The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Lizhi, Lizhi, China.
The disputed domain name <cealstomlecreusot.net> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 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 November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2020.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 21, 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 is a company founded in France in 1928 and is a global leader in the world for transport infrastructures. The Complainant has over 34,000 employees with operations in over 60 countries and has been operating in China for almost 60 years, including supplying 25 locomotives to the first electrified railway in China in 1958.
The Complainant owns many trademark registrations comprising the word ALSTOM in many jurisdictions, including:
|
Jurisdiction |
Trademark No. |
Registration Date |
|
European Union |
000948729 |
August 8, 2001 |
|
United States of America |
4570546 |
July 22, 2014 |
|
International Registration |
706292 |
August 28, 1998 |
|
International Registration |
706360 |
August 28, 1998 |
International registration No. 706292 and No. 706360 designated China. Past UDRP panels have held ALSTOM to be a well-known trademark (see ALSTOM v. Daniel Bailey, WIPO Case No. D2010-1150; General Electric Company v. Islam Gamal and Begad Negad, WIPO Case No. D2016-0553).
The Complainant is also the registrant of numerous domain names incorporating the trademark ALSTOM. These include <alstom.com>, <alstom-power.com>, <alstom.net>, <alstom.co.uk>, <alstom.info>, <alstom.cn>, <alstom.org>, <alstom.fr> and <alstom.ca>.
The Complainant owns several companies comprising the word ALSTOM, including “Alstom Transport Sa” having a main establishment in Le Creusot, France. Additionally, “Alstom Transport Sa’s local works council owns the domain name <cealstomlecreusot.com> registered on December 11, 2012.
Not much is known of the Respondent beyond the WhoIs information and Registrar verification provided in this proceeding. The Respondent appears to be a resident of China.
The Disputed Domain Name <cealstomlecreusot.net> was registered on March 13, 2020. As of May 25, 2020, the Disputed Domain Name redirected to another domain name <hhsp11.com> which featured a pornographic website. However, as of January 5, 2020, the Disputed Domain Name was resolving to a website offering certain cleaning services.
On June 9, 2020, the Complainant sent a cease and desist letter to the Respondent’s email address. The Complainant were unable to contact the Respondent via postal address or telephone. The Respondent did not respond to the cease and desist letter despite the Complainant’s email reminders on June 17, 2020 and July 28, 2020.
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark ALSTOM in which the Complainant has rights. The dominant and distinctive feature of the Disputed Domain Name is the trademark ALSTOM. The difference between the Disputed Domain Name and the trademark ALSTOM is the addition of a “ce” prefix and a suffix “le creusot”. The letters “ce” are an acronym for “Comité d’Enterprise” which means works council in English and is likely to be perceived by Internet users as referring to the Complainant’s works council. The words “le creusot” is the name of a city in France. Therefore, the addition of “ce” and “le creusot” is not sufficient to outweigh the similarity between the Disputed Domain Name and the trademark ALSTOM and is insufficient to prevent Internet user confusion;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not a licensee, authorized dealer or distributor of the Complainant. The Respondent is not associated with the Complainant. The Respondent is not commonly known by the Disputed Domain Name. There is no evidence that the Respondent has made use or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark ALSTOM is a famous trademark of the Complainant. The Respondent knew, or should have known, of the existence of the Complainant’s trademarks. The Respondent is trying to exploit the Complainant’s famous trademark in order to confuse Internet users seeking to reach the main establishment located in “le creusot” and its works council.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
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.
Based on the trademark registrations tendered in the evidence, the Panel is satisfied that the Complainant owns rights in the trademark ALSTOM. The Disputed Domain Name incorporates the trademark ALSTOM in its entirety. Although the Disputed Domain Name has the addition of the prefix “ce”, and suffix “le creusot” compared to the trademark ALSTOM, the trademark ALSTOM remains recognizable in the Disputed Domain Name. For purposes of comparing a disputed domain name with a trademark, it is common practice (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 1.11) that the generic Top-Level Domain (“gTLD”) portion of the disputed domain name should be disregarded, which this Panel respectfully adopts. Given this, the Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ALSTOM.
Further, the Panel notes that the Complainant owns the company “Alstom Transport Sa”, which operates a local works council in the French city of Le Creusot and maintains an online presence under the domain name <cealstomlecreusot.com>. The domain name <cealstomlecreusot.com> dates as far back as 2012 and is virtually identical to the Disputed Domain Name, save for the gTLD. Given sufficient information demonstrating acquired distinctiveness in the domain name <cealstomlecreusot.com>, the Panel would have been inclined to consider the Complainant’s unregistered trademark rights in “cealstomlecreusot”. Regrettably, due to limited information in the proceeding, the Panel makes no further comment as such.
In view of the foregoing, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark ALSTOM thereby establishing the first limb of paragraph 4(a) of the Policy.
There is no evidence before the Panel to suggest that the Respondent is known by the Disputed Domain Name. The Complainant has asserted that the Respondent is not a licensee, authorized dealer or distributor of the Complainant, and has denied any association with the Respondent. There is nothing in the evidence to controvert the Complainant’s assertions. The evidence in the proceeding also does not suggest any plausible use or preparation to use the Disputed Domain Name on the part of the Respondent in connection with bona fide noncommercial purposes. In the light of the circumstances, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name which has not been rebutted.
The second limb of paragraph 4(a) of the Policy is accordingly established.
Paragraph 4(b) of the Policy sets out non-exhaustive circumstances of bad faith registration and use of a domain name. In particular, paragraph 4(b)(iv) of the Policy provides as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Based on the evidence submitted, the Panel accepts that the trademark ALSTOM is well-known. It is inconceivable that the Respondent was unaware of the Complainant’s trademark rights in the ALSTOM trademark at the time of registering the Disputed Domain Name. The Respondent’s selection of the Disputed Domain Name which is for all intents and purposes identical to the domain name <cealstomlecreusot.com> used by the Works Council of the Complainant’s Le Creusot business establishment leaves little to the imagination about the Respondent’s knowledge of the Complainant’s trademark ASLTOM and intent for the Disputed Domain Name. The Disputed Domain Name was obviously being deployed for the purpose of directing traffic to the Respondent’s website by creating a likelihood of confusion with the trademark ALSTOM as to source, sponsorship, affiliation, or endorsement within the meaning of paragraph 4(b)(iv). Whether such intent related to pornographic content or cleaning services, it is unimaginable that commercial gain could not have been unintended.
The circumstances are further aggravated by the nefarious association of pornographic content to the well-known trademark of the Complainant on the website redirected from the Disputed Domain Name. Numerous UDRP panels have not hesitated to hold that pornographic content on a respondent’s website is sufficient to establish bad faith registration and use within the meaning of paragraph 4(a)(iii) (see WIPO Overview 3.0, section 3.12). The Panel is of the view that, for present considerations, a domain name which redirects to a website on another domain name featuring pornographic content should not be treated differently from a domain name resolving directly to a website featuring pornographic content. The essential result is the same – traffic is redirected to pornographic content by creating a likelihood of confusion with a trademark. The subsequent resolution of the Disputed Domain Name to a website offering cleaning services does not change the fact that the Disputed Domain Name had served to redirect traffic as such.
By reason of the above, the Panel holds finds that the Disputed Domain Name was registered and is being used in bad faith.
Therefore, the third limb of paragraph 4(a) of the Policy is also established.
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 <cealstomlecreusot.net> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: January 5, 2021