WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Limited v. Aseabrownboveri
Case No. D2001-0107
1. The Parties
The Complainant is ABB Asea Brown Boveri Limited, a Swiss corporation of Zurich, Switzerland. The Complainant is represented by Ms Sandra Leis and Mr Pedro Edvardo Siemsen, attorneys, of Rio de Janiero, Brazil.
The Respondent is Aseabrownboveri of 282 Avars 69, San Jose 43871, Costa Rica. The Respondent is not represented and has filed no response.
2. The Domain Names and Registrar
The domain names at issue are <aseabrownboveri.com> and <aseabrownboveri.net>. The domain names are registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on January 19, 2001, (electronically) and January 24, 2001, (hard copy). The Complainant requested a three member panel. An amendment to the Complaint was filed on February 1, 2001 (email) and February 8, 2001 (hard copy).
On January 23, 2001, the Center sought registration details from the Registrar. On January 24, 2001, the Registrar advised that the registrant of the disputed domain names and the Administrative, Technical, Zone and Billing Contact is ASEABROWNBOVERI at the above address. The Respondentís contact person is Nior Reg, Praia de Botafogo 3368233-9786, Rio de Janiero, Brazil; the Registrarís 5.0 Service Agreement is in effect (which incorporates the Policy and requires the registrant to submit to a properly initiated complaint under the Policy); that the status of the disputed domain names are "active".
On February 2, 2001 the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. It formally notified the Respondent by post/courier, facsimile and email of the amended Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly February 2, 2001. The last day specified in the notice for a Response was February 21, 2001.
No Response was filed by the Respondent.
Due to the Respondentís failure to respond, a three-member Panel was appointed as requested by the Complainant in section 14 of its complaint.
On March 20, 2001 the Center notified the parties of the appointment of the Panel, all three members having submitted a Statement of Acceptance and Declaration of Impartiality.
The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules.
The Panel has not received any further requests from Complainant or Respondent regarding other submissions.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with paragraph 2(a) of the Rules; and that the three member administrative panel was properly constituted.
4. Factual Background
ABB Asea Brown Boveri Ltd is a very large Swiss company, part of the ABB Group. The ABB Group comprises more than 1,000 companies, employing about 170,000 people, spread over 100 countries in all continents.
ABB claims to be the worldís largest engineering and technology group, especially in the area of transmission and distribution of energy, automation, oil, gas and petrochemicals; industrial products and contracting and financial services. In the power transmission sector, ABB is the largest supplier of products, solutions and services and is the leading supplier of business management systems for large power networks. ABB is the leader in the power distribution sector, providing not only products such as transformers, substations, circuit breakers but also solutions and services, such as power network management.
The oil, gas and petrochemical branch of ABB covers refining, subsea and floating production systems, maintenance and modernization of both offshore and onshore facilities, etc. It has expanded its presence in Africa and China and has undertaken projects in this area in the United Kingdom, U.S.A. and Canada, and other countries.
ABB operates a Building Technologies segment, which is the second largest of the Group. This segment provides service solutions for industry, improving industrial business processes. In the financial area, ABB Financial Services, provides the companies of the ABB Group and external customers around the world with support in financing, sales and risk management services. In order to protect its products and services, Complainant has registered the trademark "ASEA BROWN BOVERI" in many countries. For example:
- Switzerland; registration no. 360775, of February 16, 1988, trademark ASE ABROWN BOVERI;
- Switzerland; registration no. 456938, of December 106, 1988, trademark ASEA BROWN BOVERI;
- Australia; registration no. 743789, of September 12, 1997, trademark ASEA BROWN BOVERI;
- New Zealand; registration no. 282212, of September 11, 1997, trademark ASEA BROWN BOVERI;
- United States of America; registration no. 2,292,003, of November 16, 1999, trademark ASEA BROWN BOVERI;
- International registration under the Madrid Agreement and Protocol; registration no. 719598, of May 19, 1999, trademark ASEA BROWN BOVERI;
- Community trademark registration, issued by OHIM: no. 000637439, of June 8, 1999;
- Brazil Ė Trademark ASEA BROWN BOVERI:
Registration Date Class
820322768 November 16, 1999 16.20 (Brazilian)
820322776 October 19, 1999 36.10/36.30 (Brazilian)
820322806 October 19, 1999 37.70 (Brazilian)
820322814 November 16, 1999 38.10 (Brazilian)
Additionally, in the case of Brazil, Complainant has secured protection not only for ASEA BROWN BOVERI but also for derivations thereof, such as ABB ASEA BROWN BOVERI, Asea and Brown Boveri.
The Complainant has not granted any right to the Respondent to use its name.
5. Partiesí Contentions
Identity of Confusing Similarity
The Complainant alleges that the disputed domain names are identical to the Complainantís registered marks that it has used worldwide for years. The Respondent has made no submissions.
Legitimacy of Respondentís Use
The Complainant alleges that the Respondent has no rights to use its marks. Originally the owner of the disputed domain names was located in India. After a "cease and desist" letter on August 9, 1999, the ownership was changed to the Respondent in Costa Rica. A reply to a "cease and desist" letter then sent to the Respondentís contact person stated "A trademark does NOT give you the right to one or more inheric domains. Please feel free to do whatever you consider necessary".
A few days later the contact person shifted to Rio de Janiero, Brazil. An email of July 10, 2000 to the Respondent again stated that a trademark "does not give you the right to a domain name". The Complainant alleges that the Rio de Janiero address given is fictitious and the telephone number inaccurate. The Respondent has made no submissions.
The Complainant alleges that bad faith registration can be inferred from the use of a worldwide name; the lack of any connection of the Respondent with the Complainant; the facile responses of the Respondent and its change of contact person from country to country. The Complainant alleges that its marks are so famous and unusual that bad faith registration must have occurred. The Respondent has made no submission.
Lastly, the Complainant has requested under paragraph 4(i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain names be transferred to the Complainant.
6. Discussion and Findings
The Panel considers that the Respondent by registering the contested domain name with Network Solutions, Inc., it agreed to be bound by all terms and conditions of Network Solutions Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which policies request that proceedings be conducted according to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.
The Panel considers that the Respondent by entering into the above mentioned Service Agreement, it agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondentís domain name registration services may be suspended, cancelled or transferred.
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel notes that the entire mark ĎASEABROWNBOVERI" is included in the domain name, the only addition, being the ".com" and the ".net". The addition of these phrases is non-descriptive and does not alter the value of the mark represented in the domain name. In addition, the .com and the .net is a necessary element required for registration of any domain name, and not voluntary and arbitrarily chosen additions to be included by registering parties. Therefore, the Panel considers that the disputed domain names are identical to the registered marks of the Complainant, which constitute a brand well-known around the world.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain names. The Complainant has the onus of proof on this, as on all issues. The Complainant has not granted the Respondent any rights to use the disputed domain names.
The critical question is whether the Respondent was aware of the Complainantís marks before he registered the domain names. There is no explanation from the Respondent: the Panel infers that it must have known of the unusual combination of names which make up the Complainantís marks.
Furthermore, this Panel did not receive any submission of evidence from the Respondent or otherwise, demonstrating the Respondentís rights or legitimate interests to the domain names.
The Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the Ďaseabrownboveri.comí and the Ďaseabrownboveri.netí domain names in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain names as contemplated under Paragraph 4(c)(ii) of the Policy: nor that the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue as contemplated under Paragraph 4(c)(iii) of the Policy.
The domain names <aseabrownboveri.com> and <aseabrownboveri.net> do not resolve to a web site or other on line presence: there is no evidence of (a) the site being in process of establishment, (b) advertising, promotion or display to the public of the domain names and, (c) that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person.
There is no positive action being undertaken by Respondent in relation to the domain names. Thus, what matters is not if the Respondent is undertaking a positive action in bad faith in relation to the domain names, but if whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.
Since the hypotheses identified in paragraph 4(b) are unlimited, it is possible to say that inactivity, or passive holding of the domain name, by the Respondent may prove that the domain names have been registered and are being used in bad faith.
The Respondentís passive use of the domain names together with the questionable attitude evidenced by the change of ownership, identity and of contacts, has given this Panel a strong impression of the Respondentís violation of standards of reasonableness and have also confirmed the Respondentís questionable conduct based on a lack of good faith operation of a business through the Internet.
In view of the above mentioned in association with all the reasons enunciated by the Complainant, this Panel considers that the domain names were registered and are being used in bad faith by the Respondent.
The Panel determines that:
(a) The disputed domain names are identical to the Complainantís marks.
(b) The Respondent has no rights or legitimate interests in respect of the aseabrownboveri.com> and <aseabrownboveri.net> domain names.
(c) The disputed domain names have been registered and are being used in bad faith by the Respondent.
The Registrar is required to transfer the domain names <aseabrownboveri.com> and <aseabrownboveri.net> to the Complainant.
Hon. Sir Ian Barker QC
Luiz Edgard Montaury Pimenta
Pedro Walter Buchanan Smith
Dated: April 18, 2001