WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. WhoIs Guard Inc, Inc., WhoIsGuard Protected / Name Redacted¹

Case No. D2019-2998

1. The Parties

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

The Respondent is WhoIsGuard Protected, Panama / Name Redacted, France.

2. The Domain Name and Registrar

The disputed domain name <alstomholdings.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2019, 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 December 10, 2019, 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 amendment to the Complaint on December 13, 2019.

The Center verified that the Complaint together with the amendment to 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 December 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2020.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on January 22, 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.

4. Factual Background

The Complainant is Alstom S.A, a major French industrial group with nearly a century of existence. The Complainant is particularly active in the fields of power generation, power transmission and rail infrastructure. It employs 36,000 professionals in over 60 countries.

For the purpose of the Complaint, the Complainant relies in particular on the following trade mark registrations:

- United States of America trade mark ALSTOM (word) No. 4570546 of July 22, 2014 in classes 1, 6, 7, 8, 9, 11, 12, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42, 43, 45;

- International trade mark ALSTOM (word) No. 706.292 of August 28, 1998, with effect in many territories, in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42;

- European Union trade mark ALSTOM (word) No. 948,729 of August 8, 2001 in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, 42.

The Complainant also owns numerous “alstom” formative domain names, including <alstom.com>, <alstom-power.com>, <alstom.net>, <alstom.info>, <alstom.org>, <alstom.fr>, etc.

The Complainant also operates a number of subsidiaries which contain the element “Alstom” in their company names, including Alstom Holdings.

The disputed domain name <alstomholdings.com> was registered on November 20, 2019, through a privacy shield service. The disputed domain name is used since its registration to host a parking page, with automatically generated content.

After the Complaint was filed, the Registrar notified to the Center that the disputed domain name was actually held by [Name Redacted], with an address in France.

On November 27, 2019, the Complainant contacted the Respondent, through the privacy shield service, in order to request the cancellation or voluntary transfer of the disputed domain name. The Respondent failed to react.

At this point, it is necessary to describe here facts which correspond to the use of another domain name, <alstom-holdings.com> (with a hyphen between “alstom” and “holdings”), which was registered a few months earlier.

On October 9, 2019, a supplier of the Complainant received an email sent from […]@alstom-holdings.com, which identified as the sender as “Alstoms Holdings SA”, and which title was “Request for a business partnership” (in French and in English). The content of this bilingual email was the following:

“Dear Madam/Sir,

Established in 1988, ALSTOM HOLDINGS operates in the marketing of rail transport and electric turbines.
We select our partners and suppliers on performance criteria in accordance with our commercial policy.

We are now looking for new suppliers for different types of products including your product portfolio.

We are planning to add your company to our regular supplier list ad would like to know your requirements

based on an annual turnover of 500.000 EUR.

We would be grateful if you could specify the terms of payment and the pricing policy you offer to your

customers.

We remain at your disposal to provide any useful clarification.

We are looking forward to hearing from you and hoping to work with you as one of our future partners”.

This email was signed by an individual acting allegedly in his capacity as “Purchase Manager Europe” of “Alstom Holdings SA”, with the contact details of the Complainant.

On October 16, 2019, the Complainant launched a complaint to request the transfer of the domain name <alstom-holdings.com> (Alstom S.A. v. Name Redacted, WIPO Case No. D2019-2544).

On November 22, another email was sent to another potential supplied of the Complainant, with an email address corresponding to the disputed domain name <alstomholdings.com>, namely […]@alstomholdings.com. The sender was also identified as “Alstom Holdings SA”, and the email title was “address change” (again in French and English). Its content was the following:

“Dear Sir,

We inform you that following the hacking of our computer servers and email addresses, our old address:

[...]@alstom-holdings.com has not been functional for some time. And we inform you that since

November 1st we have not received any conversation from you, so please consider this new address:

[...]@alstomholdings.com for all our conversations and delete the old one.”

This new email was signed under the name of the same individual, with the exact same contact details.

5. Parties’ Contentions

A. Complainant

The arguments of the Complaint can be summarized as follows:

Regarding the first element of the Policy, the Complainant claims that the disputed domain name <alstomholdings.com> is confusingly similar to its numerous trade marks ALSTOM. It states that the elements “alstom” and “holdings” are directly recognizable within the disputed domain name, in particular because the word “holdings” is commonly used to describe the legal form of a company.

Regarding the second element of the Policy, the Complainant indicates that the Respondent is not affiliated to it in any way, and has not been authorized to make use of its trade mark ALSTOM. The Respondent is not known either under the name Alstom. Much to the contrary, the Respondent appears to be making an abusive, illegitimate use of the disputed domain name to create a false connection with the Complainant.

Regarding finally the third element of the Policy, the Complainant claims that the Respondent had its trade mark in mind when registering the domain name: “in view of the well-known character of the name ASLTOM, it is virtually impossible that the Respondent was not aware of the Complainant’s activities, at the time it registered the contested domain name”. The Respondent also impersonated the identity of a real employee of the Complainant, which is also indicative of bad faith registration. On the use of the disputed domain name, the Complainant recalls that “this domain name and corresponding email address […]@alstomholdings.com (…) are currently used to send numerous commercial prospection scams by email, pretending on behalf of the company Alstom, in order to collect sensitive financial and economic data from Alstom suppliers and customers, as well as to obtain commercial orders to retrieve money”.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.

The Complainant owns numerous trade mark rights over the sign ALSTOM. This trade mark is fully reproduced in the disputed domain name <alstomholdings.com>. The addition of the element “holdings” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”).

The disputed domain name <alstomholdings.com> is therefore confusingly similar to the trade marks of the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required 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 demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant has clearly satisfied its burden of evidence here: the Complainant has argued that it does not know the Respondent, is not linked to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services. Much to the contrary, the operation by the Respondent of a phishing scheme demonstrates a lack of rights or legitimate interests.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.

Reference was made in the statement of facts to a prior proceeding initiated by the Complainant against the same Respondent concerning a domain name with a very similar configuration: <alstom-holdings.com> (Alstom S.A. v. Name Redacted, supra). In this matter, the learned panel decided that this domain name was registered and used in bad faith, on the basis in particular of the following findings:

“According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trade mark both in France and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s famous trade mark was registered in bad faith.

According to section 3.4 of the WIPO Overview 3.0 Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. The Panel finds that in the present case use of the disputed domain name to send deceptive emails constitutes bad faith.”

The Panel can only agree with this reasoning. The disputed domain name was solely registered by the Respondent with the purpose of pursuing the fraudulent email scheme with a view of abusing potential or existing suppliers of the Complainant. The Respondent needed an alternative email to prevent the interruption of its fraudulent activities, while its first email address was under the threat of the first Complaint filed by the Complainant. With its repeated fraudulent acts, the Respondent has operated a phishing scheme to the detriment of the Complainant and of its business contacts: the use of a misleading email address, to impersonate the Complainant, is likely to lure a number of entities, and/or to harm the reputation of the Complainant.

What is the worst is that the Respondent has engaged in a pattern of registering domain names incorporating the Complainant’s trade mark registration, in order to prevent the interruption of its phishing scheme.

Therefore, the Panel also finds that the disputed domain name <alstomholdings.com> was registered and is being used by the Respondent in bad faith.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.

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 <alstomholdings.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: February 5, 2020

¹ The Panel notes that the Complainant has asserted that the Respondent in this case is the same one as in Alstom S.A. v. Name Redacted, WIPO Case No. D2019-2544. In light of potential risk of identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which included the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the Decision in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.