WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd
Case No. DCO2016-0030
1. The Parties
The Complainants are Alstom S.A. of Levallois-Perret, France (“Alstom”) and General Electric Company (“GEC”) of New York, United States of America (the “United States”), represented by Lynde & Associés, France.
The Respondent is Sichuan Shanghai Electric Power T&D Engineering Co., Ltd of Chengdu, China.
2. The Domain Name and Registrar
The disputed domain names, <gec-alstom.co>, <gec-alsthom.co> and <ge-alstom.co>, are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 31, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 5, 2016. 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.
The Respondent sent an email to the Center on October 14, 2016, stating that owing to extended holidays it had failed to read the Center’s communications in time and requesting an extension of time to file a Response. Under paragraph 10 of the Rules, the Panel has the obligation (among others) to ensure that the administrative proceeding takes place with due expedition. Given the length of the Respondent’s delay and lack of any compelling reason for that delay, the Panel does not consider it appropriate to grant the extension requested.
4. Factual Background
Alstom is a company registered in France. It was formed in 1928 and is in the business of transport infrastructure.
GEC is a company registered in the United States which is engaged in technology, energy and industrial services. It or its predecessors in business have traded since 1878.
Alstom is the owner of trademark registrations for the marks ALSTOM and ALSTHOM in various territories. These registrations include, for example:
- International (Madrid) trademark number 706292 for ALSTOM registered on August 28, 1998 in numerous classes and designating a total of 57 countries, including China;
- European Union Trade Mark number 011179471 for ALSTHOM registered on February 11, 2013 in numerous classes.
GEC is the owner of trademark registrations for the mark GE in various territories. These registrations include, for example:
- International (Madrid) trademark number 910465 for the mark GE registered on November 10, 2005 in numerous classes and designating a total of 66 countries, including China.
The Complainants have been engaged in a commercial relationship with one another since 1928 and entered into a joint venture agreement in 1989 in connection with energy and transport services.
The disputed domain names were registered on the following dates: <gec-alstom.co> and <gec-alsthom.co> on May 8, 2015 and <ge-alstom.co> on October 16, 2015.
There is no evidence before the Panel that any of the disputed domain names has ever resolved to any active website.
5. Consolidation of Proceedings
The Complainants seek the consolidation of their respective Complaints against the Respondent on the grounds (i) that they have a specific common grievance against the Respondent and (ii) that it would be procedurally fair and equitable for the proceedings to be consolidated (paragraph 4(c) of the Policy and paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). The Panel finds that the disputed domain names implicate each of the Complainants’ trademarks referred to above and that the Complainants therefore have a specific common grievance against the Respondent. The Panel also considers that it would be procedurally fair and equitable for the proceedings to be consolidated and directs that the Complaints be consolidated accordingly.
6. Parties’ Contentions
The Complainants say that that Alstom employs more than 32,000 professionals in over 60 countries and that its orders totalled EUR 6.3 billion in the first nine months of its 2015/16 financial year. They say that China is a key market for the Alstom group, which has operated there for over 30 years. They state that Alstom originally traded as “Alsthom” and for that reason has used both the ALSTOM and ALSTHOM marks in commerce. They state that Alstom owns numerous domain names including <alstom.com> and <alsthom.com>, all of which redirect to its principal website at “www.alstom.com”.
The Complainants state that GEC has used the marks GE and GEC in commerce since 1899, that it operates in over 100 countries and that its revenues in 2015 were approximately USD 117.4 billion. They say that it has sold billions of dollars of products and services under the GE mark and has also spent billions of dollars on adverting and promoting that sign. They also submit that the abbreviation GEC is well known in commerce to refer to that Complainant.
As to their joint activities, the Complainants refer to their website at “www.ge-alstom.com” and also provide evidence of their ownership of other domain names including <gecalsthom.com> and <gec-alsthom.com>, (which redirect to Alstom’s website). The domain name <ge-alstom.com> was registered in April 2014 and the other joint domain names were also registered prior to the registration of the disputed domain names.
The Complainants state that their lawyers attempted to communicate with the Respondent both by email and by post, but their email was rejected and no reply was received to their letter. They submit in the circumstances that the Respondent has provided a false email address. They say that when their lawyers sent a further letter to the Respondent concerning different but similar domain names, they received an ambiguous response from email address [ ]@qq.com but they have not been able to determine whether that correspondent also claims ownership of the disputed domain names.
The Complainants contend that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights. They submit in particular that their marks GE or GEC and ALSTOM or ALSTHOM are recognizable in each of the disputed domain names, and that each of the disputed domain names is also similar to their joint domain names including <ge-alstom.com>.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain names. They state that they have not licensed or permitted the Respondent to use their trademarks, that the Respondent is not commonly known by the disputed domain names and that the Respondent is not making use of the disputed domain names in connection with any bona fide offering of goods or services.
The Complainants contend that the disputed domain names have been registered and are being used in bad faith. They argue that each of the disputed domain names incorporates both of their trademarks and were registered long after those trademarks had become well known in commerce. They say that the disputed domain names can only have been registered in order to block the Complainants from registering those names and that the passive holding of the disputed domain names by the Respondent does not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complainants also submit that the Respondent having provided a false email address is a further indication of bad faith.
The Complainants request the transfer of the disputed domain names to Alstom.
The Respondent did not reply to the Complainants’ contentions.
7. Discussion and Findings
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Even in a case where the Respondent has not contested the Complaint, it is still necessary for the Complainants to establish that all of the three above elements are present.
A. Identical or Confusingly Similar
The Complainants have established to the satisfaction of the Panel that they have trademark rights in the names ALSTOM, ALSTHOM and GE and that those names and marks are widely known in commerce throughout the world to refer to the respective Complainants. While the Complainants have not provided specific evidence in respect of the abbreviation GEC, the Respondent has not disputed the Complainants’ submissions in this administrative proceeding and the Panel accepts the Complainants’ submission that this mark, too, is widely recognized as referring to that Complainant. The Panel also finds that the Complainants have used their trademarks together in business since at least April 2014, for example in connection with the website at “www.ge-alstom.com”.
Each of the disputed domain names consists solely of the mark GEC or GE, a hyphen and the mark ALSTOM or ALSTHOM (together with the country code Top-Level Domain (“ccTLD”) “.co”). The fact that both Complainants’ trademarks are used does not in the view of the Panel operate to distinguish the disputed domain names from the Complainants’ trademarks, particularly in circumstances where the Complainants themselves use the trademarks together in commerce. Accordingly, the Panel finds that the disputed domain names are confusingly similar to trademarks or service marks in which the Complainants have rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainants’ submissions referred to above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for its registration or its use of the disputed domain names, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. The Panel having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel has found that the Complainants’ trademarks referred to above are widely known worldwide as referring to the Complainants and their services. Each of the disputed domain names consists of one of each Complainant’s trademarks, hyphenated, together with the ccTLD. The Panel has no evidence that the disputed domain names have any meaning in commerce other than to refer to the Complainants’ trademarks and the Respondent has failed to participate in this proceeding or to offer any explanation for its choice of the disputed domain names. 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. The Panel accepts the Complainant’s contention that the Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith in these circumstances. Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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, <gec-alstom.co>, <gec-alsthom.co> and <ge-alstom.co>, be transferred to the Complainant Alstom.
Steven A. Maier
Date: October 17, 2016