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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alstom v. Nasrin Nastran

Case No. DIR2008-0001

 

1. The Parties

The Complainant is Alstom, Levalois Perret, of France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Nasrin Nastran, Tehran, Islamic Republic of Iran.

 

2. The Domain Name and Registrar

The disputed domain name <alstom.ir> (the “Domain Name”) is registered with IRNIC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 15, 2008, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On February 20, 2008, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2008. The Response was filed with the Center on March 9, 2008.

The Center appointed Warwick Smith as the sole panelist in this matter on March 17, 2008. 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

The Complainant is a large French corporation, which carries on business internationally in the fields of power generation and manufacture for the transport sector.

The Complainant is well-known in Iran where the Respondent is domiciled. It has undertaken a major power plant conversion project in that country, and in 1999 it won a large contract to provide diesel locomotive engines in Iran. In addition, it has won large contracts for the supply of gas turbines and associated equipment in Iran.

The Complainant is the owner of numerous ALSTOM trademarks around the world. Of particular relevance to this Complaint, the Complainant is the owner of the registered mark ALSTOM in Iran, under registration numbers 89031 (registration date November 25, 1978) and 92640 (registration date November 11, 1979).

According to the Complaint, ALSTOM has also been the Complainant’s company name since 1992.

According to the Registrar’s Response to the Center’s verification request, the Domain Name was created on October 11, 2007, and transferred to the Respondent on December 19, 2007. According to the Complaint, the Domain Name is “inactive” (the Complainant’s attempt on February 8, 2008 to access a website at the Domain Name was unsuccessful). The Panel’s own attempt to access any website at the Domain Name was also unsuccessful, as was an attempt made by the Center on February 25, 2008.

On January 25, 2008, the Complainant’s representative sent a cease and desist letter to the Respondent. The letter asserted the Complainant’s rights as owner of the ALSTOM mark, and alleged that the Respondent’s registration and use of the Domain Name constituted an infringement of the Complainant’s mark.

The Respondent replied by email dated January 27, 2008. The letter advised:

“We are an active company in the field of advertising in LV-MV-HV in Iran.

Newly, we are triggering an Ebusiness during electrical and industrial web portals, for big and famous brands in Iran under the name of webelec.ir.

Same as maybe you observing until now, for all brand’s name under our authority, spent a huge costs. As you can see in our website, famous brands like Fuji, LG, Schneider Electric, Rittal, Hyundai-Aiphone, etc, has been bought with different prices.

For example the Alstom.ir bought 1500 Euro from previous holder.

Anyhow, if your client is interested to be establish a competent base in Iran, we have complete capability to execute it perfectly here. Otherwise, we can transfer this domain to your client’s handle (if exist) with adaptive price.”

According to the Complaint, the Complainant tried to verify the information provided by the Respondent, but without success. The Complainant says that the domain name <webelec.ir> is registered by another person with a different address, and that the website at <webelec.ir> is in the Persian language. (A page from the website at “www.webelec.ir”, downloaded by the Complainant on February 6, 2008 was produced with the Complaint. The page features a picture of the globe, together with text which is substantially in foreign language script. However, above the foreign language text, there is an English-language heading: “Power Electric Position on IR Domains”.)

The Complainant’s representative sent a further email to the Respondent on January 29, 2008. The allegation of trademark infringement was repeated, but the email also included an inquiry as to the amount of money the Respondent would require to transfer the Domain Name to the Complainant. The Respondent replied by email on the same day, advising:

“The preceding agent of Alstom in Iran, want this domain 3800 Euro from us. If your offer is better than them, please inform us.”

The Complainant then commenced this proceeding under the Policy.

In his Response, the Respondent stated that Domain Name had been registered in order to introduce and explain the activities of the Complainant, and other famous international companies, in Iran, via a directory at “www.webelec.ir” which would specialize in the field of energy and power. The purpose of this directory was to inform Iranian experts and college students about power and energy. As the Respondent put it in the Response: “so for this goal should mentioned to all origins”. The Response asserted that the Respondent’s goal was to introduce the Complainant “with its brilliant past and activities in Iran beside of other big and famous companies”.

The Response appeared to envisage that the Complainant should be co-operating with the Respondent in the Respondent’s Persian language portal website venture, and (apparently for that purpose) the Respondent indicated that he would contact the Complainant and get “the supplementary information”. Later in the Response, however, the Respondent acknowledged that he had “faced to many problems & costs about the Alstom & other companies, so after the agreement for returning the principal, we will transfer it soon”.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is identical or confusingly similar to the Complainant’s ALSTOM mark.

2. The Respondent is not affiliated with the Complainant, and the Complainant has not authorized the Respondent to use and register the ALSTOM mark, or to seek registration of any domain name incorporating that mark.

3. The Respondent is not known under the name “Alstom”, or any similar term.

4. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent has never used the term “Alstom” in any way before or after the Complainant started in business.

5. The Respondent’s behavior is parasitic – although having registered a domain name which is identical to the Complainant’s mark, the Respondent seems to work for the Complainant’s competitors.

6. The Respondent’s reproduction of the well-known trademark ALSTOM evidences an obvious intent to misleadingly divert internet consumers. The fact that the Domain Name is identical to the Complainant’s famous mark means that the Respondent could not reasonably pretend that he was intending to develop a legitimate activity.

7. The notoriety of the Complainant’s ALSTOM mark has been recognized in two previous decisions of WIPO URDP Panels (Alstom v. Yulei, WIPO Case No. D2007-0424, and Alstom v. Cameron Jackson, WIPO Case No. D2007-1022). The Complainant is very well-known in Iran, where the Respondent is domiciled. Having regard to those facts, it is obvious that the Respondent knew or must have known of the trademark ALSTOM when he registered the Domain Name.

8. The Respondent’s knowledge of the Complainant’s trademark when he registered the Domain Name constitutes evidence of bad faith in the registration (citing Accor v. Eliah Zusstone, WIPO Case No. D2006-0362, Expedia Inc v. International Electronic Communications Inc, WIPO Case No. D2000-0137, and Document Technologies v. International Electronic Communications Inc, WIPO Case No. D2000-0270).

9. If the Respondent had undertaken a trademark search on the date of registration of the domain name, that search would have revealed the Complainant’s trademark registrations. A simple search on the internet would also have led the Respondent to find the Complainant (e.g. a search on the term “Alstom” through the search engine at <google.com>.

10. The Respondent has also used the Domain Name in bad faith. The Respondent’s advice that he had received an offer of 3800 Euros for the Domain Name (which was not supported by any corroborating evidence) made it clear that, in order to obtain a transfer of the Domain Name, the Complainant would have to offer a higher price. The amount of 3,800 Euros is obviously excessive having regard to registration costs the Respondent would likely have incurred.

B. Respondent

The Respondent contends:

1. The Complainant has not adequately explained why it did not check earlier on the availability of the Domain Name for registration.

2. There is no reliable evidence that the Domain Name is inactive.

3. IRNIC began to accept domain name registrations for “special real or legal persons” from 1994. Registrations for the public were only available from 2002 – 2003.

4. According to UDRP policies in ICANN, if a person or a company has delayed to register a specified domain name for 2 years, that person could not proceed to register it, especially if that Domain Name was in a specific country code TLD. According to the IRNIC rules in Iran, each Iranian can have at least one national TLD registration. The Respondent proceeded according to those rules.

5. The Domain Name was registered for the purpose of introducing and explaining the activities of the Complainant in Iran, in the Persian language. The intention was to do that through a directory site established at “www.webelec.ir”, so that all Iranian experts and college students interested in the power and energy fields, would have a portal site where they could locate various power and energy sources and suppliers.

6. However, the Respondent has encountered too many problems and costs with the above-described project (with both the Complainant and other companies). The Respondent is therefore prepared to transfer the Domain Name to the Complainant in exchange for a return of “the principal”.

 

6. Discussion and Findings

A. General Principles under the Policy

Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered or is being used in bad faith.

Paragraph 15(a) of the Rules requires the Panel to:

“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

B. Identical or Confusingly Similar

The Complainant has proved this part of the Complaint. It has proved that it is the registered proprietor of the mark ALSTOM in the Islamic Republic of Iran, with effect from 1978 (registration number 89031) and 1979 (registration number 92640). The registrations in Iran are not registrations of ALSTOM as a word mark. Registration number 89031 contains a stylized letter “O” within the expression “ALSTOM”, and registration number 92640 consists of the word ALSTOM appearing immediately above the same stylized, or figurative, letter “O”.

The minor differences relating to the stylized nature of the letter “O” make no significant difference when one compares the Complainant’s Iran-registered ALSTOM marks with the Domain Name. By far the most dominant part of the Complainant’s registered marks is the expression “Alstom”, and of course that expression is identical to the Domain Name. (It is well established by prior panel decision that TLD suffixes, such as the “.ir” suffix are not taken into account in the comparison).

The Panel concludes that the Domain Name is confusingly similar to the ALSTOM registered marks in which the Complainant has rights.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(1) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(2) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(3) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.

That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:

“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”

Paragraphs 4(a)(ii) and 4(c) of the Uniform Domain Name Dispute Resolution Policy (“the UDRP”) are identical in material respects to Paragraphs 4(a)(ii) and 4(c) of the Policy. The Panel therefore considers it appropriate to apply the same burden of proof as is set out in the extract from the Center’s online document quoted above. (That approach was recently adopted by this Panel in MIP Metro Group Intellectual Property GmbH & Co KG v. Masoud Ziaie Moayyed; WIPO Case No. DIR2007-0005).

There is no suggestion that the Respondent in this case is commonly known by the Domain Name, or that some business operated by the Respondent is so known. Therefore, the Respondent could not claim any right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The Domain Name is confusingly similar to the Complainant’s ALSTOM mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. In combination, those circumstances are sufficient for the Complainant to establish a prima facie case that the Respondent has no right or legitimate interest in the Domain Name. The evidential burden therefore shifts to the Respondent to persuade the Panel that he has some right or legitimate interest in the Domain Name.

The Respondent has failed to provide any sufficient proof of a right or legitimate interest.

Looking first at paragraph 4(c)(1) of the Policy, the Respondent must have had notice of the dispute by January 25, 2008 at latest, when the Complainant’s representative sent the cease and desist letter. There is no satisfactory evidence of the Respondent having used the Domain Name, or made demonstrable preparations to do so, before that date. The Complainant says in the Complaint that the Domain Name is inactive, and that appears to be correct. As far as the Panel can see, the Domain Name does not presently resolve to any active website. (It is not enough for the Respondent to simply challenge the Complainant’s proof that the Domain Name is inactive – if he is in fact making some use of the Domain Name, the evidentiary onus is on the Respondent to come forward with evidence showing the nature of that use. He has elected not to do that.) The Respondent refers to various plans to link the Domain Name to the portal website at “www.webelec.ir”, but no such linkage appears to have been effected, and it appears from the Response that the Respondent is not now proceeding with his proposed portal site. Nor is there anything in the evidence to persuade the Panel that the Respondent had made some “demonstrable preparations” to use the Domain Name in connection with a bona fide offering of goods or services, before January 25, 2008. According to the Registrar, the Respondent only acquired the Domain Name on December 19, 2007, and there is no evidence that the Respondent actually did anything (with respect to the Domain Name) between that date and January 25, 2008. Even if the Respondent had it in his mind to link the Domain Name to the proposed portal site at “www.webelec.ir”, a mere idea or intention to use a domain name in a particular way would fall well short of the making of “demonstrable preparations” to use the domain name. The Respondent has therefore failed to establish any right or legitimate interest under paragraph 4(c)(1) of the Policy.

Nor has the Respondent made out a case for a right or legitimate interest under paragraph 4(c)(3) of the Policy. The Respondent has not explained why he was planning to set up the directory/portal site for the benefit of Iranian engineers, technicians, and college students. If he intended the site to operate on a “not-for-profit” basis, the Panel would have expected him to say so in his Response (and also explain the reason for his decision to act purely in the interests of persons other than himself). The reference in the Respondent’s email dated January 27, 2008 to “triggering an Ebusiness”, suggests that the Respondent had in mind a commercial venture, with revenue presumably to be derived from advertisers at the directory website. If that is right, the Respondent would not have been making a “non commercial” use of the Domain Name “without intent for commercial gain”, within the meaning of paragraph 4(c)(3) of the Policy.

In any event, the Panel is not persuaded that the Respondent’s stated intention for the use of the Domain Name, would have constituted a fair, legitimate, or bona fide use. It is perfectly clear from the Response that the Respondent was well aware of the Complainant and its ALSTOM mark, and it is apparent (from the Complainant’s significant commercial activities in Iran) that a significant number of internet users in that country would also have been familiar with the Complainant. A significant number of those would undoubtedly have assumed that a website at the Domain Name would be a website associated with the Complainant. The Respondent must have appreciated that fact, and if he did, the only sensible inference is that his intention was to exploit the fame of the Complainant’s mark in order to attract a greater volume of internet traffic to a website at the Domain Name. The Respondent says that that website would have been a website featuring other famous companies in the energy field, as well as the Complainant. It is well settled under the UDRP that pointing a domain name which incorporates in full someone else’s trademark, to a website through which products of the trademark owner’s competitors are being advertised or promoted, cannot constitute a bona fide, fair, or legitimate use of that domain name – see for example the Panel decision in Shahnaz Husain v Saxena Dinesh O, WIPO Case No. D2006-1132, and the cases cited by the Panel in that decision.

For the foregoing reasons, the Complainant has sufficiently proved that the Respondent has no right or legitimate interest in the Domain Name.

D. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Unlike the corresponding provision in the UDRP, a complainant under the Policy need only prove one or other of bad faith registration or bad faith use by the respondent – the complainant does not have to prove both.

The Panel is satisfied that the Complainant has also proved this part of the Complaint. The Panel has come to that view for the following reasons:

1. The Domain Name is confusingly similar to the Complainant’s ALSTOM mark, and the Complainant did not authorize the Respondent to use that mark (or any mark confusingly similar thereto), whether in a domain name or otherwise.

2. The Respondent does not himself have any trademark or other rights in any name or mark corresponding to the Domain Name.

3. The Respondent has not used the Domain Name by linking it to any active website.

4. The Respondent was well aware of the Complainant and its ALSTOM mark when he acquired the Domain Name on December 19, 2007. He acknowledges as much in the Response, (he says that his intention was to introduce the Complainant “with its brilliant past and activities in Iran” to Iranian experts and college students).

5. The Respondent’s intention was apparently to introduce not just the Complainant and its products and services at the directory website – other famous companies, also operating in the energy field, would also be “introduced” through the directory website. In other words, an internet user in Iran who came across the Domain Name and assumed that it would resolve to a website associated with the Complainant, would in fact be taken to a website featuring not just the Complainant and its products, but also competitors of the Complainant and their products and services. That could never be a good faith use of a domain name, for the same reason that it could not be a bona fide, fair, or legitimate use (see Shahnaz Husain v. Saxena Dinesh O, referred to above).

6. In the Panel’s view, the Respondent must have known when he registered the Domain Name that he could not use the Complainant’s well-known trademark in Iran. Either his intention was to make a profit by selling the Domain Name to the Complainant (the example of bad faith registration described at paragraph 4(b)(i) of the Policy), or he intended to exploit likely confusion between the Domain Name and the Complainant’s trademark in order to attract a larger number of internet visitors to his directory website, with the objective of commercial gain (in which case the Respondent would be caught by paragraph 4(b)(iv) of the Policy). In either event, the acquisition of the Domain Name by the Respondent must qualify as a bad faith registration under paragraph 4(a)(iii) of the Policy.

7. Of the two examples of bad faith registration referred to in paragraph 6D(6) of this decision, it seems to the Panel to be more likely that the Respondent acquired the Domain Name for the (bad faith) purpose of selling it at a profit to the Complainant (or to a competitor of the Complainant). As early as January 27, 2008, only a little over a month after he acquired the Domain Name, the Respondent indicated that he would be prepared to sell to the Complainant’s “handle” (presumably a reference to the Complainant’s local Iranian agent, or “handler”), at an “adaptive price”. The Respondent said in his email of January 27, 2008, that he had bought the Domain Name from the previous holder for 1,500 Euros, and on January 29, 2008, he claimed that “the preceding agent of Alstom in Iran” wanted the Domain Name for 3,800 Euros. The Respondent went on to say: “If your offer is better than them, please inform us”. It appears from those emails that the Respondent probably had in mind on-selling the Domain Name at the time he acquired it. The only likely legitimate purchaser at that time would have been the Complainant, and there would have been no point in the Respondent acquiring the Domain Name in the first place if he did not intend to make a profit on the on-sale. That is, of course, the very kind of bad faith registration which is described at paragraph 4(b)(1) of the Policy.

8. Other considerations which also appear to point to that conclusion are:

(i) there does not appear to be any apparent connection between the Respondent and the owner of the website at “www.webelec.ir”. The Complainant pointed this fact out in the Complaint, and it was something which obviously called for an explanation from the Respondent. No such explanation was forthcoming; and

(ii) the Respondent has provided no evidence about the alleged 3,800 Euros offer from “the preceding agent of Alstom in Iran”. If it was made, how did that offer come about? Did the Respondent approach the “preceding agent” to sell, and if so, how could that have been consistent with the Respondent’s stated intentions for the Domain Name (linkage to an energy-information portal site)? Why did the “preceding agent” think the Domain Name was for sale? Those questions should have been addressed, and answers provided, by the Respondent.

9. For completeness, the Panel refers to the Respondent’s submission that if a person or company has delayed registering a domain name in the .ir space for 2 years, the person or company is thereafter precluded from registering that domain name. If such a provision existed, one would have expected to see reference to it as a specific ground of defence in either the Policy or the Rules. The Panel has not noted any such provision. On the other hand, paragraph 2 of the Policy provides that anyone applying to register a domain name in the .ir space assumes the responsibility to ensure that the registration will not infringe any trademark rights of third parties. The Respondent appears to have paid little heed to that obligation.

The Complainant having proved all of the matters required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.

 

7. Decision

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 <alstom.ir> be transferred to the Complainant.

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Warwick Smith
Sole Panelist

Dated: March 31, 2008