The Complainant is ABB Asea Brown Boveri Ltd. of Zürich, Switzerland, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Sahriar of Dhaka, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on April 16, 2018. 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 claims that it was founded more than 130 years ago as “Elektriska Aktiebolaget” in Sweden and eventually became Swedish ASEA AB. As an entity, ABB Asea Brown Boveri Ltd. was later created through the merger in 1988 of two global companies: the Swedish ASEA AB and the Swiss BBC Brown Boveri AG.
The Complainant claims to employ today approximately 134,800 people, operate in about 100 countries and to have had in 2017 revenue of approximately USD 34 billion.
The Complainant is the owner of a vast number of registrations throughout the world for the trademark ABB, covering a variety of goods and services in several classes, primarily related to the areas of power and automation technology, including registration No. 73731 for ABB granted in Bangladesh on October 5, 2001 for goods in class 7.
The ABB trademark was ranked number five in Interbrand’s list of 2016 most valuable brands in Switzerland and has won the Zayed award as a global sustainability leader.
The Complainant has also registered the ABB trademark as a domain name under several generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”) in many countries, including under which it operates an extensive website.
The Respondent, based in Bangladesh, registered the disputed domain name on January 21, 2018. The website to which it resolves states “website currently under maintenance come back soon”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark ABB, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely 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 was registered and is being used In bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademark ABB.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case the disputed domain name contains the Complainant’s trademark, ABB, in its entirety. Neither the addition of the hyphen nor of the non-distinctive word “group” is sufficient to avoid a finding of confusing similarity.
It has been held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark. See Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119. Much less then may a hyphen, such as in this case, avoid confusing similarity between the Complainant’s trademark and the disputed domain name.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.”
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0).
The Panel finds that the disputed domain name is confusingly similar to the trademark ABB in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant submits that it has never granted the Respondent with the right to use or register the trademark ABB as a domain name or for any other reason.
Previous UDRP panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144.
The Complainant also claims that the Respondent has not been commonly known by the disputed domain name. From the record it would seem that the Respondent is known as Sahriar.
The Respondent’s current use of the disputed domain name to resolve to a blank page lacking content, except for the message “website currently under maintenance come back soon”, is not evidence of a bona fide offering of goods or services under the Policy. See Pet Plan Ltd v. Marc Castonguay,WIPO Case No. D2015-2116.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The trademark ABB, which the Complainant claims to have in use since 1988, has been registered and used by the Complainant in a vast number of countries, has been highly valued and received awards from prestigious institutions. It has been said in an earlier UDRP case that “the Complainant is the owner of numerous ABB trademarks, which enjoy a worldwide reputation.” See ABB AseaBrown Boveri Ltd. V. Mike Bulliman,WIPO Case No. D2015-1407.
It is therefore most likely that the Respondent should have known and targeted the Complaint’s trademark when registering the disputed domain name on January 21, 2018, for the purpose of benefiting from the prestige of the Complainant and the Complainant’s ABB trademark by causing confusion among Internet users as to the source or sponsorship of the relevant goods or services, which amounts to bad faith registration. Moreover, given that the Complainant comprises entities and subsidiaries around the world and is therefore also referred to as the “ABB Group”, the word “group” in the disputed domain name serves to increase the likelihood of confusion with the Complainant´s trademark.
The disputed domain name currently resolves to an inactive site and is not being used. However, it is to be noted that, as stated in section 3.3 of WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon page”) would not prevent a finding of bad faith under the doctrine of passive holding.”
In the circumstances, and in the absence of a plausible reply from the Respondent, the Panel considers that the fact that the disputed domain name does not resolve to an actual website would not prevent a finding of use in bad faith.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Miguel B. O’Farrell
Sole Panelist
Date: April 23, 2018
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