1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd, Affolternstrasse 44, PO Box 3131, CH-8050 Zurich, Switzerland.
Represented by Mark H. Blair, Solicitor, 57 Lincoln’s Inn Fields, London WC2A 3L2, United Kingdom.
The Respondent is Mark Sheppard, Trading as Lucky Seven Domains, 5 Farman Street, Hove, East Sussex BN3 1AL, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is < abb.net>.
It is registered with Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Hendon, Virginia 20170, United States of America.
3. Procedural History
On December 8, 2000, the Complaint was filed with the WIPO Arbitration and Mediation Center by e-mail (with hard copy received on December 12, 2000). The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules.
On December 11, 2000, the Center acknowledged receipt of the Complaint.
On December 13, 2000, the Center requested registrar verification, and received the Registrar’s answer to that request on December 18, 2000.
On December 21, 2000, a formal requirements compliance review was completed pursuant to Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.
On the same date, a Notification of Complaint and Commencement of Administrative Proceeding was issued.
On January 8, 2001, the Center received an e-mail (with hard copy following on January 10, 2001) from the Respondent confirming receipt of the Notification of Complaint and Commencement of Administrative Proceedings. The Respondent also set out a Response to Statements and Allegations Made in Complaint.
On January 10, 2001, the Center acknowledged receipt of the Response.
On January 30, 2001, the sole panelist agreed to the appointment. As required by the Rules, he filed a Statement of Acceptance and Declaration of Impartiality and Independence. The facsimile was received on January 31, 2001.
On February 5, 2001, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties. The projected decision date was February 18, 2001.
4. Jurisdictional Basis For The Mandatory Administrative Proceeding
Paragraph 4 of the ICANN Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph. A copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Annex B to the Complaint.
Under Paragraph 4(a) of the ICANN Policy, a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:
(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 was registered and is being used in bad faith.
The Administrative Panel finds that the Complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.
5. Factual Background
The domain name at issue is <abb.net>.
ABB Group is the owner of the ABB and "ABB" logo trade marks world-wide "ABB Marks". The Complainant provided full details of its trademark registrations for the world-wide mark “ABB” and the “ABB” logo in Annex 4 to its Complaint.
The “ABB” Marks and trading name were adopted by the Complainant in 1998 following the merger of Brown Boveri and Asea and have been in constant use since that time.
“ABB” is a global technology group. The ABB Group of companies operates in more than 100 countries world-wide and employs approximately 164,000 people.
The ABB Group serves customers in a wide range of areas including power transmission and distribution; automation; oil, gas and petrochemicals; building technologies; and in financial services.
The Complainant is the holder of a large number of domain names incorporating the letters "ABB". The Complainant is the holder of the domain names <abb.com> and <abb.org>.
The Respondent is the registrant of the domain name <abb.net>, registered by Network Solutions, Inc.
The domain name <abb.net> does not resolve to a website or other on-line presence. However, as the complaint notes at p. 8, when www.abb.net is entered on an Internet search, a message is prompted which states that “… no site exists for that domain. This is either because the website is not ready or because the owner wishes to sell the domain.”
6. Parties’ Contentions
A. The Complainant contends that:
The relevant part of the domain name in issue is "ABB" in that it is clearly identical or confusingly similar to the various “ABB” Marks which are registered and owned by the Complainant world-wide. The Complainant contends further that the Trade Mark "ABB" is very well known and it would be unlikely that the Respondent would have been unaware of that fact.
The Complainant contends that the word "ABB" is an invented word which is an abbreviation of the Complainant's original company name 'Asea Brown Boveri' and as such is not a name which traders would choose unless seeking to create an impression of an association with the Complainant.
The Complainant states that it has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those “ABB” Marks.
The Complainant alleges that the domain name was acquired by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The complainant refers to the notice posted at "www.abb.net" as of 3 September 1999, quoted above.
The Complainant further contends that the Respondent intended to use the domain name in bad faith. As evidenced in Annex 6 to the Complaint, in the Respondent's e-mail of 6 October 2000, he refused to sell the <abb.net> domain name to “ABB” for the price of the out-of-pocket expenses resulting from the registration. Instead, he stated that he wished to be “indemnified for loss of the domain name itself” and as he would be giving up a “valuable asset”, he proposed that a GreatDomains.com appraisal be obtained.
The Complainant contends that the fact that the registration of the <abb.net> domain name has been parked since 3 September 1999, for a period of one year from the registration of the domain name is evidence that the Respondent does not intend to use the domain name for bona fide purposes.
B The Respondent contends that:
The Respondent contends that the elements (ii) and (iii) of paragraph 4(a) of the Uniform Policy are not present in his registration and use of <abb.net>.<Abb.net> and www.abb.net do resolve to a website, but it is one that is not specific to <abb.net>. It is a "holding" page that the Respondent uses for his customers' domains which have not developed a website yet.
The Respondent contends that "ABB" are three letters of the alphabet put side by side, which could be used for the purposes of an abbreviation or an acronym, but are rarely unique to one meaning.
The Respondent contends that domain names need not reflect a company or organization name. He contends further that it is entirely reasonable to register a domain name for use with a marketing campaign.
The Respondent contends that a short domain name, such as <abb.net>, is desirable for use as a name for a website, as it is easy to remember, unlikely to be misspelled and quick to type for the end-user. He contends that as a professional in the business of website hosting and programming, that he has a legitimate interest in the domain name <abb.net> for possible future use by either himself, or a client, or for resale.
The Respondent contends that the trade mark "ABB" is not very well known. He states that he had never heard of the Complainant prior to its representatives contacting him.
The Respondent contends that one of his motivations for purchasing the domain was possible resale, but that it was done without knowing of the existence of the Complainant or its trade marks.
7. Discussion And Findings
The Panel is constituted in order to determine whether the Respondent’s registration of the domain name at issue, <abb.net> complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999).
As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:
Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant contends that the domain name at issue is clearly identical or confusingly similar to the various “ABB” Marks which are registered and owned by the Complainant world-wide.
The Panel finds that the Complainant has proved this element. In its view, the domain name <abb.net> is identical to the "ABB" Marks, evidence of which has been adduced by the Complainant.
The Complainant further contends that it has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those “ABB” Marks.
The Panel agrees that Respondent has no rights or legitimate interests in respect of the domain name. The Complainant’s rights and legitimate interests in the name “ABB” are settled.
Thirdly, the Complainant contends that the domain name has been registered and is being used in bad faith.
The Panel is prepared to accept the Respondent’s representation that he was unaware of the existence of “ABB” when he registered the domain name. At the same time, the Panel notes that the name has been parked since September 3, 1999, and when contacted, the Respondent sought payment in excess of the out-of-pocket expenses directly related to the domain name.
In these circumstances, regardless of the Respondent’s initial intent, once apprised of ABB’s existence and its trademarks and the fact that they were identical to his registered name, the Respondent declined to transfer the name for less than valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
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