Alstom v Privacy service provided by Withheld for Privacy ehf /

WIPO Case No. D2022-2423

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ALSTOM v. Privacy service provided by Withheld for Privacy ehf /
Bless Job, Edge Group

Case No. D2022-2423

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Bless Job, Edge Group,

United Kingdom.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2022. connection with the disputed domain name. On July 5, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 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 July 8, 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 July 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2022.

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The Center appointed Alfred Meijboom as the sole panelist in this matter on August 10, 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

established in 1928, and currently employs 36,000 professionals in more than 60 countries, including the	The Complainant is a French power generation and transmission, and rail infrastructure company, which was which uses “Alstom” as part of their respective trade names, which together form the “Alstom” group.
The Complainant holds trademark registrations for the term “Alstom” in many jurisdictions around the world, for may different goods and services, including the following:
-	France trademark registration with number 98727757 of April 10, 1998;
-	International trademark registration with number 706292 of August 28, 1998;
-	European Union trademark registration with number 948729 of August 8, 2001;
-	United Kingdom trademark registration with number UK00900948729 of August 8, 2001; and
-	United States of America trademark with registration number 4570546 of July 22, 2014;

(collectievely the “ALSTOM mark”).

In addition, the Complainant also owns many domain names, including <alstom.com> and
<alstomgroup.com>. The domain name <alstomgroup.com> was registered in 2000, and is used for email
addresses of all employees of the Complainant’s group of companies.

The disputed domain name was registered on August 12, 2021, and does not resolve to an active website except for the message “This site can’t be reached; [the] server IP address could not be found”.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the ALSTOM mark, which the disputed domain name wholly incorporates, whereas the denominations “group” and “inc”, as part of the disputed domain name, will be directly perceived by Internet users as referring to the Complainant’s group of companies.

According to the Complainant the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has failed to prove such rights or interests, the Respondent is not affiliated in any way to the Complainant, and the Complainant has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating the ALSTOM mark. The Complainant further asserts that the Respondent has not applied for or obtained any trademark registrations related to the term “Alstom” and is not commonly known under the name “Alstom”.

The Complainant contends that the Respondent registered the disputed domain name in bad faith because it imitates the ALSTOM trademarks, and was acquired long after the ALSTOM marks became well-known. According to the Complainant, in view of the ALSTOM mark having a reputation, it is virtually impossible that the Respondent was not aware of the Complainant’s activities, at the time of registration of the disputed domain name.

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Further, the Complainant alleges that the Respondent is using the disputed domain name in bad faith as the disputed domain name resolves to an inactive webpage and is not used in relation to any genuine activities, while the Respondent did not reply to the Complainant’s demand letters and reminders, and moreover

attempted to conceal its identity by registering the disputed domain name via an anonymization company
and by using false contact information as the Respondent reproduced the Edge Group’s postal address, but
changed the email address and telephone number.

The Complainant concludes that the registration and use of the disputed domain name take unfair advantage of the reputation of the ALSTOM mark and the disputed domain name was clearly intentionally registered to attempt to attract Internet users, by creating a likelihood of confusion with the ALSTOM mark, which registration is detrimental because Internet users will easily confuse the disputed domain name with the ALSTOM mark and possibly even with the Complainant’s domain name, which will result in confusion as to who operates under the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that a respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

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

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the ALSTOM mark.

It is well established that the generic Top-Level Domain (“gTLD”) “.com” may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the ALSTOM mark in its entirety, and the addition of the terms “group” and “inc” do not prevent a finding of confusing similarity between the disputed domain name and the ALSTOM mark.

Consequently, the first element of paragraph 4(a) of the Policy is met.

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B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in
the disputed domain name, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern
Empire Internet Ltd., WIPO Case No. D2003-0455).

prima facie case, calling for an answer from the Respondent. The Respondent has, however, not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the intentionally confusingly similar disputed domain name. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has contended that the Respondent is not commonly known in connection with the domain name which naturally leads to an inference of connection with the Complainant. The Panel finds that the Complainant has made out a

disputed domain name and was not licensed or otherwise authorized by the Complainant to use the

C. Registered and Used in Bad Faith

Many previous panels have found the ALSTOM mark to be well-known (recently for instance Alstom v.
Registration Private, Domains By Proxy, LLC / maycol novoa, WIPO Case No. D2021-4184; Alstom v. ben
wang, wang ben, WIPO Case No. D2022-0756), and the Panel in the current dispute has no reason to doubt
such finding of the ALSTOM mark being well-known. The fact that the Respondent has included the well-
known ALSTOM mark in its entirety, and has added the terms “group” and “inc” in the creation of the
disputed domain name, while the Complainant owns and has been using the domain name
<alstomgroup.com> intensively, leads the Panel to believe that the Respondent was or must have been
aware of the ALSTOM mark and the specific use made by the Complainant of its <alstomgroup.com>
domain name when registering the disputed domain name. The Panel is therefore satisfied that the disputed
domain name was registered in bad faith.

The Complainant must also prove that the Respondent uses the disputed domain name in bad faith. Under the circumstances at hand, the Panel finds that the passive holding of the disputed domain name constitutes use in bad faith. Section 3.3 of the WIPO Overview 3.0 states the following on this issue:

“From the inception of the UDRP, panelists 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.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

In this case, the Panel concludes that the following cumulative circumstances are indicative of the Respondent’s passive holding pf the disputed domain name in bad faith: (i) the fact that the ALSTOM mark is well-known, and that the Respondent is found to have likely had the ALSTOM mark in mind when it registered the disputed domain name; (ii) the similarity between the intensively used domain name <alstomgroup.com> of the Complainant and the disputed domain name; (iii) the lack of a response from the Respondent to the Complainant’s demand letters and reminders; (iv) the lack of a Response in the current procedure; (v) the undisputed fact that the Respondent provided fake contact information and likely used a fake identity; and (vi) the use of a privacy service in an attempt to conceal its identity.

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The Panel therefore finds that the Complainant has also satisfied the third and final requirement of paragraph 4(a) 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 <alstomgroupinc.com> be transferred to the Complainant.

/Alfred Meijboom/
Alfred Meijboom
Sole Panelist
Date: August 19, 2022