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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd.

Case No. D2007-1466

1. The Parties

Complainant is ABB Asea Brown Boveri Ltd., of Switzerland, represented by KRSW WEINMANN, Switzerland.

Respondent is A.B.B Transmission Engineering Co., Ltd., China.

2. The Domain Name and Registrar

The disputed domain name <abb-cn.com> is registered with HiChina Web Solutions Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2007. On October 9, 2007, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On October 10, 2007, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the language of the Complaint, Complainant filed a submission for the language of the present proceeding to be in English. 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 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 23, 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 trademark registrations in the name of Complainant dates back to 1988. The ABB sign is protected by different trademarks 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 trademarks 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 trademark 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 was registered on March 13, 2007.

According to the registrar’s WhoIs database, Respondent in this administrative proceeding is a company mentioned as “A.B.B Transmission Engineering Co., Ltd.” and domiciled at an address mentioned as “shanghaishisipinglu755nong2hao1314shi, shanghaishi, shanghai, 200885, China”. Investigation by the local representative of Complainant, the Chinese law firm Eccles & Lee (Solicitors / Patent and Trademark Attorneys, Hong Kong), have revealed that the address appearing in the registrar’s Whois database is the following: “Shanghai City Siping Road, Lane 755, No. 2, Room 1314”. However, this address seems to be incorrect because at the said address there is no Room 1314. Further investigation showed that such a room exists at the address of “Shanghai City Siping Road, Lane 775, No. 2, Room 1314”. Here the investigator found a company with the Chinese name 上海埃布伯传动工程设备有限公司. This name is translated as follows: “Shanghai “Ai Bu Bo” [no meaning] Transmission Engineering Co., Ltd.” A search was subsequently conducted at the relevant Administration for Industry and Commerce (AIC) and a company record of the company called “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd.” was obtained. This official record shows that this company was only recently established on 15 January 2007. According to the official record, the business scope of this company is “selling transmission engineering equipments, electromechanical equipment, electrical machinery equipments, sensor equipments, measure equipments.” Based on the facts at hand, the company listed in the registrar’s WhoIs database for the disputed domain name <abb-cn.com> under the English name “A.B.B Transmission Engineering Co., Ltd.” seems to be the company registered as “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd.”.

The disputed domain name <abb-cn.com> is not active yet. However, the business scope of Respondent clearly shows that the intended products (all belonging to class 9) and/or services of Respondent are identical to the products and/or services offered and protected by several ABB–trademarks.

Complainant has tried to contact Respondent several times. However, based on the aforementioned facts, it is not surprising that no such contact was possible. Complainant asked the local Chinese law firm Eccles & Lee (Solicitors / Patent and Trademark Attorneys, Hong Kong) to send a Cease & Desist Letter to Respondent. This letter was sent by courier, fax and e-mail on July 4 2007. Therein Respondent was given 7 days to respond to the Cease & Desist Letter and 14 days to file an application to transfer the disputed domain name <abb-cn.com> to Complainant. However, no reply was received from Respondent by August 1, 2007. Accordingly, the legal representative of Complainant in China attempted to contact Respondent several times by phone using the indicated phone number according to the Registrar WhoIs database but Respondent did not answer the calls. Complainant has not received any response from Respondent.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Complainant asserts that it is known under the abbreviation “abb”, a distinctive sign which is used to identify companies belonging to Complainant and the ABB Group of companies. Complainant’s further asserts that it has strong presence in Asia, in particular in China and Hong Kong, SAR of China and that its ABB mark is a well-known or famous trade and service mark in many countries throughout the world including China and Hong Kong, SAR of China. Accordingly, Complainant is the owner of the trademark ABB, among others, for all kinds of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (protected in class 9), in particular for transmission engineering equipments, electromechanical equipments, electrical machinery equipments, sensor equipments, measure equipments as it is also claimed in the business scope of Respondent. By virtue of extensive use of the ABB trademarks by Complainant and the ABB Group in China, the ABB trademarks and domain names comprising the trademark ABB have gained substantial goodwill and reputation and are synonymous with Complainant and the ABB Group of Complainant. Upon seeing the letters “abb”, in particular in the field of engineering, the relevant public immediately thinks of the famous ABB trademarks of Complainant and the ABB Group. The relevant public automatically associates the goods and/or services provided under the trademark ABB respectively under a website consisting primarily of the trademark ABB (like the disputed domain name <abb-cn.com>) to emanate exclusively with the ABB Group and no others. Complainant’s trademark registrations clearly predate the registration of the disputed domain name by Respondent.

The disputed domain name <abb-cn.com> fully incorporates the ABB trademark, with the addition of the generic word “cn” to the mark. The letters “cn” obviously stand for China. “CN” is a very well-known abbreviation for China and it is obviously a generic regional term (officially used for postal services and for the top level domain of China, namely “.cn”). The addition of a generic term to a well known trademark in a domain name does not eliminate confusion. Complainant cites ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215, where the disputed domain name consisted of the ABB trademark to which the general term “control” was added, a relatively neutral addition with limited ability to distinguish the disputed domain name from the trademark. In that decision, reference was made to America Online, Inc. v. Viper, WIPO Case No. D2000-1198 in which the Panel found <aolgirls.com> to be confusingly similar to the trademark AOL. Complainant also cites America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 (<aolwomen.com> found confusingly similar to the AOL trademark); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 (<nokiagirls.com> found confusingly similar to NOKIA mark), and Red Bull GmbH v. Craig Jackson, WIPO Case No. D2002-0068 (<redbullradio.com> found confusingly similar to REDBULL). This case law has been confirmed in the two recent cases of this year, ABB Asea Brown Boveri Ltd. v. SWX Teleinformatics Services , WIPO Case No. D2007-0082 (<abbfund.com>), and ABB Asea Brown Boveri Ltd. v. ASIAINDEX, WIPO Case No. D2007-0138 (<abbfund.biz>), where the disputed domain name consisted of the ABB trademark to which the general term “fund” was added. Furthermore, Complainant contends that the addition of the “.com” generic TLDs cannot distinguish the domain name at issue from the mark and cites Boehringer Ingelheim Pharma GmbH & Co. KG v. Reps, Inc., WIPO Case No. D2006-0459. Accordingly, the name “abb-cn” respectively “abb-cn.com” is recognized by Complainant’s customers, business partners and employees as a distinctive sign of Complainant respectively the ABB Group. The name “abb-cn” directly indicates an involvement of Complainant respectively the ABB Group in the products and/or services offered under the respective name, in Asia or in other parts of the world, and in particular in China. Furthermore the disputed domain name <abb-cn.com> must also be seen in connection with Complainant’s domain names <abb.cn> and <abb.com.cn>. These actively used domain names of Complainant (<abb.cn> refers to the website “www.abb.com.cn”) use the same two respectively three elements: the trademark ABB, the generic regional term “cn” as well as the generic term “com” (for commercial). Internet users will therefore be likely to be misled or confused as to Complainant’s relationship to, affiliation with, or endorsement of, the domain name <abb-cn.com>.

Accordingly, Complainant contends that the disputed domain name <abb-cn.com> is identical or at least confusingly similar to the ABB trademarks in which Complainant has rights.

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 trademark or service mark rights for ABB.

The domain name consisting of the combination of the elements “abb” and “cn” are not names which traders would legitimately choose unless seeking to create the impression of an association with Complainant and its well-known trademark ABB and the respective business and domain names. The domain name <abb-cn.com> has been registered on March 13, 2007, but the trademark rights in the sign ABB of Complainant already exist much longer. Complainant, in particular the IP department of its affiliate ABB Schweiz AG, Intellectual Property (CH-LC/IP), is monitoring its trademark ABB worldwide. Based on the information at hand, it can be excluded that Respondent respectively the people behind the domain name <abb-cn.com> have acquired better trademark or service mark rights in the sign “abb” respectively “abb-cn” which would allow them to use the domain name <abb-cn.com>. In particular, according to the official record of “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd.”, this company was only recently established on 15 January 2007. Accordingly, Respondent respectively the people behind the domain name <abb-cn.com> do not even claim to have trademark rights for the sign “abb” of their own. On the contrary: Respondent is officially registered under a different business name, namely “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd.”. In the past, Respondent has never used or commented on the sign “abb” as a trademark, trade name or other trade symbol, or descriptive or informative manner to describe Respondent’s goods or services, or any others. Furthermore, Respondent did not make any preparations to use the domain name in connection with a bona fide offering of goods or services. On the contrary, Complainant contends that Respondent intentionally acts as if they belong to Complainant respectively to the ABB Group – which easily results from the fraudulent use of Complainant’s trademark in the fictive business name “A.B.B Transmission Engineering Co., Ltd.”. Respondent is using Complainant’s trademark ABB in the fictive business name “A.B.B Transmission Engineering Co., Ltd.” without Complainant’s consent. Complainant has not licensed or otherwise permitted Respondent to use any of the ABB trademarks. The registration and imminent use respectively the blocking of the domain name <abb-cn.com> is therefore a clear violation of the trademark rights of Complainant.

2. Respondent is not commonly known by the disputed domain name.

Respondent registered the disputed domain name <abb-cn.com> on March 2007. Prior use of the mark ABB respectively the name “abb-cn” by Respondent is not known. However, it has to be emphasized again that Complainant has already been using the similar domain names <abb.cn> and <abb.com.cn> for a long time. It is evident that Complainant’s trademark registrations clearly predate the registration of the disputed domain name. Respondent has therefore not been commonly known by this domain name.

3. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

Respondent intentionally attempts to attract, for commercial gain, Internet users to a future website of Respondent and is obviously not making a legitimate non-commercial or fair use of the domain name <abb-cn.com>. On the contrary, Complainant contends that Respondent’s intention is obviously to mislead consumers for commercial gain. Respondent intentionally tries to divert consumers in using Complainant’s trade and service mark ABB for its domain name <abb-cn.com> respectively for its fictive company name “A.B.B Transmission Engineering Co., Ltd.”. Respondent respectively the responsible people behind the domain name <abb-cn.com> are not only illegally using the trademark ABB for their domain name, but also for the company name of the allegedly existing company “A.B.B Transmission Engineering Co., Ltd.”. Any unauthorized use of the ABB trademarks and/or domain names comprising the letters “abb” to market and promote goods and/or services, in particular in the field of the main activities of Complainant and the ABB Group (like in the field of engineering equipment as well as electrical and electromagnetic equipment), seeks to take financial advantage of the considerable goodwill and reputation of Complainant’s ABB trademarks. To summarize, based on the facts at hand it is obvious that Respondent intentionally violates and tarnishes Complainant’s trade and service mark ABB. Furthermore, Respondent’s registration of the disputed domain name has interfered with Complainant’s use of the trademark ABB for different other “.com” domain names, in particular in connection with Complainant’s domain names <abb.com>, <abb.cn> and <abb.com.cn>.

Registered and Used in Bad Faith

Complainant contends that Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

1. By registering and using the domain name <abb-cn.com>, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s future website or other on-line location, by creating a likelihood of confusion with Complainant’s trademark ABB as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of the products on Respondent’s website or location.

2. Respondent registered a domain name reflecting a well-known trademark ABB without itself having any apparent right to use such trademark. Based on the facts at hand it is obvious that Respondent, at the time of the domain name’s registration (in March 2007) was well aware of the ABB trademarks of Complainant. The level of recognition of the ABB trademarks by the relevant public, particularly at Respondent’s alleged domicile in China, is extremely high. This is true for the consumers of the respective products (which are not mass products but products for specialists). However, this is even truer for the traders (like Respondent) with the respective products.

3. Respondent intends to sell the same goods as Complainant (in particular transmission engineering equipments, electromechanical equipments, electrical machinery equipments, sensor equipments, measure equipments). By doing this, Respondent must obviously know its major competitor (in particular in the market for identical goods). Since Complainant is the market leader for the respective products of Respondent, Respondent must know of Complainant.

4. Respondent has obviously the intention to sell identical products under the identical trademark (ABB) of the market leader and Respondent must know of Complainant. In fact, because Respondent knows of Complainant and the high reputation of the respective ABB products, Respondent plans to copy the ABB products. It seems to be evident that trademark and product piracy are intended by Respondent in the near future. Accordingly, in a similar pending WIPO Complaint with regard to the domain name <abb-hk.com> and the respective active website “www.abb-hk.com”, counterfeited goods of Complainant’s original ABB products are already offered on that website.

5. Respondent registered the disputed domain name with constructive notice of Complainant’s Chinese trademark registrations. It is evident that Respondent must have known of Complainant’s ABB trademark rights in view of Complainant’s long use and many trademark registrations of the same worldwide, and in particular also in China. Respondent can not reasonably claim that they did not know the well-know trademark ABB (in particular doing business in the identical business sector). However, even in the implausible case that Respondent would argue that they did not know the well-known ABB trademark of Complainant, Respondent would have been negligent not to check prior rights of third parties before registering a domain name. Complainant cites Columbine JDS Systems, Inc v. Jin Lu e-Resolution, Case No. AF-0137, in which the Panel states that “A US business person must be presumed to have knowledge of the existence of the Trademark Register of his own country, and, as a prudent businessman, should make a search of such register before embarking on a business endeavor involving a domain name. We find that the failure to make even a rudimentary effort to undertake such a search to be negligent.

6. Respondent used the company name “A.B.B Transmission Engineering Co., Ltd.” (which includes the identical trademark ABB of Complainant) for the registration of the domain name <abb-cn.com>. Investigations have shown that this seems to have been the only use of this fictive company name so far. In particular, Respondent does not yet use the identical trademark ABB for its products. In fact, Respondent has registered the company name “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd.”. And the characteristic aspect of this official company name is obviously the sign “Ai Bu Bo”. The three Chinese signs for “Ai Bu Bo” have the meaning of:

“Ai” = dust

–“Bu” = cloth

–“Bo” = uncle.

7. The official Chinese name of Respondent is therefore “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd” and this name appears to have no connection at all with Complainant’s ABB trademark.

8. Respondent did not answer the Cease & Desist Letter of Complainant. Respondent did also not answer the different phone calls of Complainant. Complainant contends that Respondent is obviously trying to hide from Respondent.

9. The mere holding of an infringing domain name without active use is bad faith and Complainant cites Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228; and DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232 which concluded that Respondent’s passive holding of the domain name satisfies the requirement of Policy 4(a)(iii). Complainant contends that Respondent intends to prevent Complainant from registering the disputed domain name and Respondent intends to disrupt Complainant’s business or to pressure Complainant to buy the domain name from Respondent for a price.

10. Considering Respondent’s lack of rights or legitimate interests in the disputed domain name, having regard to the fame of the ABB marks and lack of any conceivable good faith use of the disputed domain name by Respondent, and in particular having regard to the identical products claimed by the business scope of Respondent, it must be concluded that Respondent’s sole intention was to attract – for (illegal) commercial gain – consumers (in particular Internet users) to Respondent’s commerce by using the infringing domain name <abb-cn.com>. Such behavior is fraudulent, because it creates a likelihood of confusion with Complainant’s mark ABB as to the source, sponsorship, affiliation, or endorsement of Respondent’s products.

11. In the case at hand, the use of Complainant’s mark ABB is obviously intended by Respondent. The trademark ABB shall attract people to their already existing or later produced counterfeited goods and shall create the necessary confidence for the consumer to buy these products.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Complainant confirms that there is no agreement between Complainant and Respondent to the effect that the proceedings should be in English. However, Complainant contends that the administrative proceedings should continue to be conducted in English for the following reasons:

1. Respondent is conversant and proficient in the English language.

– For the registration of the disputed domain name, Respondent has used an English name “A.B.B. Transmission Engineering Co. Ltd.” instead of its real and registered Chinese company name translated to mean “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd.”.

– The disputed domain name <abb-cn.com> is in English and in particular, the English geographical indication “cn” stands for China.

– Respondent represents itself to be a company in the field of “Transmission Engineering” which is related to electric power transmission, the core business of Complainant and its ABB Group of companies. Complainant contends that Respondent by deliberately referring to an allegedly existing company with an English name in the transmission engineering business that bears Complainant’s well known mark ABB must at least have some knowledge of the English language.

– The technology and the business in the field of “Transmission Engineering” are highly sophisticated and the market is international in nature. Therefore, to be in this line of business, Respondent must know English.

– It is a well known fact that trademark pirates in the electrical industry use the English language in the sale of their goods so as to massively increase the potential customers of their counterfeited goods.

– Chinese electrical engineers, and also the people involved in the services and sale of products in the field of “Transmission Engineering,” must have working knowledge of the English language.

– Respondent’s email address in “domain@hotsales.net” and the word “hotsales” is an English word.

2. The Complainant further contends the choice of the language of the Registration Agreement is Irrelevant in the Application Proceeding of the Disputed Domain Name with the Registrar.

– Registrar’s website for a domain name applicant is in Chinese as well as in English.

– In particular, the Registrar’s website provides for domain names to be registered in English too. There appears to be no difference if the application is made in Chinese or English.

– Complainant has contacted the Registrar before filing the Complaint in order to be informed about the applicable registration agreement but Complainant did not receive a response from the Registrar mostly probably because of the applicability of data protection laws.

– Although Complainant has no information on the disputed domain name application by Respondent with the Registrar, Complainant contends that it has to be assumed that the choice of the language of the registration agreement is irrelevant in the application proceeding and that Respondent would also have agreed to the English language.

3. Complainant has it says exhausted all efforts to contact Respondent.

– Complainant has made all possible efforts in contacting Respondent even in Chinese but Respondent has never answered. Complainant contends that the failure to answer has nothing to do with the language.

Complainant asserts that considering all the above circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case.

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that Complainant has taken all reasonable steps to bring the present proceeding to Respondent’s attention. Respondent has not responded to Complainant’s communications and thus, it was not possible for Complainant to come to an agreement on the issue of the language of the proceeding with Respondent. In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name, the name of Respondent’s allegedly operational company in Shanghai and the fact that at the Registrar’s website, registration of the disputed domain can be made in either Chinese or English. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. Respondent has also been notified of the administrative proceeding in both English and Chinese. However, Respondent has failed to respond to Complainant’s contentions.

Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Administrative Panel will be rendered in English.

6.2 Substantive Elements of the Policy

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, Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

2. 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 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 there from, 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:

(i) Identical or Confusingly Similar

Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the ABB mark in many countries throughout the world since it first obtained registered trademark rights in 1988 in Switzerland. Complainant has also adduced evidence to show that it has registered trademark 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 “cn” attached to the back separated by a hyphen. In assessing the degree of similarity between Complainant’s trademark 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 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 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’ or traders’ attention, particularly consumers or traders in the specialized trade of transmission engineering. The Panel accepts Complainant’s contention that the two letters “cn” is recognized geographic description referring to China and they do not provide additional specification or sufficient distinction from Complainant or its trademark ABB. The Panel finds that the addition of the two letters “cn” 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 “cn” 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 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.cn>; <abb.com.cn>; <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 trademark 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-cn.com> is confusingly similar to a trademark 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-cn” in its business operations. In fact, the name of Respondent’s allegedly operational company is “Shanghai Ai Bu Bo Transmission Engineering Co., Ltd” which does not correspond with “abb-cn”. Respondent also did not provided any evidence to show that it has legitimately adopted the name “ABB” (which belonged to Complainant) in its company name;

2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

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;

4. Complainant and its trademark ABB enjoy a substantial reputation with regard to its electrical apparatus and products in transmission engineering manufactured and sold since the 80s. Consequently, in the absence of contrary evidence from Respondent, the ABB trademark is not one that traders could legitimately adopt other than for the purpose of creating an 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 Respondent has registered or 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 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 Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of 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 trademark with regard to its electrical apparatus in transmission engineering. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks 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 trademark 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 trademark, being a highly distinctive trademark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an 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, 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.

Although Respondent’s domain name is currently inactive, previous UDRP decisions have held that passive holding of a domain name can in certain circumstances constitute use of the domain name in bad faith. 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 trademark, 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-cn.com” is either Complainant’s Chinese 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. It is therefore most pertinent that Respondent explain his actions but Respondent has chosen not to respond to Complainant’s allegations.

Consequently, the Panel finds that 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.

7. Decision

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-cn.com> be transferred to Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: December 7, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1466.html

 

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