WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Ltd. v. Abbey / Abbey Corporation
Case No. D2014-1058
1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd. of Zürich, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Abbey / Abbey Corporation of Saadia, Oriental, Morocco.
2. The Domain Name and Registrar
The disputed domain name <abb-corporation.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2014. On June 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2014.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on July 31, 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
According to the documentary evidence and contentions submitted, the Complainant is an international company active in the electric power industry and was founded more than 130 years ago. It operates in approximately 100 countries, including Morocco.
The Complainant bases its Complaint on the following trademarks:
- Semi-figurative international trademark ABB, Registration No. 781902, registered on March 27, 2002 and renewed on March 27, 2012, in classes 27.5, 29.1, designating namely Morocco, France, Swiss, Germany and United Kingdom;
- Morocco trademark ABB, Registration No. 781685, registered on March 27, 2002, in classes 01, 02, 03, 04, 06, and duly renewed;
- Morocco trademark ABB, Registration No. 615830, registered on February 9, 1994, and duly renewed, in classes 35, 36, 37, 41, 42, and duly renewed;
- Moroccan trademark ABB, Registration No. 529800, registered on October 13, 1988, in classes 37, 41, 42, and duly renewed;
- Moroccan trademark ABB, Registration No. 527480, registered on May 11, 1988, in classes 01, 06, 07, 08, 09, and duly renewed.
The Complainant also owns a significant number of domain names that incorporate the ABB trademark, such as:
- <abbinternational.com>, registered on February 3, 2011
- <abb-group.eu>, registered on August 30, 2007;
- <abb-info.com>, registered on June 7, 2011;
- <abb-manufacturing.jobs>, registered on February 4, 2010.
The Complainant is using the domain name <abb.com> to provide information about its services. This domain name was registered on January 11, 2010.
The Respondent registered the disputed domain name <abb-corporation.com> on December 24, 2013. This domain name is currently linked to an inactive website, after it was disabled by the Registrar on May 17, 2014, at the Complainant’s request.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the ABB trademark in which the Complainant has rights, and continues to have rights. Indeed, the Complainant states that the disputed domain name is composed of the term identical to the trademark registered by the Complainant as well as to the numerous other domain names it has registered. In addition, the Complainant holds the view that the suffix following the trademark is easily associated with its trademark. In the Complainant’s opinion, this causes a considerable risk for the trade public to perceive the disputed domain name either as a domain name owned by the Complainant or to think that there is a commercial relation with the Complainant. Furthermore, the Complainant alleges that the disputed domain name has been used in relation to an email scam, resulting in a risk for the public to perceive the disputed domain name as being owned or in relation with the Complainant.
The Complainant adds that the Respondent has no rights or legitimate interests in the disputed domain name. It assures that no license or authorization has been given to the Respondent to use the trademark, nor is it an authorized dealer of the Complainant’s products. Moreover, the Complainant states that it hasn’t found any registered trademark or trade names corresponding to the disputed domain name, indicating, in its opinion, a lack of legitimate interest. The aforementioned alleged email scam would also support this point.
Furthermore, the Complainant contends that the disputed domain name was registered and is being used in bad faith because the Respondent was using an email address based on the disputed domain name to elaborate a scam aiming at utilizing the Complainant’s registered trademark to deceive individuals looking for a job with the Complainant and manipulate them into paying money under the cover of hiring them. The Complainant adds that the lack of active use of the disputed domain name does not prevent a finding of bad faith.
The Complainant therefore requests from the Panel appointed in the administrative proceeding that the disputed domain name <abb-corporation.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel observes that the Complainant provided satisfactory evidence that it has rights in the ABB trademark acquired through registration and that the Complainant’s rights are still in force.
The disputed domain name breaks down into the following components: the initials ABB, which is the exact reproduction of the ABB protected trademark, followed by a dash, followed by the noun “corporation”.
The Panel concurs with the opinion of several prior UDRP panel decisions which have held that when a domain name wholly incorporates a complainant’s registered mark, that may generally be sufficient to establish confusing similarity for purposes of the Policy (see, e.g. Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615).
The Panel points out that it has already been considered that a semi-figurative trademark doesn’t exclude the possibility for a risk of confusion with a domain name (see, e.g. S.A.S. Auto Sport Willy v. Monsieur Martin Andersson, WIPO Case No. DFR2010-0011).
In the present case, the word “corporation” is a generic and descriptive word. The Panel concurs with the opinion of prior UDRP panels which have held that the addition of a generic term to a trademark will not affect the fact that the disputed domain name can be confusingly similar to the trademark in question (see, e.g., Terex Corporation v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0733).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy outlines non-exclusive circumstances which, if found by the Panel to be proved, shall demonstrate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In line with prior UDRP panel decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to have the burden of production shift to the respondent (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any permission or authorization to use the ABB trademark as part of a domain name or in any other way.
In this case, the Respondent did not reply to the Complainant’s contentions and thus has provided no evidence of circumstances specified in paragraph 4(c) of the Policy, nor any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
In view of the above, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy outlines non-exclusive circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 have engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s website or location or of a product or service on respondent’s website or location.
As already established by priori UDRP panels, the ABB trademark is well-known internationally. It cannot be reasonably argued that the Respondent could have been unaware of the trademark when registering the disputed domain name (see e.g., ABB Asea Brown Boveri Ltd v. PrivacyProtect.org/Venkateshwara Distributor Private Limited, Caas Serviced Office solutions, WIPO Case No. D2010-1635; ABB Asea Brown Boveri Ltd, v. sevenstar sevenstar sevenstar, WIPO Case No. D2007-1459; ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd. WIPO Case No. D2007-1466; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215).
Moreover, in this case, the Respondent had setup a redirection on the disputed domain name, rerouting the traffic to the Complainant’s website. By doing so, the Respondent has admitted by conduct that he knew of the Complainant’s trademark, of the Complainant's website and of its content.
Therefore, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
The disputed domain name previously had a redirection to the Complainant’s official website “www.abb.com”, which was creating a likelihood of confusion with the Complainant's trademark as to the affiliation with the Complainant.
At the Complainant’s request, the disputed domain was disabled by the Registrar on May 17, 2014, following information revealing a phishing as developed hereafter. Therefore, the disputed domain name does not currently resolve to any active website or other online presence.
However, it has long been held in UDRP decisions that the passive holding of a domain name that incorporates a trademark without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4 (a)(iii) of the Policy (see, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In this case, the Complainant submitted copies of emails, allegedly sent by the Respondent to a job applicant, and by the job applicant to the Complainant, aiming at proving that the disputed domain name was used by the Respondent as an email address used to send out fake ABB job offers where applicants were asked to pay money.
Therefore, by using the disputed domain name as part of an email address, the Respondent attempted to lure, for unlawful commercial gain, Internet users to the Respondent's fraudulent scheme by creating a likelihood of confusion with the trademark as to the source and affiliation of the emails. (see e.g. Dow Jones & company Inc. v. Ms. Sorokin, WIPO Case No. D2008-0027; The Coca-Cola Company v. Tony Williams, WIPO Case No. D2007-0479).
Despite the lack of detail in the copies of emails submitted, the Panel approves the admissibility of these evidences, considering that it hasn’t been questioned by the Respondent.
Therefore, the Panel finds that the above circumstances constitute evidence that the Respondent is using the disputed domain name in bad faith.
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 <abb-corporation.com> be transferred to the Complainant.
Date: August 8, 2014