WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Limited v. OZBCOZ
Case No. DBIZ2002-00264
1. The Parties
The Complainant is ABB Asea Brown Boveri Limited, Affoltern Strasse 44, 8050 Zurich, Switzerland.
The Respondent is OZBCOZ, 89 Church Street, Castle Hill, NSW 2154, Australia.
2. The Domain Name and Registrar
The Domain Name is <abb.biz>.
The Registrar is Dotster, Inc.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on May 31, 2002, and in hardcopy form on June 5, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the STOP.
On June 9, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was June 29, 2002.
On June 28, 2002, the Response was received by the Center.
On July 3, 2002, the Center received a Supplemental Filing from the Complainant. The STOP Rules make no provision for further submissions and in the absence of any explanation as to why the Panel should make an exception in this case, the Panel has declined to look at this further submission.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel.
4. Factual Background
The Complainant is ABB Asea Brown Boveri Limited of Zurich, Switzerland ("ABB Switzerland"). ABB Switzerland is the result of a merger in 1988 of a Swedish company and a Swiss company. ABB Switzerland describes itself as being "one of the big players on the market for electric power generation, transmission and distribution, industrial and building systems and rail transportation." ABB Switzerland has used ABB as part of its name and as a trade mark since 1988. ABB has produced substantial evidence as to its trade mark rights in the mark ABB in many countries around the world including Australia.
The Respondent OZBCOZ of New South Wales, Australia is an internet services company. It registered the Domain Name on behalf of ABB Grain Limited of Adelaide, South Australia ("ABB Australia"). ABB Australia was incorporated in Australia in October 1998. ABB Australia and its predecessor in title, the Australian Barley Board, has been known as ABB since at least 1993 and, on the evidence of one of the witnesses whose declaration is exhibited to the Response, since at least 1979.
The only trade mark registration of the mark ABB which was referred to in the Response as being a trade mark registration of ABB Australia is a Korean registration. Strictly, it is not a registration of the mark ABB as such. It is a device mark which includes as a prominent part of the device, the letters ABB. Nonetheless, the evidence is clear; ABB Australia is widely known in its field of activity in Australia and the Far East as "ABB".
When the Respondent attempted to transfer the Domain Name to ABB Australia, the Respondent and ABB Australia were informed that the transfer could not be effected until ABB Australia had released the IP Claim which it had filed through the IP Claims Service during the launch of the ‘.biz’ TLD.
ABB Australia duly released its IP Claim to enable the transfer to take place, but only to be told that the transfer could not take place because there were other IP Claimants in line, including ABB Switzerland.
ABB Switzerland launched this Complaint being, so the Panel is informed, the last IP Claimant in line.
5. Parties’ Contentions
ABB Switzerland’s contentions are all directed to the Respondent, OZBCOZ
ABB Switzerland contends (and there is no dispute) that the Domain Name is identical to ABB Switzerland’s trade mark.
ABB Switzerland contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. ABB Switzerland points to the fact that the Respondent is not known as ABB, has not been licensed by the Complainant to use the trade mark ABB and has not provided any goods or services under or by reference to the Domain Name or the trade mark ABB.
ABB Switzerland contends that the Domain Name was registered in bad faith. Strangely it introduces this part of its case by referring to paragraphs 4(b)(i) and 4(b(ii) of the STOP but only goes on to make an allegation under the latter paragraph. ABB Switzerland asserts that the Respondent must be taken to have been aware of ABB Switzerland’s trade mark when it registered the Domain Name and since there is no plausible, legitimate use that the Respondent could make of the Domain Name without infringing ABB Switzerland’s trade mark rights, it is to be inferred that the Respondent registered the Domain Name with the intention of preventing ABB Switzerland from reflecting its company name and trade mark in a corresponding domain name.
The Response which was filed by ABB Australia citing OZBCOZ as its agent sets out how the Domain Name came to be registered (see factual background above) and relies upon that explanation to demonstrate why the Complaint must fail.
6. Discussion and Findings
According to paragraph 4(a) of the STOP, the Complainant must prove that
(i)The Domain Name is identical to a trade mark or service mark in which the Complainant has rights; and
(ii)The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii)The Domain Name has been registered or is being used in bad faith.
Before addressing these elements, the Panel has to decide the status of the Response. In the Response the Respondent is identified not as OZBCOZ but ABB Australia. Arguably, therefore, it could be said that the Response is defective, the Respondent should be treated as not having filed a Response and the case should be decided simply by reference to ABB Switzerland’s Complaint.
The significance of this is that if the Panel ignores the Response, the Complaint could succeed. The Domain Name is identical to ABB Switzerland’s trade marks, absent the explanation in the Response the Respondent has no obvious rights or legitimate interests in respect of the Domain Name and, while the Complainant’s contentions as to bad faith are speculative and not backed by any hard evidence, the inference of bad faith is one that a Panel could draw in circumstances such as these where the Respondent has no obvious rights or legitimate interests in respect of the Domain Name.
However, the Panel declines to ignore the Response and treats it as a Response filed on behalf of the Respondent. The circumstances leading up to this challenge to the Domain Name registration (as set out in paragraph 4 above) makes it clear why ABB Australia and the Respondent have dealt with the Response in the way that they have. The Panel cannot sensibly ignore the matters set out in the Response. If the Panel would have done so, it could have resulted in a gross injustice.
There is no dispute that the Domain Name is identical to ABB Switzerland’s trade mark.
Respondent’s Rights or Legitimate Interests
The Panel accepts what is put forward in the Response by ABB Australia’s lawyers to the effect that the Domain Name was registered on their instructions and on behalf of their client ABB Australia. The Dotster Domain Registration Agreement produced by ABB Switzerland as being the Agreement applicable to the registration of the Domain Name expressly contemplates registration of Domain Names by agents on behalf of their principals.
ABB Australia clearly has substantial rights (albeit in the main unregistered rights) in the trade mark ABB as a mark for grain and/or services relating to the supply of grain. On that basis and given that the Respondent registered the Domain Name on behalf of ABB Australia, the Respondent clearly had legitimate interests in respect of the Domain Name.
Bad faith in this context inevitably involves the respondent at the very least having the complainant in mind when registering and/or using the domain name. In this case the Respondent only had its client ABB Australia in mind.
The Panel finds that the Domain Name was not registered in bad faith.
The Complaint is dismissed.
Dated: July 26, 2002