WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ABB Asea Brown Boveri Ltd. v. Texas International Property Associates Case No. D2009-0873 1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd. of Zurich, Switzerland, represented internally.
The Respondent is Texas International Property Associates of Dallas, Texas, United States of America represented by Rohstein Rosenfeldt Adler, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2009. On July 1, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On July 2, 2009, Compana LLC 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 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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. The Response was filed with the Center on July 28, 2009.
The Center appointed Simon Minahan 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. 4. Factual Background
The Complainant is an arm of a large international power and automation technologies conglomerate operating in more than 100 countries and turning over billions of US dollars per annum. It has world-wide corporate, trade mark and domain name registrations involving the letters “ABB” which it has used and by which it is and has been known for many years. It has established as much in numerous UDRP proceedings previously. 5. Parties' Contentions A. Complainant
The Complainant contended and proffered extensive evidence as to its trade mark interest in the ABB mark, including evidence of numerous trade mark and domain name registrations incorporating the letters “ABB” and numerous decisions under the UDRP accepting its interest in that mark.
It otherwise contended that:
(a) the disputed domain name is deceptively similar or identical to its ABB mark
(b) the Respondent had no rights or legitimate interests in the domain name
(c) it registered and uses the domain name in bad faith.
However, in view of the Response in this matter, discussed below, the Panel considers it need not detail or consider these contentions further in disposing of this matter. B. Respondent
The Respondent, without admission of the Complainant's contentions referable to Paragraph 4(a) of the UDRP, consents to the transfer of the domain name as requested by the Complainant and requests that the Panel order the transfer immediately. It contends that being satisfied that the Respondent's consent is genuine should adopt the course followed by panels in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005–1132 (January 5, 2006) and Citigroup Inc v. Texas International Property Associates, NAF Claim No. 01210904 (Nat. Arb. Forum August 5, 2008) and adopt a judicially expedient approach, proceeding to order the transfer without consideration of the merits of allegations against the Respondent. 6. Discussion and Findings
The Panel accepts the Respondent's contention that its consent to transfer renders the process of determining the stipulated Paragraph 4(a) UDRP contentions unnecessary, save that in the Panel's view it should confirm that the Complainant has a trade or service mark which is identical or confusingly similar to the disputed domain name. In the Panel's view the establishment of an appropriate trade mark interest in the Complainant is a foundation issue for the exercise of power to order a transfer.
In this regard the Panel finds that the Complainant has extensive registered and unregistered trade mark interest in the ABB mark and notes previous panel decisions to this effect e.g.: ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215, and ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466. Further the Panel finds that the ABB mark bears close similarity to the disputed domain name .
While the terms of the consent – being without admission of the stipulated Paragraph 4(a) UDRP contentions which ordinarily found the Panel's jurisdiction to order transfer – may raise a technical question about the basis on which the Panel can proceed under the UDRP, in the Panel's view this concern is illusory.
The contentions stipulated under the UDRP the Panel are mandated by contract for situations of dispute between the parties. The Respondent's consent neutralizes any dispute between the parties, rendering it moot, notwithstanding that the Respondent does not admit the balance of the Paragraph 4(a) UDRP contentions. While there may have been dispute (real or perceived) when the proceeding was commenced, it has been resolved. Further the Complainant was not obliged to commence the proceeding and in doing so invokes a contractual obligation pertaining to the Respondent arising from the registration of the domain name. In those circumstances it must be open to the parties to resolve the matter by agreement. Finally the Panel notes the exhortation for “due expedition” at Paragraph 10(c) of the UDRP.
Bearing in mind these matters and the dictates of common sense, the Panel will therefore proceed to order transfer as requested by both parties. 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, be transferred to the Complainant.
Simon Minahan
Sole Panelist
Dated: August 19, 2009
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