The Complainant is ABB Asea Brown Boveri Ltd. of Zürich, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Toni Woods of Arvada, Colorado, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2014, the Registrar 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 September 19, 2014. On October 2, 2014, the Center received a Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the parties that it would be forward to the Panel, once appointed, who would have the discretion to accept or reject it. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2014.
The Center appointed Cherise Valles as the sole panelist in this matter on October 29, 2014. 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.
The Panel, using its discretion under paragraphs 10 and 12 of the Rules, has decided to accept the Complainant’s Supplemental Filing. 4. Factual Background
The Complainant is based in Zürich, Switzerland. It employs 150,000 people, operates in approximately 100 countries and has revenues of almost USD42 billion. It is also represented in approximately 100 different locations in the United States, which is where the Respondent resides.
Due to extensive and long-term use of the trademark ABB on the Complainant’s products and services, ABB has become a well-established trademark in power and automation technology. The trademark, and the products and services designated by this trademark, enjoy a good reputation and international recognition. In 2014, the trademark ABB was ranked number seven on Interbrand’s list of the most valuable brands in Switzerland.
The Complainant has registered the trademark ABB as both word and device marks in several classes in countries all over the world, including in Switzerland and the United States. These include the following:
- Swiss trademark registration No. 59427/2013 for ABB, registered on July 31, 2013, in classes 07, 09, 11, 12 and 17;
- Swiss trademark registration No. 09736/2001 for ABB, registered on October 5, 2001, in classes 01, 02, 03, 04 and 06;
- Swiss trademark registration No. 5925 for ABB, registered on April 1, 1993, in classes 35, 36, 37, 41 and 42;
- Swiss trademark registration No. 1172 for ABB, registered on February 16, 1988, in classes 01, 06, 07, 09 and 10;
- Swiss trademark registration No. 3269 for ABB, registered on May 11, 1988, in classes 01, 06, 07, 09 and 10;
- United States trademark registration No. 76/385322 for ABB, registered on March 18, 2002, in classes 01, 02, 03, 04 and 06;
- United States trademark registration No. 728906 for ABB, registered on May 17, 1988, in classes 06, 07, 09, 12 and 16;
- United States trademark registration No. 165392 for ABB, registered on May 10, 1991, in classes 09, 37, 41 and 42.
The Complainant has also registered the trademark ABB as a domain name under several generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) worldwide, among these; , registered on January 11, 2010 and , registered on October 15, 2009.
The disputed domain name was registered on July 15, 2014. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, ABB, in light of the fact that it wholly incorporates the Complainant’s mark.
- The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
- The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the ABB mark. The Complainant is the owner of multiple trademark and domain name registrations in the United States and worldwide for the trademark ABB, as indicated in Section 4 above and as demonstrated in Annexes 6 and 9 to the Complaint.
The disputed domain name wholly incorporates the term “abb”, which is identical to the trademark ABB registered by the Complainant as trademarks and domain names in countries all over the world. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy. See Alstom v. FM Laughna,WIPO Case No. D2007-1736.
It is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488. The addition of the suffixes “group” and “tr” in combination with hyphens does not affect the overall impression of the dominant part of the name, ABB, instantly recognizable as a registered trademark. The addition of “.com”, a gTLD suffix, is non-distinctive and is without legal significance when assessing the identity or confusing similarity of a domain name to a complainant’s prior trade mark rights. See, for example, LEGO Juris A/S v Mariusz Zielezny,WIPO Case No. D2010-0796.
Further, given that the disputed domain name has been used in relation to an email scam, the Respondent obviously considered the disputed domain name to be confusingly similar to the ABB trademark. This conclusion has been reached by previous UDRP panels. See, for example, National Westminster Bank plc v. Babalola, Awokoya,WIPO Case No. D2012-1737.
In the light of the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Respondent has no registered trademarks or trade names corresponding to the disputed domain name. The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s ABB trademark in any way or manner, including registering a domain name containing the term “abb”.
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. Moreover, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Previous UDRP panels have found that this evidence supports a finding of non-legitimate interest. See, for example, Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312.
The Complainant’s trademarks are well known in the United States and in many other countries in the world, and, the Complainant owns a number of websites based in various countries which incorporate the trademark ABB, as mentioned in Section 4 above. The Respondent must therefore have been aware of the Complainant’s legal rights in the name ABB at the time of the registration of the dispute domain name. The Respondent cannot claim to have been using the trademark ABB without having been aware of the Complainant’s rights to it. This suggests that the Respondent’s interests cannot have been legitimate.
The Respondent used the disputed domain name to pass itself off as the Complainant in order to engage in a phishing scam. The details of this scam are set out in more detail in Annex 12 to the Complaint. The Respondent’s attempt to pass itself off as the Complainant and deceive people for its own commercial gain is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy. Previous UDRP panels have held that the use of a domain name for a phishing scam does not give rise to rights or legitimate interests in a domain name. See Société des Hotels Meridien v. WhoIs Guard / Jim Thiam,WIPO Case No. D2011-1030.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its 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 its website or location.
As stated above, the Respondent used the Complainant’s name to engage in a phishing scam. Previous UDRP panels have held that this constitutes bad faith registration and use under the Policy. See PCL Construction Holdings Ltd. v. Chye Ling,WIPO Case No. D2012-2498.
When the Complainant became aware of the phishing scam on August 4, 2014, it immediately requested that the disputed domain name be disabled. The website at the disputed domain name was disabled on August 11, 2014. Although the website is currently inactive, it is still owned by the Respondent. Such passive holding, following fraudulent activities, still constitutes an act of bad faith and any future use of the disputed domain name by the Respondent would have to be assumed to constitute passing off and/or trademark infringement.
By using the disputed domain name for fraudulent purposes the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is committing a criminal offence and misleadingly diverting consumers for its own commercial gain. The Respondent should be considered to have registered, and to be using, the disputed domain name in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Cherise Valles
Sole Panelist
Date: November 12, 2014
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