The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Charles Alstom, Canada.
The disputed domain name <alstomgridllc.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2020. On January 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2020, 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 February 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on March 23, 2020. 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 Complainant, a French company initially formed in 1928, is a global leader in the field of energy and transport infrastructures, including the manufacture and overhaul of rolling stock. The Complainant employs roughly 34,000 employees in more than 60 countries around the world, including Canada, where the Complainant has been present some 80 years. The Complainant operates sites in Montreal, Sorel-Tracy, Ottawa and Toronto, where it develops and market solutions for the railway sector, including systems and equipment.
The Complainant is the owner of a number of trademark registrations for its ALSTOM mark, including the following:
- International Registration No. 706292, registered August 28, 1998, designating numerous countries;
- European Union Trade Mark (“EUTM”) Registration No. 948729, filed September 30, 1998, and registered August 8, 2001;
- Canadian Trademark Registration Nos. TMA585660 and TMA562412, filed September 30, 1998, and registered July 21, 2003, and May 23, 2002, respectively.
The Complainant also has registered a number of domain names reflecting its ALSTOM mark, including <alstomgrid.com> and <alstom.com>, the latter of which has been registered since January 20, 1998, and is used in connection with the Complainant’s website at “www.alstom.com”.
The Respondent registered the disputed domain name <alstomgridllc.com> on May 6, 2019, according to the Registrar’s WhoIs records. The Complainant represents that the disputed domain name refers to Alstom Grid LLC – a subsidiary formed by the Complainant and subsequently acquired by General Electric Company (“GE”) in 2015. The disputed domain name at present does not resolve to an active website. However, the disputed domain name previously resolved to a parking page featuring pay-per-click advertising links related to power and electricity services and companies, and advertising the disputed domain name is for sale.
Upon becoming aware of the Respondent’s registration and use of the disputed domain name, the Complainant on August 23, 2019, dispatched a cease and desist letter to the Respondent at the street address listed in the Registrar’s WhoIs records. The cease and desist letter was returned to the Complainant with the notation “no postal code.”
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s ALSTOM mark. The Complainant observes that the disputed domain name incorporates the entirety of the ALSTOM mark and as such is recognizable in the domain name. The Complainant asserts that the presence of the descriptive terms “grid” and “llc” in the disputed domain name does not preclude a finding of confusing similarity with the Complainant’s ALSTOM mark. The Complainant further notes that the addition of the generic Top-Level Domain (“gTLD”) “.com” generally is not considered when assessing the confusing similarity of the disputed domain name to the complainant’s mark. The Complainant remarks that several UDRP panel decisions have held that ALSTOM is a famous and well-known mark, citing Alstom v. Daniel Bailey (Registrant I D: tuuROSvPJbZdd2XO), WIPO Case No. D2010-1150, and Alstom S.A. and General Electric Company v. Sichuan Shanghai Electric Power T&D Engineering Co., Ltd, WIPO Case No. DCO2016-0030.
The Complainant asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, has no affiliation with the Complainant, and has not been authorized, licensed or permitted to register or use the Complainant’s ALSTOM mark. The Complainant submits that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor otherwise made a legitimate noncommercial or other fair use of the disputed domain name. Rather, the Complainant contends that the Respondent has offered the disputed domain name for sale.
The Complainant submits that the Respondent registered and has used the disputed domain name in bad faith. The Complainant asserts that the Respondent could not have been unaware of the Complainant or the Complainant’s distinctive and well-known ALSTOM mark when registering the disputed domain name. The Complainant maintains the Respondent sought to conceal his identity and evade detection by providing false or fictitious contact information when registering the disputed domain name. The Complainant concludes the Respondent registered the disputed domain name intending to sell, rent, or otherwise transfer the disputed domain name to the Complainant or to a competitor of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <alstomgridllc.com> is confusingly similar to the Complainant’s ALSTOM mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s ALSTOM mark is clearly recognizable in the disputed domain name.2 The inclusion of the descriptive terms “grid” and “llc” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 gTLDs generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ALSTOM mark. Nonetheless, the Respondent registered the disputed domain name, which appropriates the Complainant’s ALSTOM mark in its entirety, and has used the disputed domain name with a parked page generating pay-per-click links related to power and electricity companies. The disputed domain name also appears to be offered for sale.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and the Complainant’s ALSTOM mark when registering the disputed domain name, which also reflects the entity Alstom Grid LLC, a subsidiary of the Complainant subsequently acquired by GE. The record is convincing that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, whether by generating revenue from pay-per-click advertising or offering the disputed domain name for sale.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s ALSTOM mark in mind when registering the disputed domain name. The Respondent’s registration of the disputed domain name in the attendant circumstances smacks of opportunistic bad faith. It is clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <alstomgridllc.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 30, 2020
1 See WIPO Overview 3.0, section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 Id.
4 See WIPO Overview 3.0, section 1.11. The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein. See also WIPO Overview 3.0, section 1.8.