The Complainant is ABB Asea Brown Boveri Ltd of Zurich, Switzerland, represented by Zimmerli, Wagner & Partner AG, Switzerland.
The Respondent is ABB Group of Auckland, New Zealand, represented by James & Wells, Intellectual Property, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <abb-group.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2009. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day, confirming that the Domain Name was registered with it; that the Respondent was the current registrant of the Domain Name; that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name; that the Domain Name was on Registrar Lock and would remain locked during this proceeding, save for scheduled expiration on July 21, 2011; that the registration agreement was in English and contained a submission to the jurisdiction at its principal office for court adjudication of disputes concerning or arising from the use of the Domain Name. The Registrar provided the full contact details on its WhoIs database in respect of the Domain Name and stated that it had not received a copy of the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 10, 2009. The Response was filed with the Center on May 8, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 12, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant was established in January 1988 as a result of the merger of the Swedish company ASEA AB and the Swiss company BBC Brown Boveri AG. The Complainant is one of the world's largest companies operating in the fields of electric power generation, transmission and distribution, and industrial and building systems. In 2008 its group had total revenues of roughly USD 35 billion. The group operates in more than 100 countries, including New Zealand, and employs about 120,000 people. It has an office in Auckland, New Zealand.
The Complainant has registered ABB as a trademark in many countries, including New Zealand, in respect of a broad range of services. The Complainant has also registered numerous domain names containing “abb”, including <abb.com>, <abbgroup.com> and <abb.co.nz>.
The Domain Name was registered in July 2003 by a Ms. Wright, a resident of Auckland, New Zealand. The Domain Name does not locate any web page.
In August 2007, the Complainant was informed that the Domain Name was inactive by a client who had assumed that it was owned by the Complainant. The Complainant sent a cease and desist letter to the Respondent by email on October 5, 2007. It did not receive a reply. The Complainant's representative sent a second cease and desist letter to the Respondent on January 15, 2008. The Respondent's representative sent a reply which was received on February 7, 2008. In subsequent correspondence the Complainant offered to pay the Respondent's costs of registered the Domain Name up to AUD 600. This was rejected without a counter-offer from the Respondent's side.
In the correspondence, the Respondent's representative stated that the Respondent traded under the names “ABB” and “ABB Group” in the provision of marketing services to the finance and beauty industries, and had used the Domain Name for email in connection with this business for several years. The Respondent's representative further stated that the Respondent had been unaware of the Complainant until now and explained the Respondent's adoption of her trading names as follows: Ms. Wright's nickname was “Big Blonde”; she had made a presentation in April 2003 which she had labelled “A B.B. Presentation”; her client had thereafter described it as the “ABB Presentation”; and the name had stuck over time. Various documents were provided in support of this account.
5. Parties' Contentions
A. Complainant
The Complainant submits that ABB has no descriptive significance in relation to its goods and services and that it has become distinctive of the Complainant and its group through a long period of exclusive use. The Complainant contends that the Domain Name is confusingly similar to this mark, since the addition of the generic word “group” adds little to the overall impression of the Domain Name, and makes confusion more likely since the Domain Name is easily interpreted as referring to its group of companies. The Complainant adds that the risk of confusion is further heightened by the fact that the Complainant owns the domain name <abbgroup.com>.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has no connection with the Respondent and has not authorized her to use the mark ABB. The Complainant casts doubt on the Respondent's explanation for the registration and use of the Domain Name (see below) and submits that the Respondent is not entitled to use the name “ABB Group” since Ms. Wright is a sole trader.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. It states that the Respondent knew or should have known of its trademarks when she registered the Domain Name since they are known worldwide and have been well established for many years. Since the Complainant had registered the domain names <abb.com>, <abbgroup.com> and <abb.co.nz> before the Respondent registered the Domain Name, it contends that she must have known of the Complainant's rights. According to the Complainant, any realistic use of the Domain Name by the Respondent must be misleading and unlawful. The Complainant recalls decisions that passive use of a Domain Name in bad faith can satisfy the second limb of the third requirement of the UDRP.
The Complainant seeks a decision that the Domain Name be transferred to it.
B. Respondent
The Respondent denies that the Domain Name is confusingly similar to the Complainant's marks and maintains that the visual, conceptual and phonetic differences eliminate any possibility of confusion between them.
The Respondent submits that she has rights and a legitimate interest in the Domain Name which she has used for the past five to six years without objection from the Complainant. The Respondent emphasizes that she and the Complainant operate in completely different and unrelated industries and markets. She reiterates the explanation given in correspondence for the choice of the Domain Name and refers to the evidence previously provided showing use of the trading names ABB and ABB Group in various combinations of upper and lower case lettering. She offers to disclose an example of the contact databases whose preparation constitutes the Respondent's core service on receipt of a suitable confidentiality undertaking. She repeats that she had no knowledge of the Complainant prior to receipt of the correspondence and avers that she used the Domain Name in connection with a bona fide offering of services before notice of the dispute.
The Respondent denies that she registered and is using the Domain Name in bad faith and asserts that the Complainant has not produced any evidence to substantiate any of the examples of bad faith identified in the UDRP.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it 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 is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark ABB.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the generic term “group” and the generic top level domain suffix. Many Internet users would assume that the Domain Name locates a website of the Complainant's group.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel is skeptical of the Respondent's explanation of her choice of the Domain Name and her assertion that she did not know of the Complainant until she received the Complainant's correspondence. However, on the other hand, the Respondent has submitted some evidence of her use of the name “ABB group” on business communications, invoices and other documents. On balance, the Panel is not able to conclude on the evidence that the explanation and assertion offered by the Respondent are true, but nor is it able to conclude that they are false.
Paragraph 4(a) of the Policy specifies that a complainant must prove each of the elements of the Policy including the negative requirement that the respondent has no rights or legitimate interests in respect of the Domain Name. On the other hand, paragraph 4(c) of the Policy states that specified circumstances, if found to be proved, shall demonstrate the respondent's rights or legitimate interests in the Domain Name, which implies that some burden rests on the respondent in this respect.
In the Panel's view, the overall burden of proof must remain on the Complainant. The Respondent would have a legitimate interest in the Domain Name if she had been using it in good faith in connection with her business and the Complainant has not proved that this is not the case. In the circumstances, the Panel is not satisfied that the burden of proof has been discharged by the Complainant on this point. To put it another way, the Respondent has by a slim margin succeeded in rebutting the case as put by the Complainant on the present record. Accordingly, this Panel finds here that the second requirement of the UDRP has not been met.
C. Registered and Used in Bad Faith
As stated above, the Panel finds that it has not been proved that the Domain Name was registered in bad faith. It follows that the third requirement of the UDRP has not been met.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner Sole Panelist
Dated: May 24, 2009
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