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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ABB Asea Brown Boveri Ltd. v. Imran Hayat / Domains By Proxy, LLC / DomainsByProxy.com

Case No. D2014-2088

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 Imran Hayat of Aberdeen, United Kingdom of Great Britain and Northern Ireland / Domains By Proxy, LLC / DomainsByProxy.com of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <abb-groups.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 2014. On November 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 9, 2014.

The Center verified that the Complaint together with the amendment to 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 December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 30, 2014.

The Center appointed Ellen B Shankman as the sole panelist in this matter on January 12, 2015. 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 date of the Domain Name registration was confirmed by the Registrar to be May 15, 2014. Complainant provided evidence of multiple trademark registrations for the mark ABB including inter alia in the United States of America (June 22, 1993), and in the European Community Trademark (November 13, 1998) that predate the date of the Domain Name registration. Further, evidence was provided of the fame of the Complainant's name, as well as an apparent fraudulent e-mail utilizing both the Domain Name and the ABB trademark regarding job offers. Because there is no response, the above facts regarding the fraudulent e-mail and fame of the mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.

The Panel also conducted an independent search to determine that the Domain Name currently has an error message and does not resolve to a particular website.

5. Parties' Contentions

A. Complainant

The Complainant has satisfactorily proven that it has registered trademark rights for ABB as well as establishing a reputation in the trademark by providing references to the Complainant in media as the ABB Group.

The Complainant contends, inter alia, the following facts and arguments:

"The Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights. The dominant part of the Domain Name comprises the term ABB, which is identical to the registered trademark ABB, registered by the Complainant as trademarks and Domain Names in numerous countries all over the world. … The Domain Name is confusingly similar to the Complainant's mark ABB. The addition of a hyphen and the suffix "groups" will not have any impact on the overall impression of the dominant part of the name, ABB, instantly recognizable as a registered trademark. The suffix "groups" is easily associated with the Complainant as can be seen from a search for this term in Google.com, where basically all results relate to the Complainant. … Further, the Domain Name has been used in relation to an email scam. To summarize, the Complainant is the owner of the world wide registered trademark ABB. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the suffix "groups" does not prevent a finding of confusing similarity.

The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. It is also clear, that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademark. The Respondent is not an authorized dealer of the Complainant's products and has never had a business relationship with the Complainant. In fact, the Respondent has used the Domain Name to pass itself off as the Complainant, through fraudulent emails, in order to defraud individuals, aspiring to secure a job with the Complainant. The Respondent's attempt to pass itself off as the Complainant and deceive people for its own commercial gain is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy, see ConAgra Foods RDM, Inc. v. Mark Berry, WIPO Case No. D2013-0240, where the Domain Name had also been used to send fake job offers and the Panel stated that "The use of a Domain Name for a phishing scam does not give rise to rights or legitimate interests in a Domain Name." Referring to the above mentioned the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Domain Name was registered and is being used in bad faith. The Respondent used the Domain Name to engage in a scam. By utilizing Complainant's registered trademark, Respondent was using the Domain Name to deceive individuals looking for a job with the Complainant. Thus, Respondent's use of the Domain Name constitutes bad faith registration and use under the Policy. The web site is currently inactive, but it is still "in the hands" of the Respondent {and the Complainant still seeks transfer of the mark}. Such passive holding, following fraudulent activities, still constitutes an act of bad faith and any future use of the Domain Name by the Respondent would have to be assumed to constitute "passing off" and/or trademark infringement. To summarize, ABB is a registered trademark since many years back. It is obvious that the Respondent was aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name for fraudulent purposes the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is committing a criminal offence and misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the Domain Name in bad faith."

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(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;

(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 used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has satisfied the first requirement that the Domain Name <abb-groups.com> is identical or confusingly similar to the Complainant's trademark ABB, under paragraph 4(a)(i) of the Policy.

The Domain Name string contains the trademark of the Complainant. The addition of a hyphen and the suffix "groups" does not materially change this finding.

"The addition of merely generic, descriptive, or geographical wording to a trademark in a Domain Name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the Domain Name." See Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, <ansellcondoms.com>, citing "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark: see Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 (WIPO, April 19, 2000) (finding that because the Domain Name <quixter-sign-up.com> incorporates in its entirety the Complainant's distinctive mark, QUIXTER, the Domain Name is confusingly similar)".

B. Rights or Legitimate Interests

Based on the available record, the Panel finds that the Complainant has established a prima facie case, that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the evidence of the rights in the mark, the timing of the registration of the Domain Name, together with evidence of fraudulent mail by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and used the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <abb-groups.com> be transferred to the Complainant.

Ellen B Shankman
Sole Panelist
Date: January 19, 2015

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