The Complainant is ABB Asea Brown Boveri Ltd. of Baden, Switzerland, represented by Zimmerli, Wagner & Partner AG of Switzerland.
The Respondent is PrivacyP of Moergestel, Netherlands. As noted in Section 3, below, the Registrar identified Venkateshwara Distributor Private Limited of Mumbai, India as the owner of the disputed domain name. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2010. On September 28, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On September 29, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 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 Registrar stated that its records indicated that the disputed domain name was registered to Venkateshwara Distributor Private Limited of Mumbai, India (“Venkateshwara”). The Center sent an email communication to the Complainant on October 7, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined to amend the Complaint in an e-mail communication received by the Center on October 11, 2010. The Panel finds that the Center’s invitation was precisely that, and that there was no obligation of Complainant to amend under the Policy or Rules, which means that the declination of the Complainant to amend did not render the Complaint deficient. The Panel has not requested the Complainant to add Venkateshwar to the Complaint.
The Panel will follow Research In Motion Limited v. PrivacyP / Pluto Domain Services Private Limited,WIPO Case No. D2009-0324, and thus will honor Complainant's election to proceed against (the privacy service) PrivacyP. According to Research In Motion Limited, “a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration.” In Motion Limited, supra. at p. 5 citing F. Hoffmann-La Roche AG v. PrivacyP; Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum,WIPO Case No. D2006-0881.
It must be noted that the Center carefully notified both PrivacyP and Venkateshwara. The Panel would also have analyzed a response from Venkateshwara, if any had been submitted, and regards Venkateshwara at least as an appropriate substantive Respondent. Both PrivacyP and Venkateshwara decided not to respond. The Panel finds that here, the dispute resolution procedure was carried out according to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
The Center verified that the Complaint satisfied the formal requirements of the 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 October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2010.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 12, 2010. 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 the owner, amongst others, of the following trademark registrations (Annex E to the Complaint):
TRADEMARK
REG. No.
Class
(Int’l)
DATE OF REGISTRATION
COUNTRY
ABB (AND DESIGN)
P-360.303
1, 6, 7, 9, 10, 11, 12, 14, 16 and 17.
January 27, 1998
Switzerland
ABB
P-360.773
1, 6, 7, 9, 10, 11, 12, 14, 16 and 17.
February 16, 1988
Switzerland
ABB (AND DESIGN)
527.479
1, 6, 7, 8, 9, 10, 11, 12, 14, 16 and 17.
April 7, 1988
International Registration
ABB
527.480
1, 6, 7, 8, 9, 10, 11, 12, 14, 16 and 17.
February 16, 1988
International Registration
The disputed domain name was registered on October 12, 2007. 5. Parties’ Contentions A. Complainant
The Complainant argued the following:
- That ABB Asea Brown Boveri Ltd was established on January 4, 1998, as a result of a merger between the Swedish ASEA AB and the Swiss BBC Brown Boveri AG (Annex D to the Complaint).
-. That the Complainant is known under the abbreviation ABB, which is used to identify companies belonging to ABB Group.
- That the Complainant is one of the largest global players in the market for electric power generation, transmission and distribution, industrial and building systems.
- That the Complainant is a world-leading supplier of industrial robots, modular manufacturing systems and service operating in 48 countries and in over 100 locations around the world.
- That over 175,000 ABB robotic components have been installed worldwide.
- That the first ABB electric robot was introduced in 1974.
- That the Complainant’s companies have operations in around 100 countries and employed 117,000 people in 2009.
- That simultaneously with the foundation of the Complainant’s company, a worldwide trademark protection for the ABB company name was started. Therefore, today the Complainant is the owner of numerous registrations for the trademark ABB in Switzerland and all major countries worldwide.
- That the Complainant’s earliest trademark registrations date back to 1988.
- That the Complainant has used the company name ABB and various trademarks containing the world ABB since at least as early as 1988 in connection with the goods and services previously mentioned.
- That numerous panels have found that the Complainant has established that ABB is a well-recognized trademark and that the trademark is distinctive and famous.
- That the Complainant’s policy is to take the appropriate legal action when a domain name owner benefits in bad faith from ABB´s costly building up of its goodwill and reputation, symbolized by the trademark and trade name ABB, and when the domain name is likely to disparage ABB´s goodwill and reputation.
- That the Complainant and its affiliates are the owners of more than 300 domain name registrations containing the trademark ABB, such as , , and .
- That the Complainant has successfully secured the transfer of several domain names pursuant to UDRP complaints.
- That the Complainant sent a cease and desist letter to the Respondent dated on May 18, 2010, but that no reply was received (Annex F to the Complaint). i. Identical or Confusingly Similar
- That the Complainant’s ABB trademark has no descriptive significance to the goods or services offered under it and through long period of exclusive use, the trademark has become distinctive of the Complainant and the ABB group of companies.
- That the disputed domain name contains the Complainant´s trademark ABB in its entirety, with the added term “robotics” separated by a hyphen, and the suffix “.com”
- That when determining the confusing similiartity between a domain name and a trademark, the gTLDs and ccTLDs shall be disregarded.
- That the term ABB is the distinctive part of the disputed domain name.
- That the addition of the term “robotics” does not diminish the similarity between the disputed domain name and the Complainant´s trademark.
- That the use of the term “robotics” makes confusing similarity even more likely since that term refers to the Complainant’s core field of activities.
- That the term “abb-robotics” is recognized by the Complainant´s customers not only as the disputed domain name but also as an identification for one of the Complainant´s divisions and for its products, systems and services.
- That the confusion created by the disputed domain name is further heightened by the fact that the Complainant is the registered owner of the domain name .
- That Internet users will be led to perceive that there is some kind of commercial relationship between the Respondent, the disputed domain name and the Complainant.
- That taking into consideration the reputation of the Complainant´s trademark and the distinctive character of the ABB term, the dominant component of the disputed domain name, the visual, aural and conceptual similarities between them, the disputed domain name is therefore confusingly similar to a trademark in which the Complainant has exclusive rights. ii. Rights or Legitimate Interests
- That the Complainant has not found that the Respondent owns any registered trademarks or trade names corresponding to the domain name in dispute or has been commonly known by the disputed domain name.
- That the Complainant has no connection or affiliation with the Respondent.
- That the Complainant has never licensed, authorized or otherwise permitted the Respondent, explicitly or implicitly, to use the Complainant´s trademarks in a domain name or in any other manner.
- That the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
- That the Respondent has intentionally chosen the disputed domain name based on the Complainant´s registered trademark in order to generate traffic to a website and through this procedure generate income through sponsored links, including links to the auction site eB, amongst others.
- That the Respondent’s activities do not correspond to any of the circumstances set forth in Paragraph 4(c) of the Policy that would evidence any rights or legitimate interests with respect to the disputed domain name. iii. Registered and Used in Bad Faith
- That the Complainant has good reasons to believe that the Respondent had or should have had actual knowledge of the Complainant´s trademark and activities when it registered the domain name.
- That the disputed domain name currently is connected to a website containing sponsored links and click-through advertising.
- That links connected to the website eB display ongoing auctions of the Complainant´s ABB robotics.
- That the Respondent is clearly using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant´s trademarks as to the source, sponsorship, affiliation or endorsement of the websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name, and
(iii) The disputed domain name has been registered and is being used in bad faith.
In a UDRP proceeding, the complainants must prove that each of these elements has been met.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint. Allianz, Compañía de Seguros y Reaseguros, S.A. v. John Michael, WIPO Case No. D2009-0942. A. Identical or Confusingly Similar
The Complainant is the owner of the trademark ABB and other trademarks incorporating the term ABB, in combination with other elements, in several jurisdictions,
Said trademark, ABB, is entirely incorporated in the disputed domain name . The addition of the generic term “robotics” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademarks, but rather creates an even greater likelihood of confusion, since such word refers to one of the Complainant´s core field of activities. See Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; International Business Machine Corporation v. Scott banner, WIPO Case No. D2008-0965; and TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361.
The addition of a hyphen between the terms “abb” and “robotics” does not avoid the confusing similarity between the disputed domain name and the Complainant´s trademarks. See National Football League v. Online Marketing International also known as International Marketing Group, WIPO Case No. 2008-2006; see also Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman, WIPO Case No. D2004-0627.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Diageo Brands B.V., Diageo North America, Inc., and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman, supra. .
Therefore this Panel finds that the disputed domain name is confusingly similar to the Complainant´s trademark ABB. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c) the following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Respondent has not submitted evidence showing its preparations to use the disputed domain name with a bona fide offering of goods or services, nor has the Respondent proven that it has been commonly known as , or that it is making a legitimate noncommercial or fair use of the disputed domain name.
Based on the evidence filed by the Complainant, this Panel finds that the Respondent has no connection or affiliation with the Complainant and that the Respondent has not been authorized to use the Complainant´s trademarks. The Respondent is not using the disputed domain name to sell its own products or services, but rather diverts Internet users to websites where competitors of the Complainant offer goods and services similar to those of the Complainant. This use cannot be considered to be legitimate or fair.
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name . The second requirement of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that the Respondent must have been aware, at the time of the registration of the disputed domain name, of the exclusive rights held by the Complainant regarding its ABB trademark registration. The Complainant is well-known due to the recognized reputation of the ABB products and services worldwide.
It appears to the Panel that the Respondent is using the disputed domain name, which entirely incorporates the Complainant´s trademark in order to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark, ABB, as to the source, sponsorship, affiliation or endorsement of said site, and the goods and services offered in it. This conduct falls within the scope of Paragraph 4(b)(iv) of the Policy and constitutes bad faith. See Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556; and Aktiebolaget Electrolux v. Domains by Proxy,Inc., DomainsByP,/My Co Dean, WIPO Case No. D2010-0135.
This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Dated: November 28, 2010
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