Recent Case Notes & Commentary

Targeting Two Trademarks is as Bad as One

Alstom v. New Ventures Services, Corp.

WIPO Case No. D2019-1802

September 20, 2019


Alstom is a French company operating in the transport industry. It owns several Alstom-related domain names and trademarks including several in the United States – the home of the Respondent, New Venture Services.

Alstom is key player in the global rail transport industry

The domain name <alstomgec.com> incorporates the ALSTOM trademark in its entirety combined with the GEC (General Electric Company) trademark – a company which Alstrom has worked with in multiple joint ventures. Adding the two trademarks together in this way does nothing to diminish the fact that the domain name is confusingly similar to both marks. This has been the prevailing approach taken by panels when answering the question of confusing similarity if multiple trademarks are included in the name. In other words, using two at a time is no better for the Respondent than using only one (see section 1.12 of the WIPO Jurisprudential Overview 3.0).


In regard to having legitimate interests in the use of a domain name, this decision also shows us that acquiring a domain name for the purpose of running a pay per click (PPC) website does not amount to a bona fide offering of a good or service especially where links to competitor websites are included as was the case here.


The panel also interpreted the inclusion of the two related trademarks to be an indication that “Respondent was fully aware of Complainant and its ALSTOM trademark” and that “there is no other plausible explanation…as to why the Respondent needed to rely on these two trademarks combined in one domain name”. This clearly showed bad faith registration and use, as did the fact that the Respondent registered false WhoIs contact information and the fact that by the time of the decision, the disputed domain name did not resolve to an active website.