Alstom v Farris Alston

WIPO Case No. D2025-0949

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Alstom v. Farris Alston

Case No. D2025-0949

1. The Parties

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

Respondent is Farris Alston, United Kingdom.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2025. On March 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2025, 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 (“Unknown Registrant”)) and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 14, 2025

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 Respondent of the Complaint, and the proceedings commenced on March 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2025. The Response was filed with the Center on April 2, 2025.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 8, 2025. 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

Complainant, Alstom, is a French company in the transportation infrastructure industry. Complainant, inter alia, designs, manufactures and services a variety of rolling stock such as high-speed trains, metros, trams and locomotives. Complainant owns and uses the name and mark ALSTOM in connection with its products and services and owns several registrations for the ALSTOM mark. These include, among others, (i) a

(ii) a registration in the United Kingdom (Registration No. UK00900948729) which issued to registration on	registration in the European Union (Registration No. 948729) which issued to registration on August 8, 2001, 1998, that has been extended to numerous jurisdictions. Complainant also owns and uses the domain names <alstom.com> and <alstomgroup.com>. The former is used for a website concerning Complainant and its products and services.
Respondent appears to be based in the United Kingdom. The disputed domain name was registered on July 23, 2020, and does not appear to have been used for an active website or page, apart from a “Coming Soon” holding page on August 24, 2022. The disputed domain name currently does not resolve to an active
website or page.
On September 15, 2020, Complainant contacted the Registrar for the disputed domain name “to assert their prior rights in the denomination ALSTOM” and requested the Registrar to “provide information on the reasons for the registration of the domain name”. On September 16, 2020, the Registrar replied to Complainant’s communication indicating that Complainant should contact the registrant or file a UDRP proceeding or lawsuit. The Registrar did not otherwise take any action and did not disclose the identity of the underlying registrant of the disputed domain name. On September 21, 2020, Complainant replied to the Registrar’s communication and again requested that the Registrar disclose the identity and postal/email addresses of the registrant of the disputed domain name. Complainant does not appear to have taken any further action at that time. Then, on October 28, 2024, Complainant contacted the Registrar again noting changes in the disputed domain name records and requesting information on the status of the disputed domain name. The Registrar appears to have responded that “the domain name alstomarketing was deleted on 2023-09-24”. On February 6, 2025, the Registrar clarified that the disputed domain name had been updated on July 24, 2024.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, Complainant asserts that it owns strong rights in the ALSTOM name and mark as Complainant is a global leader in the world of transport infrastructure, its goods and services are “extremely well-known throughout the world” and it owns many companies that use the name ALSTOM.
Complainant maintains that the disputed domain name is confusingly similar to its ALSTOM mark as it fully incorporates the ALSTOM mark.
Complainant argues that Respondent does not have legitimate interests in the disputed domain name as Respondent (i) is not affiliated with Complainant and has not obtained any authorization from Complainant to register or use the ALSTOM mark or the phrase ALSTOMARKETING, (ii) is not commonly known by the these signs(iii) has not made any use of the disputed domain name, and (iv) can have no legitimate interest in a domain name containing the ALSTOM mark given the reputation Complainant enjoys in its ALSTOM mark.

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Complainant contends that Respondent likely was aware of the well-known ALSTOM mark when
Respondent registered the disputed domain name. Respondent notes that the disputed domain name has
been inactive, and that Respondent registered the disputed domain name “under cover of anonymity”. Given
these circumstances, Complainant maintains that Respondent has acted in bad faith to take advantage of
Complainant's rights in the ALSTOM mark by registering the disputed domain name that is composed of the
ALSTOM mark together with a descriptive word.

Lastly, Complainant in communications to the Center dated March 19, 2025, further argues that Respondent is acting in bad faith as during an attempt by Complainant to amicably settle the matter, after this proceeding was initiated, Respondent requested financial compensation for the transfer of the dispute domain name.

B. Respondent

Respondent rejects Complainant's contentions.

Respondent argues that the disputed domain name is not confusingly similar to the ALSTOM mark as it contains the descriptive word “marketing” and Complainant does not hold a trademark for “alstomarketing”.

Respondent contends that he has a legitimate interest in the disputed domain name as he registered it in July 2020 based on his surname “Alston” for a planned marketing business. In that regard, Respondent claims that the proposed brand for his planned business was AlstoMarketing which was derived from his name. Respondent also contends that he has never offered the disputed domain name for sale, marketed it

as an Alstom related brand or used it for any deceptive purposes.

Respondent maintains that there is no evidence of bad faith registration and use as the disputed domain name was registered for a personal business project and not to target Complainant. Respondent also maintains that the disputed domain name has not been actively used to mislead, impersonate of compete with Complainant.

With regard to the request for financial compensation during settlement discussions with Complainant after this proceeding was initiated, Respondent asserts that he did not approach Complainant to sell the disputed domain name and only responded to the proceeding with a willingness to resolve the matter amicably. Respondent claims that he “suggested compensation to recover my investment in maintaining the domain over five years – not to exploit the Complainant's trademark”.

Respondent also argues that Complainant was obviously aware of the disputed domain name back in September 2020 when Complainant contacted the Registrar to inquire about the disputed domain name but took no action at that time concerning the disputed domain name and let five years pass before initiating this proceeding.

Lastly, Respondent asks the Panel to consider a finding of reverse domain name hijacking.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)       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.

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A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in its ALSTOM mark for purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Here, the ALSTOM mark is recognizable in the disputed domain name, albeit by sharing the letter “m” with the word marketing. The Panel thus finds that because disputed domain name contains the ALSTOM

mark, the disputed domain name is confusingly similar for 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

As the Panel, as discussed below, finds that Complainant has not satisfied the third element of the Policy, it will not discuss the second element.

C. Registered and Used in Bad Faith

The Panel notes that, for 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.

Here, Complainant claims that Respondent has acted in bad faith because the disputed domain name was acquired after the ALSTOM mark became well-known and that “it is virtually impossible that the Respondent was not aware of the Complainant's activities at the time it registered the contested domain name.“ In response to this contention, Respondent maintains that he registered the disputed “based on my surname, Alston, for a planned marketing business” and that “'AlstoMarketing' was a proposed brand at the time, derived from my name.“

While Complainant has provided little evidence showing that the ALSTOM mark is well-known as it claims, Complainant has provided no evidence showing that the disputed domain name was, in fact, specifically registered by Respondent to take advantage of or to target Complainant's rights in its ALSTOM mark. Similarly, Respondent has provided no evidence establishing that his surname is “Alston” or that the disputed domain name was, in fact, registered for a planned marketing business. Given the evidentiary lacunes, the Panel must review all of the circumstances surrounding the registration and use of the disputed domain to make an assessment as to whether it is more likely than not that Respondent registered and used the disputed domain name in bad faith to take advantage of Complainant's rights in the ALSTOM mark.

To begin, the disputed domain name on its face raises several possibilities. The disputed domain name can be broken down to read “alsto marketing”, “alstom arketing”, or simply a typo version that drops an “m” in the phrase “alstom marketing”. Respondent claims he registered “Alstomarketing” based on his surname, and

Complainant appears to urge that Respondent registered a typo version of “alstom marketing” to specifically
target Complainant. Interestingly, when the Panel ran a search of logically related domain names it found
that the domain name <alstonmarketing.com> had been registered since 2003 and that
<alstommarketing.com> was available for registration. Thus, on its face it appears more plausible that
Respondent, as he claims, registered the disputed domain name based on his surname, given that
<alstonmarketing.com> was not available. After all, it would seem illogical to register a typo version of
“alstom marketing”, when the more relevant (and potentially valuable) domain name <alstommarketing.com>
was available. And certainly, if Respondent was targeting Complainant, registering <alstommarketing.com>
would have been a much clearer attempt to do so.

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Although it is possible that Respondent was cleverly registering the disputed domain name to take advantage of the ALSTOM mark, what is missing in the record is anything showing that Respondent ever did anything that would show that Respondent's intent was to take advantage of the ALSTOM mark (as opposed to registering a domain name derived from his surname “Alston”). There is no evidence that shows that Respondent since registering the disputed domain name ever did anything to exploit the value of the ALSTOM mark or to target Complainant. There is no evidence that Respondent ever offered the disputed domain name for sale (apart from the parties' discussions after this proceeding was initiated, which is further discussed below) or ever used it for an offering of goods and services that could be seen as related to or endorsed by Complainant or related to the ALSTOM mark. In fact, the record shows that the disputed domain name was inactive for almost five years.

Complainant urges that there is bad faith on the basis of the parties' limited discussions after this proceeding was initiated. In Complainant's view, the mere fact that Respondent asked for unspecified “fair compensation” to transfer the dispute domain name proves retroactively that the disputed domain name was registered in bad faith. To be sure, a request for compensation in 2025 during a settlement discussion with a pending proceeding does not per se establish bad faith registration in 2020, particularly as no amounts were discussed that would arguably show targeting and it appears that Complainant wanted the disputed domain name that Respondent was not using and which Respondent did not want to have a fight over.

What is particularly notable here is that Complainant admits that it was aware of the disputed domain name in 2020, contacted the Registrar about the disputed domain name and took no steps concerning the disputed domain name for almost five years. As nothing changed in the use of the disputed domain name over five years, it is somewhat surprising that Complainant now urges with no evidence that the disputed domain name was clearly registered in 2020 to take advantage of its ALSTOM mark or to target Complainant. And while there is an open question as to why the Registrar advised in late 2024 that the disputed domain name had been deleted in September 2023, but then clarified it had been updated in July 2024, Complainant merely mentions this but never claims that the disputed domain name ever changed ownership. So on its face, Respondent's claim to have owned the disputed domain name since 2020 further supports Respondent's claim of good faith registration given the lack of evidence that Respondent did anything to take advantage of or exploit Complainant's rights in its ALSTOM mark for Respondent's benefit.

In all, the Panel finds that Complainant has failed to prove bad faith registration or use of the disputed domain and thus the complaint fails on the third element

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad

faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.

Here, Complainant owns trademark registrations for the ALSTOM that predate Respondent’s registration of the disputed domain name in 2020. While the ALSTOM mark is recognizable in the disputed domain name and is arguably a typo version of the phrase “Alstom marketing”, it was not unreasonable for Complainant to initiate a proceeding that concerned a disputed domain name that on its face could be seen as based on the ALSTOM mark. This is particularly so given that the identity of Respondent which was unknown at the time Complainant initiated this proceeding. Accordingly, the Panel finds that Complainant did not initiate this

UDRP proceeding in bad faith or primarily to harass Respondent.

The request for a finding of reverse domain name hijacking is denied

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7. Decision

For the foregoing reasons, the Complaint is denied.

/Georges Nahitchevansky/
Georges Nahitchevansky
Sole Panelist
Date: April 22, 2025