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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Ltd v. Mark Maddison
Case No. D2001-0538
1. The Parties
Complainant is Abb Asea Brown Boveri Ltd, a corporation having its principal place of business in Zürich (P.O. Box 3131, 8050), Switzerland, and is represented by Mark H. Blair, having his office in London (57 Lincoln's Inn Fields, WCA 3LS), United Kingdom, ("Complainant").
Respondent is Mark Maddison, with address in Redcar (34 Richmond Road, TS10 2EX), United Kingdom ("Respondent").
2. The Domain Names and Registrar
The domain names at issue are <abbeutech.com>, <abb-eutech.com>, <eutechabb.com> and <eutech-abb.com> ("the Domain Names"). The Registrar is Register.com, 575 8th Avenue, 11th floor, New York, NY 1018, United States of America ("the Registrar").
3. Procedural History
The Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Complaint") was submitted electronically with the World Intellectual Property Organisation Arbitration and Mediation Center ("the WIPO Center") on April 12, 2001. The hardcopy of the Complaint was received on April 17, 2001. An Acknowledgement of Receipt was sent by the WIPO Center to Complainant dated April 17, 2001.
On April 25, 2001, a Request for Register Verification was transmitted to the Registrar. On the same date, the Registrar confirmed by e-mail that the Domain Names are registered with the Registrar and that Respondent is the current registrant of those domain names.
On April 27, 2001, a Notification of Complaint and Commencement of Administrative Proceedings ("the Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on May 16, 2001, by which Respondent could make a response to the Complaint.
On May 16, 2001, the deadline for filing a response, Mr. Blair, the representative of Complainant, sent an e-mail to the WIPO Center, inquiring about the possibility to suspend the proceedings during negotiations with Respondent. The WIPO Center replied in a May 17, 2001 e-mail that such a suspension was possible, after which Mr. Blair in a May 25, 2001 e-mail asked for a suspension of the proceedings until August 31, 2001. On May 29, 2001, the WIPO Center sent a Notification of Suspension of Administrative Proceeding to Complainant and Respondent, suspending the proceedings until August 31, 2001.
On August 30, 2001, Mr. Blair requested on behalf of Complainant that the proceedings be reinstituted immediately. On August 31, 2001, the WIPO Center informed the parties that the proceedings were reinstituted on that day and that Respondent should submit its response before September 20, 2001.
Respondent has not filed a response, and on September 25, 2001, the WIPO Center sent a Notification of Respondent Default to Respondent.
On October 22, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
Complainant is the owner of various trademarks in several countries consisting of the acronym ABB ("the ABB Marks"), which were registered in and after 1988 following the merger of Brown Boveri and Asea. According to Complainant, they have been in constant use since that time.
Complainant is the holder of a large number of domain names incorporating the letters ABB.
The corporation Eutech Engineering Solutions Ltd ("Eutech Ltd") was acquired by Complainant on January 31, 2001, on which date the name of this corporation was changed to ABB Eutech Ltd.
Eutech has been trading in the United Kingdom and throughout the world since 1993. The word "Eutech" has been registered in the name of Eutech Ltd as a trademark in the United Kingdom on July 28, 1993 ("the EUTECH Mark").
Respondent registered the Domain Names on January 30, 2001.
In an e-mail dated January 30, 2001, Respondent sent the following e-mail to Complainant:
" Without prejudice
To: Eric Drewer - Head of Corporate Transformation
Andrew Eriksson - Business Development
Internet domain names: ABBEutech.Com
As of midday today the above domain names are registered in my name for a period of at least one year.
At the time of registration a search revealed that there were no federal trademarks, European trademarks, company names, copyright or domain names existing on these names.
In the modern day business environment, the value of the internet cannot be overstated, and if anything the increasing value is accelerating on a daily basis. Your existing ABB and Eutech websites are testament to this fact.
With this in mind and continuing your corporate goal of eBusiness development, have you any interest in purchasing these domain names.
If so, reply by EMail stating your offer price.
Mr. M Maddison"
The Domain Names currently do not revolve to a website or other on-line presence of Respondent. Under the corresponding URLs, a message is visible stating:
" COMING SOON! This domain name was recently registered at register.com."
and giving further information of the Registrar's services.
5. Applicable Rules
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a)(iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a)(ii) above.
6. Parties’ contentions
The grounds for the Complaint are:
(1) Complainant states that the Domain Names are confusingly similar to Complainant’s ABB Marks and EUTECH Mark in accordance with Paragraph 4 (a)(i) of the Policy. Complainant contends that the relevant parts of all of the Domain Names are the elements "ABB" and "Eutech" and that they thus are clearly identical and confusingly similar to the aforementioned marks;
(2) Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant states that names consisting of combinations of the elements "ABB" and "Eutech" are not names which traders would legitimately choose unless seeking to create the impression of an association with Complainant. Complainant further contends that it has not licensed or otherwise permitted Respondent to use any of the ABB Marks or the EUTECH Mark;
(3) Complainant states that the Domain Names have been registered and are being used in bad faith and contends that evidence thereof is established by four circumstances:
i) the ABB Marks and the EUTECH Mark are very well known and Respondent was fully aware of that fact at the time the Domain Names were registered;
ii) Respondent was aware of the acquisition by Complainant of Eutech Engineering Solutions Ltd and by his own admission registered the Domain Names for the purpose of sale to Complainant and the intention of preventing Complainant from registering the Domain Names;
iii) because of the widespread use and reputation of the ABB Marks and the EUTECH Mark, the relevant public may believe that the entity owning the domain names incorporating the elements "ABB" and "Eutech" is Complainant or is in some way associated with or connected to Complainant;
iv) any realistic use of the domain name must misrepresent an association with Complainant and its subsidiary ABB Eutech Ltd and its goodwill, resulting in passing off and trademark infringement;
(4) Complainant further contends that (referring to paragraph 4 (b)(i) of the Policy) the Domain Names were registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant, which is evidenced by Respondent's e-mail to Complainant dated January 30, 2001;
(5) Complainant contends that as its registration of the ABB Marks and the EUTECH Mark precede Respondent's registration of the Domain Names, Respondent should be held to have a constructive notice of Complainant's trademarks at the time of registering the domain names.
Respondent has not filed a Response.
7. Discussion and Findings
a. Trademark rights
Complainant has, in Annexes 4 and 5 to the Complaint, provided sufficient evidence of its rights to the ABB Marks.
Complainant has however failed to provide evidence of its rights to the EUTECH Mark. According to the trademark registration extract submitted by Complainant as Annex 7, and according to the Complaint (page 7, fourth paragraph under (ii)), the EUTECH Mark is held by Eutech Engineering Solutions Ltd, which is not a party to these proceedings. Also, no evidence of a possible license to Complainant to the EUTECH Mark has been provided.
b. Identical or confusingly similar
The Panel finds that the Domain Names are all confusingly similar to Complainant's ABB Marks.
The Domain Names all incorporate a combination of the element "ABB" (identical to the ABB Marks, in which Complainant holds rights), the element "Eutech" (identical to the EUTECH Mark, not held by Complainant), and the suffix ".com" (which only indicates that the Domain Names are registered in the .com gTLD).
Where the trademarks of two separate companies are combined in a domain name, there is a likelihood of confusion between either mark and the domain name, if that combination of the trademarks makes it likely for the online user to get confused as to the affiliation or sponsorship of the domain name or corresponding web site. While a likelihood of confusion can already be present where two trademarks combined in a domain names are owned by two unrelated companies (as held in Minnesota Mining and Manufacturing Company v. Belowcost, WIPO Case No. D2001-0420), confusion is even more likely where the trademarks combined in a domain name belong to affiliated companies, such as in this case. Given the acquisition of the holder of the EUTECH Mark by Complainant, holder of the ABB Marks, it is (very) likely that the public may think that the Domain Names are somehow connected to either Complainant or the owner of the EUTECH Mark, or (most likely) to both. This justifies the conclusion that the Domain Names are confusingly similar to the ABB Marks, in which Complainant holds rights.
In his January 30, 2001 e-mail to Complainant, Respondent mentioned that no trademark registration or company name incorporating both the element "ABB" and the element "Eutech" existed at the time of registration of the Domain Names. This fact however cannot, given the above mentioned likelihood of confusion, lead to the conclusion that the Domain Names are not identical or confusingly similar to Complainant’s ABB Marks.
For clarity’s purpose, the Panel remarks that the conclusion that the Domain Names are confusingly similar to the ABB Marks, leaves open the question whether or not the holder of the EUTECH Mark, which mark is also contained in the Domain Names, has any (better) rights to the Domain Names, as the Domain Names may also be confusingly similar to the EUTECH Mark. That question does not need to be answered and is not prejudiced by the decision in these proceedings, to which the holder of the EUTECH Mark is not a party.
c. Rights or legitimate interests
Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:
"(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."
By not submitting a response, Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights or legitimate interest in the Domain Names. In his e-mail of January 30, 2001, Respondent did not indicate any such circumstances either.
Furthermore, considering that Respondent does not use the Domain Names (they do not revolve to a website or other on-line presence of Respondent) and that he has offered the Domain Names for sale to Complainant, it cannot reasonably be considered that Respondent would be able to bring evidence of any of the circumstances described in Paragraph 4 (c) of the Policy.
The Panel therefore finds that Respondent has no right or legitimate interest in the Domain Names.
d. Bad faith
According to Paragraph 4 (b) of the Policy, evidence of any of the following circumstances shall demonstrate a bad faith registration and use of the domain name at issue:
"(i) circumstances indicating that Respondent has registered or that Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location."
Considering that Respondent (i) registered the Domain Names on the day before Complainant acquired the corporation Eutech Engineering Solutions Ltd, (ii) does not use the Domain Names, and (iii) has offered the Domain Names for sale to Complainant on the date they were registered, the Panel finds that Respondent has apparently registered the Domain Names primarily for the purpose of selling them to Complainant for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Names (see Paragraph 4 (b)(i) of the Policy). Although Respondent did not name a price for the domain names, it is unlikely, given the context of the e-mail (Respondent emphasizes that "... the value of the internet cannot be overstated", and that "the increasing value is accelerating on a daily basis", and then asks Complainant to state an offer price) that Respondent intended to sell the Domain Names at cost price.
The Panel therefore concludes that there is sufficient evidence that Respondent's registration and use of the Domain Names have been made in bad faith.
On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain names <abbeutech.com>,
<abb-eutech.com>, <eutechabb.com> and <eutech-abb.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: November 12, 2001