1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd., ABB Schweiz AG, C/O Ms Natalie Eliasson, Intellectual Property CH-LC/IP, of Baden, Switzerland, represented by Zimmerli, Wagner & Partner AG of Switzerland.
The Respondent is Quicknet, C/O Mr. Tim Bach, Salem, of Oregon, United States of America; C/O Mr. Tim Bach, of New London, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name <abbcontrol.com> is registered with The Registry at Info Avenue dba IA Registry, Fort Mill, South Carolina 29716, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2003. On March 19, 2003, the Center transmitted by email to The Registry at Info Avenue dba IA Registry a request for registrar verification in connection with the domain name at issue. On March 19, 2003, The Registry at Info Avenue dba IA Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 March 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2003.
The Center appointed Peter G. Nitter as the sole Panelist in this matter on May 12, 2003. 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
The domain name in question was registered on May 23, 2002.
ABB Asea Brown Boveri Ltd. was established on January 4, 1988. The Complainant is known under the abbreviation ABB, which is used to identify companies belonging to the ABB Group.
The Complainant is one of the largest global companies on the market for electric power generation, transmission and distribution, industrial and building systems. Of the 2002 Group’s total revenues of roughly 18 billion USD, 56% is generated in Europe, 23% in the Americas and 21% in Asia, Middle East and Africa.
In a survey on the world’s most respected companies, carried out by the Financial Times and PricewaterhouseCoopers in 2002, ABB is ranked number 33 out of 90 companies. In the category “Engineering Companies”, ABB is ranked number 3 out of 18 companies.
The ABB Group of companies operates in more than 100 countries and particularly in the USA. The ABB Group employs about 139.000 people. Most affiliated companies bear the group’s characteristic element ABB in the registered companies’ names.
Simultaneously with the foundation of the company, a world wide trademark protection program for the company name ABB was started. At present the Complainant is the owner of numerous registrations for the trademark ABB in all major countries world wide. The earliest trademark registrations in the name of the Complainant date back to 1988. Reference is made to annex F and G to the Complaint.
The Complainant and its affiliated companies are owners of the following domain names: <abb.com> <abb-control.com>, <abb.org>, <abb.net>, <abb.ch>.
The Complainant provides a broad selection of control products and systems. On January 19, 2000, the Complainant’s 100% subsidiary, ABB Inc. Low Voltage Products and Systems (formerly ABB Control Inc.), registered the domain name <abb-control.com>. This Group Control division of the Complainant manufactures and distributes low voltage electrical products and systems in the U.S market.
The disputed domain name <abbcontrol.com> once belonged to ABB Control Canada, a subsidiary of ABB. In 1999, ABB Control Canada moved its website to “www.abb.ca” and dropped the <abbcontrol.com> domain name.
On December 11, 2002, the Complainant transmitted a cease and desist letter to the Respondent’s e-mail address, but the Respondent failed to respond. On January 14, 2003, the Complainant sent another cease and desist letter to the Respondent’s email-address, again without receiving an answer. The same date a cease and desist letter was also sent by courier to the Respondent’s address. The letter could not be delivered, according to the company DHL, due to the fact that apparently no such company was domiciled at such address.
5. Parties’ Contentions
A. Complainant
Identity or confusing similarity
The Respondent’s domain name incorporates the Complainant’s well known name and trademark ABB combined with the generic term “control”. Generic terms cannot serve as a distinguishing feature. The name abb-control is recognized by the Complainant’s customers as an identification for one of the Complainant’s divisions and for its respective products and systems. The addition of a generic term to a well known trademark in a domain name does not eliminate confusion. The Complainant refers to several WIPO cases to support this, including Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 where adding the generic term “girls” to the NOKIA trademark was considered a rather neutral addition that would not distinguish the domain name from the trademark.
The Complainant claims that since the mark ABB is well known and since the mark is incorporated in its entirety in the disputed domain name and that the disputed domain name is a combination of the identical prefix ABB and the generic suffix “control”, internet users are likely to be misled or confused as to the Complainant’s relationship to, affiliation with, or endorsement of, the pornography-related websites which can be located through the disputed domain name.
The Complainant holds that the disputed domain name <abbcontrol.com> is confusingly similar to the Complainant’s ABB marks, in which the Complainant has exclusive rights.
Rights or legitimate interests
The Respondent has no connection or affiliation with the Complainant. The Complainant has never licensed, authorized or otherwise permitted the Respondent, explicitly or implicitly, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent’s domain name is not used in connection with a bona fide offering of goods or services. The use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes the ABB-mark.
The Respondent has not been commonly known by the disputed domain name. The domain name does neither bear any logical relation to the actual business of the Respondent.
The Respondent has not made any legitimate non-commercial or fair use of the disputed domain name.
The Respondent’s activities do not correspond to any of the circumstances set forth in the Policy paragraph 4 c).
Registration and use in bad faith
Taking into consideration that the Complainant’s company name and trademarks are known worldwide and have been well established for many years, the Respondent knew or should have known of the Complainant’s trademark rights at the time of registration.
The only plausible purpose for the Respondent’s registration and use of the disputed domain name is to attract for commercial gain internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s ABB mark as a source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
The use of ABB as part of the domain name for a pornography related website tarnishes the Complainant’s existing marks, which is also evidence of bad faith. The Complainant refers to ICANN Panels which have held that the use of another’s mark in a domain name for pornography-related websites is not a legitimate use of the disputed domain name, but reflects bad faith.
The Complainant holds that the Respondent has registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests, which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
The domain name is <abbcontrol.com>.
ABB is the registered trademark of the Complainant. The trademark is registered in a large number of jurisdictions around the world and is very well-known.
The disputed domain name consists of the trademark of the Complainant to which the general term “control” is added. The ability of the word “control” to distinguish the disputed domain name from the trademark of the Complainant is limited. The word “control” is a relatively neutral addition.
Reference is made to America Online, Inc. v. Viper, WIPO Case No. D2000-1198 in which <aolgirls.com> was found confusingly similar to the trademark “aol”, America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 in which <aolwomen.com> was found confusingly similar to the “aol” trademark, WIPO Case No. D2000-0102 in which <nokiagirls.com> was found confusingly similar to “nokia” and Red Bull GmbH v. Craig Jackson, WIPO Case No. D2002-0068 in which <redbullradio.com> was found confusingly similar to “redbull”.
The domain name <abbcontrol.com> is thus found to be confusingly similar to the trademark ABB in which the Complainant has rights.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a) of the policy.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating any such mark.
The use of the disputed domain name by the Respondent is not done in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name.
There is no evidence before this Panel in this case that the Respondent has any legitimate interest in the domain name <abbcontrol.com> for the purposes of paragraph 4 c) of the Policy.
The inclusion of the generic term “control” in the disputed domain name does not create a legitimate interest.
The Panel draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interests in the disputed domain name.
The ABB trademark is very well-known internationally. It cannot be reasonably argued that the Respondent could have been unaware of the trademark when registering the disputed domain name.
An internet user who enters <abbcontrol.com> is likely to expect that he will arrive at a website belonging to the Complainant. On the pornography related website links are offered that invite users to access other pornographic sites. Against payment, hardcore pornographic images and movies can be downloaded or videos can be ordered. It can therefore be found that the Respondent by using the disputed domain name have intentionally attempted to attract, for commercial gain, internet users to the 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 website.
The use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith. Reference is made to America Online, Inc. v. Viper, WIPO Case No. D2000-1198,MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 and America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661.
The Panel concludes that the Complainant has established this element.
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, <abbcontrol.com> be transferred to the Complainant.
Peter G. Nitter
Sole Panelist
Dated: May 26, 2003
