The Complainant is ABB Asea Brown Boveri Ltd. of Zürich, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Mohsin Khan of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 12, 2014. On November 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 November 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on December 22, 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. 4. Factual Background
The Complainant is incorporated in Switzerland. Since 1988, the Complainant and its group of companies have traded under the name "ABB" in the power and automation sectors. The Complainant's group employs 150,000 people and operates in approximately 100 countries, with revenues of almost USD 42 billion. In 2014, the mark ABB was ranked number seven on Interbrand's list over most valuable brands in Switzerland.
The Complainant owns many trade marks for ABB including Indian trade mark no. 1088257 for the stylised word "ABB" dated March 19, 2002, in class 9.
The disputed domain name was registered on May 28, 2014.
At some point thereafter, the Respondent used the disputed domain name for a website which impersonated the Complainant and which was linked to from bogus job advertisements in the name of "ABB Pune" on .
On September 9, 2014, the Complainant sent a cease and desist letter to the Respondent. There was no response. 5. Parties' Contentions A. Complainant
In summary, the Complainant contends as follows: Identical or Confusingly Similar
The Complainant's trade mark is well-established in the fields of power and automation technology by virtue of its extensive and long-term use on the Complainant's goods and services.
The term "ABB" is the dominant part of the disputed domain name. The addition of "pune" will not have any impact on the overall impression of the disputed domain name as ABB is instantly recognizable as a trade mark and Pune is a city in India where the Complainant has an office. So the suffix "pune" is readily associated with the Complainant's business in Pune. It is well established that the addition of a geographical term to a trade mark does not prevent a finding of confusing similarity.
Given that the disputed domain name has been used for a scam, the Respondent obviously viewed the disputed domain name as similar to the Complainant's trade mark. Rights or Legitimate Interests
The Respondent has been granted no licence or other authorisation to use the Complainant's trade mark.
The Respondent clearly knew of the Complainant's trade mark when it registered the disputed domain name. Therefore, the Respondent's interests cannot have been legitimate.
In fact, the Respondent has used the disputed domain name to pass itself off as the Complainant by posting bogus job advertisements. While the Complainant cannot tell if applicants were required to pay, the scheme must have had a commercial purpose. It is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Registered and Used in Bad Faith
The Respondent registered the disputed domain name by reference to the considerable value and goodwill of the Complainant's trade mark.
The Respondent registered the disputed domain name to engage in a scam in order to mislead individuals who aspired to secure a job with the Complainant. The Respondent is trying to create the impression that it is the Complainant when in fact is has no relationship with it whatever. This constitutes bad faith use.
The Respondent's failure to respond the cease and desist letter is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark ABB by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the geographic term "Pune" is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant has produced evidence that the disputed domain name has been used for a website impersonating the Complainant, which was linked to bogus job advertisements on a third party website purportedly posted by the Complainant. Although the exact nature of the scheme is not clear, it is obvious to this Panel that some sort of fraudulent activity is afoot. The fact of impersonation shows that the Respondent knew of the Complainant's trade mark when registering the disputed domain name.
Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by the Respondent.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.
Adam Taylor
Sole Panelist
Date: December 30, 2014
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