WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Registration Private, Domains By Proxy, LLC / WEIZHONG XU

Case No. D2021-3417

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / WEIZHONG XU, China.

2. The Domain Name and Registrar

The disputed domain name <alstom-sizhou.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2021. On October 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 20, 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 22, 2021.

On November 2, 2021, the Respondent transmitted two emails to the Center giving information about the disputed domain name including the purchase history and the non-use of the disputed domain name.

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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties that it would proceed to the panel appointment process on December 14, 2021.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 7, 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 French company operating in the industries of power generation, power transmission, transportation, and rail infrastructure, employing over 36,000 professionals in more than 60 countries.

In 2007, the Complainant purchased the Chinese company Sizhou, which was founded in 1987 and has a widespread reputation in the heavy industry equipment sector.

The Complainant owns, among others, the following trademark registrations:

The Complainant is the owner of several domain names like <alstom.com>, <alstom.net>, <alstom.co.uk>, <alstom.cn>, <alstom.fr>, and <alstom.ca> among others.

The disputed domain name was registered on April 25, 2021. It is currently inactive.

5. Parties’ Contentions

A. Complainant

I. Identical or Confusingly Similar

That the disputed domain name is confusingly similar to the Complainant’s well-known trademark ALSTOM, since it is fully integrated therein, plus the term “Sizhou” which is the name of a company acquired by the Complainant in 2007, which has widespread recognition and reputation in the heavy industry equipment sector.

That the ALSTOM trademark has been deemed to be well-known by several prior decisions rendered under the Policy.

That, when searching for “Sizhou” in the Google search engine, all the results shown therein refer to the acquisition made by the Complainant of the company Sizhou.

That several decisions issued under the Policy have considered that, when a disputed domain name incorporates a well-known trademark in its entirety, it can be deemed to be confusingly similar to the mark, even when accompanied by other terms.

That the incorporation of the generic Top-Level Domain (“gTLD) “.com”, does not have to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.

That Internet users will directly recognize the Complainant’s trademark in the disputed domain name and will believe that the disputed domain name was registered by the Complainant.

II. Rights or Legitimate Interests

That the Respondent has failed to prove its rights to or legitimate interests in the disputed domain name under the Policy.

That the Respondent is not affiliated in any way to the Complainant, who in any case has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name.

That the Respondent has not applied for or obtained any trademark registrations related to ALSTOM.

That the Complainant considers that the Respondent has no rights to or legitimate interests in the disputed domain name.

III. Registered and Used in Bad Faith

That the disputed domain name incontestably imitates the Complainant’s trademark ALSTOM.

That, due to the well-known character of the ALSTOM trademark, it is virtually impossible that the Respondent was not aware of the Complainant and its activities at the time when the disputed domain name was registered.

That it is more likely the case that the Respondent associated the disputed domain name to the company Sizhou that the Complainant acquired in the past.

That several panels appointed under the Policy have found that the registration of a well-known trademark of which the Respondent must reasonably be aware, constitutes bad faith.

That the disputed domain name resolves to a website that resells domains, and is not used for genuine activities.

That the Complainant sent several claims to the Respondent, who remained silent and did not reply.

That the Respondent tried to conceal his identity by registering the disputed domain name via an anonymization company.

That the Respondent did not register his full address. That, however, he is apparently based in Jiangsu, China where the Complainant conducts business.

That the Respondent is associated with multiple other domain names.

That the disputed domain name was registered in bad faith in order to damage the Complainant’s reputation.

That the disputed domain name was registered and is being used in bad faith to take unfair advantage of the reputation of the ALSTOM trademark.

That the disputed domain name was intentionally registered to attempt to attract Internet users, by creating a likelihood of confusion with the Complainant’s trademark.

That the registration of the disputed domain name is detrimental to the Complainant because users will easily be misled into thinking that it is related to the said Complainant.

B. Respondent

The Respondent sent two email communications to the Center on November 2, 2021. In his first email, the Respondent confirmed that the disputed domain name is not in use, and more specifically that it is not being used for any business purpose. He also suggested that the Complainant contact the Registrar in order to cancel the disputed domain name, since it is locked.

Later, in his second email communication, the Respondent mentioned the following:

“Today I’ve read all the history email and find the point for problem.
Regarding to the issue this time,
1. I purchased the domain “alstom-sizhou.com” around April 2021.
2. After I purchased the domain “alstom-sizhou.com”, till now, I haven’t used nor connected to any website.
3. I purchased this domain from the platform “US DOMAIN CENTER”.
The related weblink is “https://www.usdomaincenter.com/”
4. I’ve tested that for domains purchased from the platform but not used yet, the link will revert to the home page of the platform automatically, which is “https://www.usdomaincenter.com/”.
For example, my another domain “davidtradeshow.com”, I haven’t used this domain, but only purchased.
When type “davidtradeshow.com” at Internet Explorer, it will revert to the home page of the platform automatically, which is “https://www.usdomaincenter.com/”.

[…]

First of all, the domain “alstom-sizhou.com” is not used for any business purpose.
Secondly, the domain “alstom-sizou.com” is not used yet.
Thirdly, I’ve no idea that this domain cannot be registered.
In order to avoid more misunderstanding, please help check with domain administrator (US DOMAIN CENTER) to cancel or transfer the domain “alstom-sizhou.com”.
Since now the domain “alstom-sizhou.com” in system has been in dispute and locked, I believe the domain administrator could help you figure out the issue.
I hope you could find the info above useful.”

The Respondent did not otherwise submit a Response that satisfies the formal requirements of the Policy and the Rules.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(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 with respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

Given the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate under paragraph 14(b) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292 and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant has filed evidence showing that it owns registrations for the trademark ALSTOM in different jurisdictions, including the European Union, the United States, and International Trademark Registrations which grant protection in China, where the Respondent has declared to have his domicile.

The disputed domain name is confusingly similar to the Complainant’s trademark ALSTOM, as it incorporates said trademark entirely, with the addition of the term “Sizhou”. However, the inclusion of this term does not prevent a finding of confusing similarity under the first element (see section 1.7, and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The addition of the gTLD “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO WIPO Case No. D2020-0268; International Business Machines Corporation v. chenaibin WIPO Case No. D2021-0339, and Société Air France v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues WIPO Case No. D2019-0578).

Therefore, the first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did not acquire trademark or service mark rights; or

(iii) the respondent is 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.

This Panel considers that the Complainant has submitted enough evidence to prove that the ALSTOM trademark is well-known. Also, the Panel agrees with the determinations reached in Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Flor Walden Case No. D2020-0127, and Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd WIPO Case No. DCO2016-0030, in that the ALSTOM trademark is well-known.

The Complainant has asserted that it is not affiliated in any way to the Respondent, and that it has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent did not contest these allegations.

The case file contains no evidence that demonstrates that the Respondent has used or has made 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. In fact, the Respondent confirmed this situation in the email communications sent to the Center on November 2, 2021 (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; and Associated Newspapers Limited v. Manjeet Singh WIPO Case No. D2019-2914).

The Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).

Therefore, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

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

Considering the intensive use that the Complainant has made of its ALSTOM trademark and the reputation that it enjoys internationally, it is safe to infer that ALSTOM is a well-known trademark.

The fact that the Respondent included in the disputed domain name the well-known trademark ALSTOM, plus the name of the Complainant’s affiliated company Sizhou shows that the Respondent knew the Complainant and its business when registering the disputed domain name, and that he targeted the Complainant for financial gain. This conduct constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,
WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980 and Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773).

The addition of the term “Sizhou”, moreover affirms the confusing similarity and indeed likelihood of confusing, since said term corresponds to the name of a Chinese company acquired by the Complainant. Therefore, Internet users might be confused by thinking that the disputed domain name is related to the Complainant (and this seems to be the intent behind the registration).

Previous panels appointed under the Policy have found that – depending on the case circumstances – the mere registration by an unauthorized party of a domain name that includes a well-known trademark, can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0; see also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882). This is so in the present case.

As to the use of the disputed domain name, notwithstanding its inactivity, the consensus view amongst panels appointed under the Policy is that the fact that a domain name is not active does not prevent a finding of bad faith (see section 3.3 of the WIPO Overview 3.0, “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246).

In the present case, the following facts have been found:

- That the Complainant’s trademark ALSTOM is well known.
- That said trademark refers directly and specifically to the Complainant’s ALSTOM company name, which employs more than 36,000 professionals and is a leader in the power generation, power transmission, transportation, and rail infrastructure industries, with operations in more than 60 countries, including China, where the Respondent has declared to reside.
- That the disputed domain name incorporates the ALSTOM trademark and company name in their entirety.
- That the disputed domain name incorporates the term “Sizhou”, which is the name of a Chinese company acquired by the Complainant.
- That the Respondent has not explained why he registered the disputed domain name, which clearly targets the Complainant.

In light of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate under the Policy (see Telstra, supra; CBS Broadcasting Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400).

Taking these facts into consideration, the third element of the Policy has been met.

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 <alstom-sizhou.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: January 21, 2022