WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Domain Admin, Neosens IT Solutions

Case No. D2021-1891

1. The Parties

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

The Respondent is Domain Admin, Neosens IT Solutions, Pakistan.

2. The Domain Names and Registrar

The disputed domain names <alstomeintl.com> and <alstomintl.com> (the “Domain Names”) 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 June 16, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 17, 2021, 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 for the Domain Names.

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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. An email was received from the Respondent on July 13, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 19, 2021. 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 French public limited company registered in the commercial register of Bobigny, France and headquartered in Saint Ouen sur Seine, France. Established in 1928, the Complainant is a leading manufacturer of rolling stock and a partner in railway systems around the world, with more than 70,000 employees in 70 countries, including major operations in Pakistan, India, and neighboring countries. The Complainant operates a website at “www.alstom.com” (a domain name it has held since January 1998) and owns numerous other domain names incorporating the ALSTOM mark, including <alstome.com> and <alstominternational.com>.

The Complainant holds numerous trademark registrations featuring the coined name ALSTOM, including the following:

The Registrar reports that the Domain Name <alstomeintl.com> was created on August 20, 2020, and <alstomintl.com> on August 28, 2020, both registered in the name of the Respondent Domain Admin, Neosens IT Solutions, with a postal address in Pakistan. The Respondent is an information technology firm in Pakistan, and it gives an email address with a domain name corresponding to the Respondent’s name. There appears to be no active website associated with that domain name, however. The Respondent corresponded by email with the Center as described in the next section below.

Screenshots attached to the Complaint show that the Domain Name <alstomeintl.com> resolved in June 2021 to a landing page displaying the message “This website is under construction” and an email address using the Domain Name. At the same time, the Domain Name <alstomintl.com> resolved to a multi-page English-language website headed “ALSTOM” selling embroidery products (the “Respondent’s former website”). The representation of the name “Alstom” was similar in appearance to some of the figurative ALSTOM marks registered by the Complainant, with the name in capital block letters and the letter “O” in a different (red) color with additional design features (the “pulse” device). The “About Us” description read as follows:

“Alstome International is one of the leading manufacturing and exporting company of Hand and Machine Embroidery Badges in Pakistan having a wide variety of quality products since 1990.”

The website operator was variously named and spelled as “Alstome International” or “Alstom International Enterprise” on various pages of the Respondent’s former website. The Complainant reports that it monitors for businesses and trademarks in Pakistan using a name similar to “Alstom” and has not found an “Alstome International” or “Alstom International Enterprise” in the country and cannot locate a business at the address given in the registration details for the Domain Names.

Some of the embroidered badges and apparel pictured and described on the Respondent’s former website appear to be ones featuring globally well-known brand names that would require trademark licensing, such as PRADA, GUCCI, RALPH LAUREN, NIKE, ADIDAS, QUICKSILVER, BILLABONG, VANS, and HUGO BOSS. Screenshots from the website do not mention trademark rights or display trademark symbols as would be expected. Thus, there is a strong possibility that the Respondent’s former website traded in counterfeit goods.

Representatives of the Complainant sent cease-and-desist letters to the Respondent in December 2020 and sent emails in December 2020 and January 2021 to the various contact email addresses shown on the Respondent’s former website associated with the Domain Name <alstomintl.com> and the landing page for the Domain Name <alstomeintl.com>. The Complainant reports that it received no replies to any of these communications. However, the Complainant also did not receive any “non-delivery” messages.

At the time of this Decision, neither Domain Name resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that both Domain Names are confusingly similar to its registered ALSTOM trademarks, for which the Respondent has neither permission nor evident rights or legitimate interests to use in the Domain Names. The Complainant observes the lack of evidence for an actual company or business operating legitimately with a corresponding name in Pakistan.

The Complainant argues that registration and use of the Domain Names reflects bad faith in an attempt to exploit the Complainant’s well-established ALSTOM mark for commercial gain, and further that the association of the mark with the sale of counterfeit goods potentially damages the Complainant’s reputation. The Complainant refers to the “passive holding” doctrine with regard to the non-use of the Domain Name <alstomintl.com>, citing Novo Nordisk A/S v. CDMS Invest, WIPO Case No. D2012-0676, where the respondent initially set up a website to exploit the complainant’s trademark but stopped using it. The Complainant points out that the two Domain Names are closely related.

B. Respondent

The Respondent replied to notice of the Complaint with an email to the Center dated July 13, 2021, reading in relevant part as follows:

“After received a notice through DHL from you (WIPO) and after reading we have take action and deleted the website. I never heard before about ALSTOM FRANCE (trademark) that a big company and has business all over the world. […]

We have a procedure to register a domain that first of all the Customer provide us verified documents from our Government Organization after that we register the domain. We received the attached document from customer at the time of registration.”

The email attached copies of a Provisional Certificate of Membership from the Sialkot (Pakistan) Chamber of Commerce and Industry for Alstom International, dated May 17, 2019, a National Identification Card for Abdul Zahoor, and a 2019 Federal Board of Revenue registration form for Mr. Zahoor. The last document is an individual tax report listing Mr. Zahoor’s business as “Alstom International”, an import-export business started on January 26, 2019, 100% owned by him and operating from a residential property.

The Respondent’s email is not a formal Response accompanied by the required certification of completeness and accuracy (see Rules, paragraph 5(viii)), and this must be taken into account in weighing its credibility. Nevertheless, the Panel accepts that it is credible evidence that the Respondent is an information technology service provider that acted on behalf of a client, Mr. Zahoor, in registering and hosting the Domain Names. It may be inferred that Mr. Zahoor furnished the content for the Respondent’s former website, as it concerned the business of “Alstom International”, but it appears that the Respondent retained control, as it was able to “delete” the website after receiving the Complaint in this proceeding.

Neither the Respondent nor Mr. Zahoor has submitted a substantive Response to the Complainant’s arguments.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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 in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

6.1 Respondent Identity

The Registrar has confirmed Domain Admin, Neosens IT Solutions as the Respondent. As recounted above, the named Respondent evidently registered and hosted the Domain Names for the benefit of a client, Mr. Zahoor, who operated the Respondent’s former website. The Respondent is the registrant of record and remains responsible for the Domain Names under the terms of the ICANN-mandated registration agreement, as reflected in the Policy, paragraph 2, “Your Representations”;

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”

Thus, in this Decision, the Panel will refer to Domain Admin, Neosens IT Solutions as the Respondent. The Respondent has not submitted a full Response with a certification of accuracy and completeness, but it has submitted documents relevant to the consideration of its client’s possible interests and motivations, and those will be taken into consideration in connection with the assessment of the second and third elements of the Complaint, as the Respondent is ultimately responsible for the registration and use of the Domain Names.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for ALSTOM as a word mark and as a figurative mark in which the coined name ALSTOM is the dominant element. Both Domain Names incorporate this mark in its entirety. The Domain Name <alstomintl.com> adds the letters “intl”, a common abbreviation of the French and English word “international”. The Domain Name <alstomeintl.com> also adds an “e” after the name “alstom”, a common misspelling but also an addition sometimes used to refer to “electric” or “electronic”. The addition of descriptive terms, abbreviations, or acronyms does not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.

Accordingly, the Panel finds that both Domain Names are confusingly similar to the Complainant’s registered ALSTOM trademarks and concludes that the Complaint satisfies the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the 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 domain name in connection with a bona fide offering of goods or services; or

(ii) that 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its well-established ALSTOM marks, and the Respondent’s (or its client’s) use of the Domain Name <alstomintl.com> for a website selling what appear to be counterfeit goods and giving two versions of a company name without sufficient information to establish that such a company exists as a legal entity, while there is no evidence of use to date of the similar Domain Name <alstomintl.com>.

This does not indicate a bona fide commercial activity or noncommercial fair use, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so. The unattested documents attached to the Respondent’s email to the Center indicate that the Respondent’s client Mr. Zahoor is an individual who operated an import-export business from a residence, starting in 2019. The information about the business on the Respondent’s former website is incomplete and contradictory, and the website appears to have traded in counterfeit goods, as well as mimicking the Complainant’s figurative trademark on the website. There is no evidence in the record supporting that Mr. Zahoor established a legal entity or trademark corresponding to either of the Domain Names. But even if Mr. Zahoor did so, this would not establish rights or legitimate interests, considering “circumstances indicating pretext” (see WIPO Overview 3.0, section 2.12), such as the facts that Mr. Zahoor chose a business name that corresponds exactly to the Complainant’s well-known word mark and then used it for a website displaying a logo very similar to the Complainant’s figurative mark, to sell trademarked goods of others absent trademark markings. The business cannot be characterized as bona fide where there is persuasive evidence of trademark abuse, as there is here. Thus, the Respondent has not met the burden of demonstrating its own or its client’s rights or legitimate interests in the Domain Names.

The Panel concludes that the Complainant prevails on this second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent and its client Mr. Zahoor reside in Pakistan, where the Complainant has substantial,

long-term operations in the rail, urban transport, and (formerly) electric power industries, and where its ALSTOM mark has been registered since at least 1998. According to the Complainant, the Complainant’s brand is a coined mark, and online dictionaries and translation tools indicate that it does not correspond to a dictionary term in French or English, nor in Urdu or Punjabi (the languages of the country and province of the Respondent’s listed address). The Complainant’s ALSTOM mark is internationally well established, as other WIPO panels have recognized. See Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Trading ten, WIPO Case No. D2021-0451; and Alstom v. jeremiah poole, WIPO Case No. D2020-2802; ALSTOM v. Daniel Bailey, (Registrant ID: tuuROSvPJbZdd2XO), WIPO Case No. D2010-1150. Thus, the most likely explanation for Mr. Zahoor’s selection of the Domain Names is to trade on the name-recognition of the Complainant’s mark, and that is precisely one of the instances of bad faith cited in the Policy. The Respondent denies prior awareness, but the Respondent claims to have been acting on behalf of a client, Mr. Zahoor, who chose to operate a personal business and website with a name (and logo) imitating the Complainant’s globally and locally well-known mark. Mr. Zahoor has not come forward to offer an alternative explanation.

The Respondent’s client Mr. Zahoor used one of the Domain Names, <alstomintl.com>, to market items that likely included counterfeit goods. The other Domain Name, <alstomeintl.com>, which was registered eight days earlier, has apparently not been used yet for an active website. This does not prevent a finding of bad faith under the doctrine of “passive holding”, where a respondent registers a domain name confusingly similar to a distinctive and well-established trademark, there is no plausible legitimate use, and there are other indicia of bad faith. See WIPO Overview 3.0, section 3.3. Here, Mr. Zahoor’s deceptive and trademark-abusive use of the sister Domain Name, as described above, and lack of responsiveness to the Complainant and to the Center are also indicative of bad faith. The Respondent, as the registered owner of the Domain Names, remains responsible for compliance with the Policy and with other ICANN-mandated terms of the registration agreement, such as use of the Domain Names that respects the rights of third parties.

The Panel concludes on this record that the Complainant has established the third element of the Complaint, bad faith, with respect to both Domain Names.

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 Domain Names, <alstomeintl.com> and <alstomintl.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: July 27, 2021