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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Ltd, v. sevenstar sevenstar sevenstar
Case No. D2007-1459
1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd, of Switzerland, represented by KRSW WEINMANN, Switzerland.
The Respondent is sevenstar sevenstar sevenstar, of China.
2. The Domain Name and Registrar
The disputed domain name <abb-hk.com> is registered with WebNIC.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2007. On October 8, 2007, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On October 9, 2007, WebNIC.cc 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”), 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 October 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 16, 2007. 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
Complainant is ABB Asea Brown Boveri Ltd, a Swiss Corporation with its principal place of business in Zurich, Switzerland and belongs to the ABB Group, one of the world’s leading engineering companies. Complainant is known under the abbreviation ABB, which is used to identify companies belonging to the ABB Group.
The ABB Group of companies operates in more than 100 countries, particularly in Europe, North America and Asia. The ABB Group is one of the largest global companies on the market for electric power generation, transmission and distribution, industrial and building systems and it employs over 100,000 people. The ABB Group has a strong presence in Asia, particularly in China and Hong Kong, SAR of China with an extensive sales and service network across 38 cities in China. Its presence in China and Hong Kong, SAR of China dates back to the beginning of the last century when the ABB Group supplied the country with a steam boiler in 1907.
Complainant is the owner of numerous registrations for the trade and service mark ABB in all major countries worldwide. The earliest ABB trade mark registrations in the name of Complainant date back to 1988. The ABB sign is protected by different trade marks including the word mark ABB; the specific device of the ABB logo (“stylized ABB logo”); the specific device of the ABB logo in the characteristic red colour (“stylized red ABB logo”). Complainant’s ABB trade marks are registered and protected for a broad range of goods and services in classes 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 18, 19, 20, 21, 25, 26, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. Complainant’s ABB mark is also registered in Asia, in particular in China, Hong Kong, SAR of China and in Malaysia.
Complainant and its affiliated companies are owners of over 300 domain names containing its trade mark ABB, including all generic TLDs as well as all relevant country-code TLDs. In particular, Complainant and its affiliated companies are owners of the following domain names: <abb.com>; <abb.org>; <abb.net>; <abb.info>; <abb.biz>; <abb.ch>; <abb.us>; <abb.cn>; <abb.hk>; <abb.com.my>; <abb.com.cn> and <abb.com.hk>.
Complainant produces and sells a massive variety of products and services in the field of electric power generation, transmission and distribution, industrial and building systems. In particular, Complainant produces and sells all kinds of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, contactors and overload relays, switches, circuit breakers and surge protectors.
Respondent’s domain name is <abb-hk.com> and it was registered on December 27, 2006.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant contends that the disputed domain name <abb-hk.com> is identical or confusingly similar to Complainant’s ABB mark in which it has rights. The disputed domain name fully incorporates the ABB trade mark, with the addition of the letters “hk”. The letters “hk” form a well known abbreviation for Hong Kong, SAR of China and are a generic regional term. Complainant contends that the addition of a generic term to a well known trade mark in a domain name does not eliminate confusion. Complainant cites ABB Asea Brown Boveri Ltd v Quicknet,
WIPO Case No. D2003-0215; America Online, Inc. v Viper,
WIPO Case No. D2000-1198; America Online, Inc. v East Coast Exotics,
WIPO Case No. D2001-0661; Red Bull GmbH v. Craig Jackson,
WIPO Case No. D2002-0068; ABB Asea Brown Boveri Ltd v. SWX Teleinformatics Services,
WIPO Case No. D2007-0082; and ABB Asea Brown Boveri Ltd v ASIAINDEX,
WIPO Case No. D2007-0138. Further, Complainant contends that the addition of the “.com” generic TLD cannot distinguish the disputed domain name from the ABB mark. The names “ABB-HK” and “ABB-HK.COM” are recognized by Complainant’s customers, business partners and employees as a distinctive sign of Complainant and the ABB Group of companies. The name “ABB-HK” indicates an involvement of Complainant and the ABB Group in the products and/or services offered under this name, in Asia or in other parts of the world, and in particular in Hong Kong, SAR of China. Therefore, the disputed domain name <abb-hk.com> must be seen in this connection and also in light of Complainant’s other registered domain names such as <abb.hk> and <abb.com.hk>. Consequently, Complainant contends that Internet users are likely to be misled or confused as to Complainant’s relationship to, affiliation with, or endorsement of, the website “www.abb-hk.com” which can be located through the disputed domain name.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
1. Respondent has no trade mark or service mark rights for the mark ABB. The disputed domain name consisting of the combination of the elements ABB and HK are not names which traders would legitimately choose unless seeking to create the impression of an association with Complainant, its well known trade mark ABB, its respective business and domain names. The disputed domain name has been registered on December 27, 2006 whilst the trademark rights in the sign ABB of Complainant existed long before the said registration. Respondent is using Complainant’s trade mark ABB without Complainant’s consent. Complainant has not licensed or otherwise permitted Respondent to use any of the ABB marks. The allegedly existing company ABB Electric Group Limited mentioned on the “www.abb-hk.com” website does not belong to Complainant or the ABB Group of companies. Respondent has been illegally offering counterfeit goods under the trade mark ABB on the website “www.abb-hk.com” and this act could not confer any rights or legitimate interests on Respondent in respect of the disputed domain name.
2. Respondent is not commonly known by the disputed domain name. Respondent has registered the disputed domain name only on December 27, 2006 and prior use of the ABB mark or the ABB-HK mark by Respondent is not known. In contrast, Complainant has been using the ABB mark in similar domain names such as <abb.hk> and <abb.com.hk> for a long time.
3. Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website. Complainant contends that Respondent is not making a legitimate non-commercial or fair use of the domain name <abb-hk.com>. Respondent has not only illegally used the trade mark ABB in their domain name but also adopted without consent the business name of Complainant and used it in the name of the fictitious company ABB Electric Group Limited. Respondent has also used without consent the well known and distinctive stylized red ABB logo on its website “www.abb-hk.com”. Respondent has also copied the whole appearance of the products of Complainant and offered for sale these counterfeits on its website “www.abb-hk.com”.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered by Respondent in bad faith for the following reasons:
- Complainant contends that the level of recognition of the ABB trade mark by the relevant public particularly at Respondent’s domicile – Hong Kong, SAR of China and China – is extremely high. Thus, Respondent must be aware of the existence of Complainant’s trade mark ABB and its rights in the mark at the time of registration. The fact that Respondent has registered a domain name reflecting a well known trade mark without having any apparent right to use the trade mark is indicative that Respondent has registered the disputed domain name in bad faith.
Complainant contends that the disputed domain name is being used by Respondent in bad faith for the following reasons:
- Respondent has slavishly copied Complainant’s ABB products and offered them on sale on its website; used the distinctive well known stylized red ABB logo which belonged to Complainant on its website; incorporated the ABB mark in the name of the company ABB Electric Group Limited which is a fictitious company that does not exist; and applied a confusingly similar mark ARB on the slavishly copied products offered for sale on the website “www.abb-hk.com”. Based on this fact, Complainant contends that Respondent’s sole intention was to attract for commercial gain consumers on the Internet to its website “www.abb-hk.com” which offered counterfeits, by creating a likelihood of confusion with Complainant’s ABB mark as to source, sponsorship or endorsement of Respondent’s website. Consequently, Complainant contends that Respondent is holding and using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the ABB mark in many countries throughout the world since it first obtained registered trade mark rights in 1988 in Switzerland. Complainant has also adduced evidence to show that it has registered trade mark rights in the ABB mark in Asia particularly, in Hong Kong, SAR of China and Malaysia since 2005. Complainant has shown that it has a substantial business presence in Asia particularly in Hong Kong, SAR of China and in mainland China. Consequently, its ABB mark has attained substantial notoriety and fame in these countries outside of Europe and the United States of America.
The disputed domain name consists of Complainant’s mark ABB in its entirety and two letters in the alphabet “hk” attached to the back separated by a hyphen. In assessing the degree of similarity between Complainant’s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s ABB mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products and services.
The Panel finds that Complainant’s ABB mark has no descriptive significance to the goods or services offered under it and through long period of exclusive use, it has become distinctive of Complainant and the ABB Group of companies. It is highly distinctive and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “ABB” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts Complainant’s contention that the two letters “hk” establish geographic description and they do not provide additional specification or sufficient distinction from Complainant or its trade mark ABB. The Panel finds that the addition of the two letters “hk” to the name “ABB” does not serve to distinguish it from Complainant’s ABB mark. In fact, the Panel finds that the addition of the two letters “hk” serves to suggest a geographical location of Complainant’s business, which increases the level of confusion of Internet users as Internet users may confuse Respondent’s website for Complainant’s official website devoted to its customers in Hong Kong, SAR of China. The confusion created by Respondent’s domain name is further heightened by the fact that Complainant is the registered owner of domain names such as <abb.hk> and <abb.com.hk> and Complainant has been using these domain names on the Internet to promote its business.
Bearing in mind in particular the reputation of Complainant’s trade mark and the distinctive character of the name “ABB” in Complainant’s mark; the dominant component of the disputed domain name; the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <abb-hk.com> is confusingly similar to a trade mark in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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 Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “abb-hk” in its business operations. Although the name of the company whose webpage is accessible under the disputed domain name is ABB Electric Group Limited, Respondent has not provided any evidence to show that it has legitimately adopted the name ABB (which belongs to Complainant) in its company name;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. In fact, there is evidence that Respondent has slavishly copied the appearances of Complainant’s products, applied a confusingly similar trade mark ARB on these products and offered them for sale on its website. Such use on the part of Respondent of the disputed domain name cannot possibly constitute a use with a bona fide intent to offer goods or services on the Internet;
4. Complainant and its trade mark ABB enjoy a substantial reputation with regard to its electrical apparatus and products manufactured and sold since 1988. Consequently, in the absence of contrary evidence from Respondent, the ABB trade mark is not one that traders would be likely to adopt other than for the purpose of creating an illegitimate impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant enjoys a long and widespread reputation in its ABB trade mark with regard to its electrical apparatus business. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. More particularly, Complainant has demonstrated that it has a long business presence in Asia particularly Hong Kong, SAR of China and China. Therefore, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trade mark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the ABB trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders would be likely to adopt other than for the purpose of creating an illegitimate impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website which offers under an apparently fictitious company (ABB Electric Group Limited) named after Complainant, similar products (electrical apparatus) with appearances that have been slavishly copied from Complainant and which bear a confusingly similar trade mark ARB. Given the long and widespread reputation of Complainant’s ABB mark, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s widely known and distinctive trade mark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website “www.abb-hk.com” is either Complainant’s Hong Kong, SAR of China site or the site of official authorized partners of Complainant, while in fact it is neither of these. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant’s ABB trademark and this constitutes a misrepresentation to the public that Respondent’s website is in one way or the other associated or connected with Complainant’s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
For all 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-hk.com> be transferred to the Complainant.
Susanna H. S. Leong
Dated: November 30, 2007