALSTOM Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name or that the Respondent has made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Moreover, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to resolve to an inactive landing page, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Moreover, the composition of the Disputed Domain Name, comprising the entirety of the ALSTOM Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below.

First, the registration of a domain name that is confusingly similar to a widely-known trademark by an entity that has no relationship to that mark can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Based on the circumstances here, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s ALSTOM Mark.

Second, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ALSTOM Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its ALSTOM Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).

Third, the Panel finds that the Respondent had actual knowledge of the Complainant’s ALSTOM Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. Based on the widespread use of the ALSTOM Mark worldwide, it strains credulity to believe that the Respondent had not known of the Complainant or its ALSTOM Mark when registering the Disputed Domain Name. The Respondent’s awareness of the Complainant and its ALSTOM Mark additionally suggests that the Respondent’s decision to register the Disputed Domain Name was intended to cause confusion with the Complainant’s ALSTOM Mark and its <alstomgroup.com> domain name. Such conduct indicates that the Respondent registered and used the Disputed Domain Name in bad faith.

Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Here, the Disputed Domain Name currently resolves to an inactive landing page with no content, thus demonstrating bad faith.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <group-alstom-es.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: January 4, 2022

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