WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Ltd. v. pruthvi reddy
Case No. D2021-4406
1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd., Switzerland, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is pruthvi reddy, India.
2. The Domain Name and Registrar
The disputed domain name <abb-in.com> 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 December 30, 2021. On December 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2022, 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 January 14, 2022, 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 amended Complaint on January 17, 2022.
The Center verified that the Complaint together with the amended 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 January 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2022.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 24, 2022. 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 is based in Zurich, Switzerland and is a global company with a portfolio of products and services covering electrification, robotics, automation and motion technologies. It was founded more than 130 years ago as “Elektriska Aktiebolaget” in Sweden, and eventually became Swedish ASEA AB. ABB Asea Brown Boveri LTD as an entity was created later through a merger in 1988 of two global companies, namely the Swedish ASEA AB and the Swiss BBC Brown Boveri AG. The Complainant employs approximately 105,000 people, operates in around 100 countries and reported a revenue of about USD 7 billion in the third quarter of 2021. The Complainant’s shares are traded on the stock exchanges of Zurich, Stockholm and New York.
The Complainant is the owner of a portfolio of trademark registrations across various jurisdictions relating to the mark ABB. For example, the Complainant is the owner of United States of America Registered Trademark No. 1674702 for the word mark ABB, registered on February 11, 1992 in Classes 6, 7, 9, 12, and 16. The Complainant is also the owner of registered trademarks in India, where the Respondent is based, such as Indian Registered Trademark No. 493706 for a device mark featuring a stylized representation of the letters ABB underneath which is written ASEA BROWN BOVERI, registered on June 30, 1988 in Class 6. The Complainant’s ABB trademark was ranked number five in Interbrand’s 2016 list of the most valuable brands in Switzerland. The Complainant has also registered the domain names <abb.com> and <abb.in>.
The disputed domain name was registered on August 30, 2021. The website associated with the disputed domain name currently points to a page of pay-per-click links provided by the Registrar. The links refer to automation, robotics, motors, and software for electricians and the Complainant asserts that many of these point to its competitors.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
Identical or confusingly similar
The Complainant is the owner of the ABB trademark. This prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The applicable Top-Level Domain in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. In creating the disputed domain name, the Respondent has added a hyphen and the geographically descriptive term “in” to the Complainant’s ABB trademark, an abbreviation for India, thereby making the disputed domain name confusingly similar to the Complainant’s trademark. The fact that such term is closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant has 32 office locations and uses the primary domain name <abb.in>, which currently redirects to the Complainant’s main website at the domain name <global.abb>. The Respondent’s addition of a hyphen does nothing to distinguish the disputed domain name from the Complainant’s trademark.
Past Panels have consistently held that a domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.
Rights or legitimate interests
The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The pertinent WhoIs information identifies the Respondent as “pruthvi reddy” which does not resemble the disputed domain name in any manner. Where no evidence, including the WhoIs record for the disputed domain name, suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business. For instance, the website at which the disputed domain name resolves features multiple third-party links for services directly related to the Complainant’s area of business such as “Robotic Automation” or “Robotic Process Automation robotics”. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website. Prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy.
Registered and used in bad faith
The Complainant and its ABB trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 1988, which is well before the Respondent registered the disputed domain name. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant’s worldwide reputation and presence on the Internet indicates that the Respondent was or should have been aware of the Complainant’s mark prior to registering the disputed domain name.
The Respondent has created a likelihood of confusion with the Complainant and its trademarks by registering the disputed domain name incorporating the Complainant’s trademark, adding a hyphen and the related geographical term “in”, which demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and website. By creating this likelihood of confusion between the Complainant’s trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website. With respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest such respondent with rights or legitimate interests).
There is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name incorporating the Complainant’s trademark and adding a related geographical term where the Complainant also operates. Rather, it is indicative of an intention to hold the disputed domain name for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant.
The Respondent has ignored the Complainant’s cease-and-desist letters. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element inquiry under the Policy is carried out in two stages. First, the Complainant must demonstrate that it has UDRP-relevant rights in a registered or unregistered trademark. Secondly, such trademark is compared to the domain name concerned, typically in a straightforward side-by-side comparison, disregarding the Top-Level Domain as being required for technical reasons only. The purpose of the comparison is to determine whether the trademark is recognizable in the domain name concerned. If it is so recognizable, confusing similarity will generally be found, while if it is identical, identity will usually be found.
In the present case, the Panel is satisfied that the Complainant possesses UDRP-relevant rights in its ABB registered trademark. Turning to the comparison process, the Panel notes that this mark is the first element of the disputed domain name and is fully recognizable therein. The presence of the hyphen may be disregarded as of no material effect. The addition of the two-character geographic descriptor “in” (or alternatively the preposition “in”) likewise would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and therefore that the Complainant has carried its burden with respect to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Panel is of the view that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, based upon its submissions that the Respondent is not affiliated with the Complainant, has no permission or license to use the Complainant’s trademarks in any manner, is not commonly known by the disputed domain name whether by way of the registrant name on the WhoIs record or otherwise, and is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant. The Complainant adds, and the Panel agrees, that said use can neither be held to constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name. The Respondent has not filed a Response and thus has provided neither submissions nor evidence pointing to any rights or legitimate interests which it may have in the disputed domain name, despite having received notification of the Complaint according to the Rules. In the absence of any contribution from the Respondent, the Panel cannot conceive of any rights and legitimate interests which it might have claimed, whether in terms of paragraph 4(c) of the Policy or otherwise.
In light of the above analysis, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the Complainant has carried its burden with regard to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
With regard to this element of the Policy, the Complainant’s primary focus is upon the present use of the disputed domain name, namely its display of PPC links which the Complainant asserts are targeting its business by promoting its competitors. The Panel notes that the said PPC links appear to be published by the Registrar and may not directly have been placed on the associated website by the Respondent itself. That said, as section 3.5 of the WIPO Overview 3.0 notes, a respondent may not disclaim responsibility for content appearing on the website associated with a domain name, whether such content is automated or not, and whether or not such respondent directly profits from its use. Section 3.5 goes on to state that panels under the Policy have found positive efforts by a respondent to avoid links which target the complainant’s mark to be a mitigating factor in assessing bad faith. In the absence of any participation from the Respondent in this administrative proceeding, however, the Panel is unaware of any efforts which the Respondent might have taken to avoid the presence of links targeting the Complainant’s marks on the website associated with the disputed domain name. There is likewise no evidence before the Panel that any such measures have actually been taken by the Respondent and, even if such evidence had come to light, the suppression has plainly been ineffective at removing links to the Complainant’s competitors.
The Panel notes in addition that there does not appear to be any plausible good-faith reason for the Respondent to have registered the disputed domain name, incorporating as it does the Complainant’s well-known ABB trademark together with a geographical term for a location in which the Complainant operates (or simply the preposition “in” which is meaningless in this context). In the absence of a suitable alternative explanation, the Panel accepts the Complainant’s submission that the disputed domain name may be intended for future active use in a way which would be competitive with or otherwise detrimental to the Complainant and that this, together with the presence of targeted PPC, is indicative of registration and use of the disputed domain name in bad faith.
In all of the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and therefore that the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy.
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-in.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 10, 2022