Alstom v James Williams

WIPO Case No. D2022-4882

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Alstom v. James Williams

Case No. D2022-4882

1. The Parties

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

The Respondent is James Williams, United States of America (“US).

2. The Domain Name and Registrar

The disputed domain name <alstomgr0up.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2022. On December 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2022, 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 (On behalf of alstomgr0up.com owner, Identity Protection Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2022, 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 28, 2022.

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 January 13, 2023. In accordance with the Rules, paragraph
5, the due date for Response was February 2, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 6, 2023.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter February 10, 2023. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

This Complaint is Alstom, a French company created in 1928 and a global leader in the world of transport infrastructures, employing 34.000 professionals in more than 60 countries.

The Complainant holds trademark registrations for ALSTOM in numerous jurisdictions around the world, including the following:

- United Kingdom Trademark Registration No. UK00900948729 for ALSTOM, of August 8, 2001;

- International Registration No. 706292 for ALSTOM (figurative), of August 28, 1998;

- European Union Trademark Registration No. 000948729 for ALSTOM, of August 8, 2001;

- US Trademark Registration No. 85507365 (figurative) for ALSTOM, of November 6, 2012.

Also, the Complainant owns several domain name registrations, such as <alstom.com>, registered on January 20, 1998 and <alstomgroup.com>, registered on November 14, 2000, both redirecting to the Complainant’s website.

The disputed domain name was registered on November 1, 2022 and does not currently resolve to any active website.

5. Parties’ Contentions

A. Complainant

Initially, the Complainant says that the denomination “Alstom Group” is widely used to designate the employees.

The Complainant argues that the disputed domain name clearly imitates the Complainant’s prior mark, by reproducing it, together with the word “gr0up” (the letter “o” being replaced by the number “0”), thus establishing a typo-squatting.

The Complainant alleges that the Respondent has no authorization from the Complainant to register the disputed domain name. The Complainant attempted to contact the Respondent by sending a cease-and- desist letter to the Registrar which transmitted it to the Respondent, no reply has been received.

Additionally, the Complainant concludes that the disputed domain name was registered and is being used in bad faith due to the following reasons:

- it was registered long after the Complainant’s trademark became well known;

- the Respondent tried to hide its identity by using a protection service on the occasion of the
registration of the disputed domain name;

- all the contact information provided by the Respondent appears to be false;

- the Respondent registered the disputed domain name by misspelling the term “Alstom Group” to
confuse Internet users;

- the disputed domain name is inactive.

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Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or 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 evidence presented to the Panel demonstrates that the Complainant is the owner of several trademark registrations for ALSTOM around the world, which predate the registration date of the disputed domain name.

The disputed domain name incorporates the Complainant’s trademark ALSTOM in its entirety, adding the generic word “group” with the letter “o” being replaced by the number “0”, which does not prevent a finding of confusing similarity with the Complainant’s trademark, since it remains recognizable in the disputed domain name.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a Response to the Complaint.

The Complainant’s trademarks predate the registration of the disputed domain name.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark ALSTOM.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

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For the above reasons, the Panel finds that the Complainant has made out a prima facie case and the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark ALSTOM is registered by the Complainant in several jurisdictions and has been used for many years. Also, the Complainant owns domain names incorporating the mark ALSTOM, including <alstom.com>, and <alstomgroup.com>. The registrations of the Complainant’s trademarks and domain names predate the registration of the disputed domain name.

The Complainant’s ALSTOM mark is globally well known. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

Considering the evidence presented in the Complaint, there is no doubt that the disputed domain name represents an intentional misspelling of the domain name <alstomgroup.com> used for email addresses of the Complainant’s staff.

Also, the disputed domain name is passively held. Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain will be considered to be in bad faith. The Panel finds that passive holding of the disputed domain name does not prevent in the circumstances of this case a finding of bad faith.

Moreover, the Respondent used a privacy service when registered the disputed domain name and has chosen not to respond to the Complainant’s allegations. In these circumstances, and as found in the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”.

Therefore, it seems clear that the Respondent has intentionally attempted to cause confusion with the or is associated with the Complainant.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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, <alstomgr0up.com>, be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: February 24, 2023