Alstom v Asha Patel, Alstom

WIPO Case No. D2024-2311

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Alstom v. Asha Patel, Alstom

Case No. D2024-2311

1. The Parties

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

The Respondent is Asha Patel, Alstom, United Kingdom (“U.K.”)

2. The Domain Name and Registrar

The disputed domain name <alstomgroup.info> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2024. On
June 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 6, 2024, 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 (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on June 7, 2024, 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 June 12, 2024

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 June 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2024. On July 10, 2024, the Center received and informal communication from the Respondent.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on July 12, 2024. 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.

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4. Factual Background

The Complainant is a French company that was created in 1928. It is a global leader in the field of transport infrastructures and employs 34,000 professionals in more than 60 countries. Between April and September 2023, the Complainant’s sales reached EUR 8.4 billion.

The Complainant holds numerous trademarks which have been duly renewed and which consist in all or in part of the term “alstom” on a worldwide basis such as, notably:

- U.K. Trademark Registration n° 00948729 that was filed on September 30, 1998, and registered on
August 8, 2001, in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41 and 42;

- United States Trademark Registration n° 85507365 that was filed on January 3, 2012, and registered
on November 6, 2012, in classes 9, 8, 19, 7, 6, 17, 13, 24, 1, and 12;

- International Trademark Registration n° 706292 that was registered on August 28, 1998, in classes 1, 2, 4, 6, 7, 9, 11, 12, 13, 16, 17, 19, 24, 35, 36, 37, 38, 39, 40, 41, and 42;European Union Trademark Registration n° 000948729 that was filed on September 30, 1998, and registered on August 8, 2001, in classes 6, 7, 9, 11, 12, 16, 19, 24, 35, 36, 37, 38, 39, 40, 41, and 42.

The Complainant further holds numerous domain names that comprise its ALSTOM trademark, such as <alstom.com> (January 20, 1998), <alstomgroup.com> (November 14, 2000), which both redirect to the official Complainant’s website, as well as, among others, <alstom.ca> (November 25, 2000),

<alstomgroup.net> (June 1, 2017), <alstomgroup.fr> (June 2, 2017) and <alstomgroup.eu> (November 24,
2018).

The Complainant and its group of companies is widely referred to as the ALSTOM GROUP, which is further used in all the email addresses of the Complainant’s employees.

On April 16, 2024, the Respondent registered the disputed domain name, which does not resolve to any active website. The Respondent’s address as displayed in the WHOIS database does not correspond to any ALSTOM site and the disclosed email address does not match the format normally used within the

Complainant. The Respondent’s name appears to have been used to register 33 domain names.

On April 29, 2024, the Complainant sent a letter to the Registrar, inviting it to disclose the Respondent’s contact details and to suspend the disputed domain name as well as any website and email addresses related to it. The exchanges between the Complainant and the Registrar did not lead to any solution.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its trademark ALSTOM as it entirely comprises such trademark and is further strongly similar to its <alstomgroup.com> domain name.

The Complaint then affirms that the Respondent has no right or legitimate interest in the disputed domain name. The Complainant has never authorized the Respondent to register the disputed domain name. The disputed domain name has further never resolved to an active website and is merely passively held.

The Complainant finally is of the view that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the ALSTOM trademark became well-known, so that the Respondent was obviously aware of the ALSTOM trademark when it registered the disputed

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domain name. Taking into account the fact that the disputed domain name is merely passively held, and that

the ALSTOM trademark is a well-known trademark, the disputed domain is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, however the Center received an informal email communication from the Respondent on July 10, 2023, simply stating: “The account has been suspended, and is due for delation shortly”.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] 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”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i)        the disputed domain name is 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 name; and

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

A. Identical or Confusingly Similar

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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Furthermore, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant, WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes the composition of the disputed domain name, with the addition of the term “group”, which is commonly used in association with the Complainant’s ALSTOM trademark to refer to the Complainant, and that the trademark ALSTOM is a well-known trademark (see in particular ALSTOM v. Daniel Bailey, WIPO Case No. D2010-1150; Alstom S.A. and General Electric Company v. Sichuan

Shanghai Electric Power T&D Engineering Co., Ltd., WIPO Case No. DCO2016-0030). As a result, the
Respondent, more likely than not, was aware of it when it registered the disputed domain name.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s

trademark, the composition of the disputed domain name, and the fact that the Respondent has not come forward with any reasonable explanation for the registration and use of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel further points out that, according to numerous Panels, the registration of a well-known trademark, of which the Respondent must reasonably be aware, constitutes bad faith (for instance, Veuve Clicquot Ponsardin v. The Polygenix Group co., WIPO Case No. D2000-0163, and, as far as ALSTOM is concerned: ALSTOM v. Contact Privacy Inc. Customer 1244065242 / Michelle Chung, Chung Limited Co., WIPO Case No. D2019-2718; Alstom S.A. and General Electric Company v. Sichuan Electricity Transmission and

Distribution Engineering, WIPO Case No. DCO2016-0032).

The Panel finds that the Complainant has established the third element of the Policy.

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 <alstomgroup.info> be transferred to the Complainant.

/Philippe Gilliéron/
Philippe Gilliéron
Sole Panelist
Date: July 15, 2024