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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Whois Privacy Service / Marcy Blake

Case No. D2021-4327

1. The Parties

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

The Respondent is Whois Privacy Service, United States of America (“USA” or “United States”) / Marcy Blake, United States.

2. The Domain Name and Registrar

The disputed domain name <alstomgorup.com>, <alstomgorurp.com>, and <alstomgourp.com> are registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2022, 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 January 6, 2022, 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 January 7, 2022.

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 January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2022.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on February 14, 2022. 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 a global leader in the world of power generation, power transmission, and rail infrastructure, employing 36,000 professionals in more than 60 countries, established since 1928. The Complainant has activities around the world, and namely in the USA where the Respondent indicates having their address.

As shown in Annex 4, the Complainant owns several registrations for the mark ALSTOM throughout the world, with attention to the registrations granted in the United States, where the Respondent is located, including the United States registration number 75565686, registered on October 9, 1998.

The Complainant has registered a comprehensive number of domain names incorporating the mark ALSTOM. Among these, it is important to mention the domain name <alstom.com>, registered since 1998. Evidence of these registrations appear as Annex 5.

The Complainant also mentions to own a great number of companies and trade name rights on the denomination “Alstom”, such as: ALSTOM Transport Technologies, ALSTOM Transport, ALSTOM Holdings, ALSTOM Management, among others, all together forming the ALSTOM Group.

The disputed domain names were registered on November 18, 2021 (<alstomgorup.com>); November 22, 2021 (<alstomgorurp.com>), and November 24, 2021 (<alstomgourp.com>). While the first one reverts to a webpage qualified as “dangerous”, the two other ones resolve to an error page, as indicate Annex 6.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s marks registered and used worldwide. In fact, the only distinctive term included in the disputed domain name is “alstom”, which is identical to the Complainant’s registered mark, followed by intentional mistyping of the word “group”.

The Respondent chose to compose the disputed domain names in a way that the renowned mark owned by the Complainants is clearly identified, as the mistyping is on the word “group”, the mark ALSTOM remaining complete and identical.

The Complainant owns several registrations worldwide for the trademark ALSTOM, as well as several domain names bearing this mark, as evidenced by annexes 4 and 5 to the Complaint.

The disputed domain names adopted by the Respondent evidence intention of misleading the Internet users to error.

The disputed domain names do not resolve to an active website, as seen in Annex 6. Nevertheless, the Complainant alleges that the Respondent has been contacting people, sending out email communications from email address associated with the disputed domain names, purporting to originate from a senior employee of the Complainant’s business, to request the redirection of invoices to be paid to an unauthorized bank account. Proof of this attempt was presented as Annex 7.

In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users by leading them to phishing scams, that it is clear that the Respondent has no rights in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a Complainant to obtain relief. These elements are:

(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 to 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 disputed domain name is, indeed, confusingly similar to the trademark ALSTOM, as the latter is entirely incorporated in the disputed domain name, with the addition of mistyping the word “group”.

The Complainant has presented consistent evidence of ownership of the trademark ALSTOM in jurisdictions throughout the world, by presenting registrations for it, as well as comprehensive evidence of the use of the trademark.

The use of the trademark with the addition of the word “group”, mistyped as if it was a typographical error, in the disputed domain names does not prevent confusing similarity.

Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

Given the clear evidence that the trademark ALSTOM is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. In the absence of a Response, the Respondent has not rebutted such prima facie case.

It has also been shown that the Respondent is not making any direct use of the disputed domain names besides having registered them to create a likelihood of confusion with the Complainant’s mark. Further, the Complainant provides evidence that the Respondent has been establishing false email addresses associated with the disputed domain names and used in relation to phishing activity. The use of a domain name for illegal activity (e.g., fraud, impersonation) can never confer rights or legitimate interests upon a respondent.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the Respondent’s bad faith in the registration and use of the disputed domain names.

The disputed domain names were registered to clearly mislead consumers – hence the incorporation of the ALSTOM mark in its entirety and the intentional typos in the word “group”. The Complainant has submitted evidence of a fraudulent email scheme executed by the Respondent, using email accounts relating to the disputed domain names and emulating the name of a senior employee.

Accordingly, the Panel accepts that the disputed domain name is being used for unlawful purposes. Under the circumstances, the fact that the disputed domain names do not currently resolve to active websites does not prevent a finding of bad faith.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain names in bad faith.

The Panel finds that the Complainant has also proved the third element 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 names, <alstomgorup.com>, <alstomgorurp.com> and <alstomgourp.com>, be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: February 28, 2022

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