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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alstom v. Registration Private, Domains By Proxy, LLC / maycol novoa

Case No. D2021-4184

1. The Parties

The Complainant is Alstom, United States of America (“United States”) represented by Lynde & Associes, France.

The Respondent is Registration Private, Domains By Proxy, LLC, United States / maycol novoa, Peru.

2. The Domain Names and Registrar

The disputed domain names <alstomrgroup.com> and <alstonmgroup.com> are 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 December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 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 December 21, 2021.

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 December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. A third-party communication was received on December 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2022.

The Center appointed Gregor Vos as the sole panelist in this matter on January 27, 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 active in the field of transportation infrastructures.

The Complainant is the owner of inter alia the following trademark registrations (hereinafter referred to as the “Trademarks”):

- International Trademark Registration No. 706292 for ALSTOM registered on August 28, 1998, with designation of inter alia China, Germany, Japan, and the United Kingdom;
- European Union Trade Mark Registration No. 948729 ALSTOM registered on August 8, 2001;
- United States Trademark Registration No. 85507365 logo registered on November 6, 2012.

Further, it is undisputed that the Complainant is the holder of inter alia the domain name <alstom.com>, registered on January 20, 1998 and the domain name <alstomgroup.com>, registered on November, 14, 2000.

The disputed domain name <alstomrgroup.com> was registered on November 10, 2021. The disputed domain name <alstonmgroup.com> was registered on November 15, 2021. Both disputed domain names are currently inactive and do not resolve to a website. The disputed domain name <alstomrgroup.com> was used to send fraudulent e-mails to business partners of the Complainant, in which they were inter alia requested to change the bank details of the Complainant known to them.

5. Parties’ Contentions

A. Complainant

With the Complaint, the Complainant seeks that the disputed domain names <alstomrgroup.com> and <alstonmgroup.com> be transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the disputed domain names are identical or confusingly similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.

Firstly, according to the Complainant, the disputed domain names are identical or confusingly similar to its well-known Trademarks. The disputed domain names reproduce the Trademarks entirely with the mere addition of the generic Top-Level Domain (“gTLD”) “.com”, the addition of the letters “r” and “n” respectively, and the addition of the term “group”. Therefore, by registering the disputed domain names, the Respondent has created a confusing similarity with the Complainant’s Trademarks in that they could mislead Internet users into thinking that the Respondent is in some way associated with the Complainant.

Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names <alstomrgroup.com> and <alstonmgroup.com>. The Respondent is not affiliated to the Complainant and has not received any form of authorization from the Complainant to register the disputed domain names. Further, the Respondent is not commonly known under the name “alstomrgroup” nor under the name “alstonmgroup”. Also, the Respondent has never responded to the Complainant’s attempts to contact the Respondent.

Finally, according to the Complainant, the Respondent has registered and is using the disputed domain names <alstomrgroup.com> and <alstonmgroup.com> in bad faith. In light of the well-known character of the Complainant’s Trademarks, it is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant and its Trademarks. This is reinforced by the fact that the disputed domain names are obviously registered as a form of typo squatting. Also, the Respondent has attempted to conceal its real identity by providing fake contact details to the Registrar. Further, the disputed domain name <alstomrgroup.com> has been used to send fraudulent e-mails to the Complainant’s commercial partners, which is indisputably a use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, on December 31, 2021 a third-party communication sent the following “We cancelled all 3 domains with Microsoft. They were registered by a hacker after one of our accounts was compromised”. No more communications were received after a request from the Center to clarify the relationship (if any) with the Respondent.

6. Discussion and Findings

In view of the lack of a formal response filed by the Respondent, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. the disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii. the disputed domain names have been registered and are being used in bad faith.

Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.

With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.

With regard to the assessment of identity or confusing similarity of the disputed domain names with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the disputed domain names (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of the WIPO Overview 3.0).

In the present case, the Trademarks are incorporated in their entirety and are recognizable within the disputed domain names <alstomrgroup.com> and <alstonmgroup.com>. The addition of the gTLD “.com”, the addition of the letters “r” and “n” respectively and the addition of the term “group” do not prevent a finding of confusing similarity with the Trademarks (see sections 1.7 and 1.11 of the WIPO Overview 3.0). Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names <alstomrgroup.com> and <alstonmgroup.com>. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).

Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain names.

The Complainant has substantiated that none of these circumstances apply in this case. The Respondent has failed to rebut the prima facie case established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names <alstomrgroup.com> and <alstonmgroup.com>. Paragraph 4(a)(ii) is thereby fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.

In the present case, the Trademarks are registered by the Complainant and predate the registration date of the disputed domain names <alstomrgroup.com> and <alstonmgroup.com>. In light of the well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the disputed domain names without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. The well-known character of the Trademarks of the Complainant has been confirmed by earlier UDRP panels (see e.g. Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and Distribution Engineering Co., Ltd, WIPO Case No. DCO2016-0032; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Flor Walden, WIPO Case No. D2020-0127). The Panel notes that there is no website linked to the disputed domain names. However, such passive holding of the disputed domain names does not prevent a finding of registration and use in bad faith (see section 3.3 of the WIPO Overview 3.0). In light of the clear presence of typo squatting, which the Respondent has failed to address, the Panel finds it implausible that the disputed domain names may be put to good faith use. Moreover, with regard to the disputed domain name <alstomrgroup.com>, it is undisputed that this disputed domain name has been used to send fraudulent e-mails to the Complainant’s commercial partners, which is indisputably a use of the disputed domain name in bad faith.

Accordingly, the Panel finds that the disputed domain names <alstomrgroup.com> and <alstonmgroup.com> have been registered and are being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.

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 names, <alstomrgroup.com> and <alstonmgroup.com>, be transferred to the Complainant.

Gregor Vos
Sole Panelist
Date: February 10, 2022

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