Complainant is Alstom of Levallois Perret, France, represented by Dreyfus & associés, Paris, France.
Respondent is Itete Peru S.A. of Lima, Peru.
The disputed domain name <power-alstom.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2009. On July 2, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 2, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2009.
The Center appointed Mark Partridge as the sole panelist in this matter on August 14, 2009. 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.
Complainant is a global leader in power generation and rail transport infrastructure providing services worldwide, including in Peru. Complainant is the owner of numerous international trademark registrations for the mark ALSTOM, alone and with other matter, dating as early as 1998. Included in its registration portfolio are numerous registrations issued in Peru for various goods and services dating as early as 1999. Complainant also operates via the Internet using various domain names including <alstom.com>, <alstompower.com> and others.
The disputed domain name was registered on August 15, 2000. In 2007, Complainant sent demand letters to the registrant, but has received no reply. The domain name is not active.
Complainant contends that the domain name is confusingly similar to its trademark; that the Respondent has no right or legitimate interest in the domain name; and that the Respondent is acting in bad faith by registering and maintaining the domain name.
Respondent did not reply to Complainant's contentions.
The disputed domain name incorporates Complainant's widely known registered trademark ALSTOM with a descriptive term that aptly identifies principal services of Complainant. It is well-settled that the addition of either “.com” or apt descriptive terms is insufficient to avoid a find of confusingly similarly.
The Panel therefore finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Complainant asserts that Respondent lacks any right or legitimate interest in the domain name because Respondent is not authorized by Complainant to use ALSTOM, is not known by that name, and does not make any bona fide use of the disputed domain name.
Complainant has the burden of proving each elements of its claim, and is thus in a tricky position with respect to this element as Respondent has not responded. Generally speaking, once a complainant makes a prima facie showing based on available evidence, the respondent must come forward with contrary evidence. The consensus position on this point is well-stated in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110:
“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complaint in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”
In addition, the Panel should consider the effect of Respondent's default. Paragraph 14 of the Rules states:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
When applying this provision, panelists have generally concluded that the respondent's default does not automatically result in a decision in favor of the complainant. Nevertheless, a panel may draw negative inferences from the respondent's default, paragraph 4 of the UDRP, particularly with respect to those issues uniquely in the knowledge and possession of the respondent.
In this case we are dealing with an unusual name connected with a specific industry. The record is devoid of any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name. Giving consideration to the principles stated above, the Panel therefore concludes that Complainant has satisfied its burden on this element of its claim.
Under the Policy, Complainant has the burden of proving that the disputed domain name was registered and used in bad faith. Complainant acknowledges that the domain name is not active, and that there is no indication or evidence that Respondent has sought to sell the domain name for profit; that Respondent engaged in a pattern of conduct to prevent Complainant from using its mark as a domain name; that Respondent is seeking to disrupt the business of a competitor; or that Respondent is deliberately seeking to profit from the confusion of Internet users – the circumstances given in the Policy as evidence of bad faith registration and use of a domain name.
The disputed domain name has been registered and apparently inactive since 2000. Some decisions have concluded that the passage of time does not prevent a request for relief under the Policy. As stated in Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods, WIPO Case No. D2008-0832:
“Ordinarily, the length of time which has elapsed between the registration of the disputed domain name and the bringing of the Complaint may have been a cause of concern as, in some cases, delay has been considered to be a waiver of rights. However, the Panel adopts the reasoning of the panels in Dire Straits (Overseas) Limited v. Alberta Hot Rods, WIPO Case No. D2007-0778 and Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560. The Respondent has not suffered from the delay and the delay does not impact on the Complainants' right to obtain relief.”
There is no indication that Respondent here suffers any prejudice from the delay in taking action. This is not a case where a complainant sits idly by before objecting while an unsuspecting respondent builds a valuable business.
It is also easy to conclude that Respondent registered the domain name in bad faith. The combination of “power” and “alstom” seems uniquely connected with Complainant, and there is no apparent plausible basis for innocent adoption of the name by Respondent. Given the renown of Complainant, and its activities throughout the world, including Peru, it certainly appears more likely than not that Respondent registered the domain name to exploit a connection with Complainant.
The more difficult issue is whether Respondent has used the domain name in bad faith. Complainant argues as follows:
Since the domain name is not currently used, the relevant issue in this matter is not whether Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, on all the circumstances of the case, it can be said that Respondent is acting in bad faith.
The distinction between undertaking a positive action in bad faith and acting in bad faith is important. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to a positive action; inaction is enmeshed within this concept, it is the other side of the coin. It means that, in certain circumstances, inactivity is considered as being passive holding of the domain name, and therefore it amounts to the domain name being used in bad faith.
A leading early decision on this point is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 which states:
“The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith.
The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) the Complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
In light of these particular circumstances, the Administrative Panel concludes that the Respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name 'is being used in bad faith' by Respondent.”
In the present case, Complainant has shown that it has a mark that is widely known and widely registered throughout the world, including in Peru where Respondent appears to be located. The combination of “power” and “alstom” seems to be uniquely connected with Complainant. Respondent has not responded to notice of this action or to any prior attempts at contact by Complainant, which would not normally be the case if Respondent had a legitimate basis for registering and using the domain name. The domain name has not been used for any legitimate reason even though many years have passed since it was first registered. Under these circumstances, it appears more likely than not that Respondent's passive holding of the domain name constitutes bad faith use of the domain name in violation of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <power-alstom.com> be transferred to the Complainant.
Dated: August 27, 2009