WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABB Asea Brown Boveri Ltd v. Mr. Gholami, Isfahan Micro Control Co. Ltd
Case No. D2012-0201
1. The Parties
The Complainant is ABB Asea Brown Boveri Ltd of Zurich, Switzerland, represented by Troller Hitz Troller & Partner, Switzerland.
The Respondent is Mr. Gholami, Isfahan Micro Control Co. Ltd of Isfahan, Islamic Republic of Iran, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <imc-abb.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2012. On February 6, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On February 7, 2012, OnlineNic, Inc. d/b/a China-Channel.com 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" or "UDRP"), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 1, 2012. The Response was filed with the Center on February 28, 2012.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 6, 2012. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant belongs to the ABB Group of companies, headquartered in Zurich, Switzerland. The ABB Group of companies is a global leader in power and automation technologies that enable utility and industry customers to improve performance while lowering environmental impact. It operates in more than 100 countries and employs about 116,000 people. The Complainant's annual revenue exceeded USD 31.5 billion in 2010.
The Complainant is registered owner of more than 6,900 trademark registrations for ABB and ABB variants in more than 200 countries around the world, including in the United Kingdom and Iran, where the Respondent allegedly resides and is doing business, inter alia International Trademark Registration No. 781685 ABB and Iran Trademark Registration No. 62884 ABB covering various goods (hereinafter referred to as the "ABB Marks"). The ABB Marks were registered prior to the transfer of the disputed domain name to the Respondent and prior to the creation date of the disputed domain name. The ABB Marks have already been found to be well-recognized, distinctive and famous by previous panels (cf. e.g. ABB Asea Brown Bover Ltd v. ASIAINDEX, WIPO Case No. D2007-0138; ABB Asea Brown Bover Ltd v. A.B.B. Transmission Engineering Co., Ltd., WIPO Case No. D2007-1466; ABB Asea Brown Bover Ltd v. Alexander Schiesser, WIPO Case No. D2009-0829; ABB Asea Brown Bover Ltd v. sevenstar sevenstar sevenstar, WIPO Case No. D2007-1459; ABB Asea Brown Bover Ltd v. PrivacyProtect.org/Venkateshwara Distributor Private Limited, Caas Serviced Office solutions, WIPO Case No. D2010-1635).
Prior to filing the Complaint in the present proceeding, the Complainant sent a registered demand letter to an individual named "S. Bozorgi", who was the registered owner of the disputed domain name on October 12, 2011. This letter was returned to the sender due to its incomplete postal address. Furthermore, the domain owner did not respond to an email reminder dated October 26, 2011. On November 17, 2011, the Complainant informed the registrar of the disputed domain name that the data was incomplete and inaccurate, and asked the registrar to insist on compliance. On November 20, 2011, the disputed domain name was transferred to the Respondent. However, the registrant's registered address and phone number in the WhoIs database remained unchanged.
By letter of December 7, 2011, the Complainant asked the registrar to verify the current data and to cancel the disputed domain name registration if the registrant failed to provide complete and correct data in due time. On December 13, 2011, the registrar forwarded a reply from the current provider of the disputed domain name indicating that the registrant "registered this domain name for Mr. gholami and he wants to keep it for himself" and that Mr. Gholami "says that he works with it's e-mails, so he dosn't want to losing them".
According to the Response, Isfahan Micro Control Co. Ltd is the beneficial owner of the disputed domain name. Isfahan Micro Control Co. Ltd, according to its website, is a leader in automation and drive technologies in Iran, was authorized by ABB Iran in 2006 for product sales as well as dimensioning, selection and warranty handling for unit swaps for five ABB products.
According to the Registrar Verification Response, the disputed domain name was registered on May 10, 2005.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been proven in the present case:
(1) The disputed domain name is confusingly similar to the ABB Marks. The Complainant argues that where the trademarks of two separate companies are combined in a domain name, there is a confusing similarity between either of the marks and the domain name and that where the online user is likely to be confused as to the affiliation or sponsorship of the web site, there is a confusing similarity between the domain name and the mark;
(2) The Respondent has no rights or legitimate interests in the disputed domain name as neither he nor the former domain owner nor Isfahan Micro Control Co. Ltd. have a license or any other permission to use the famous ABB Marks, that Isfahan Micro Control Co. Ltd. does not actually offer the Complainant's goods or services and that the Respondent or the former registrant or Isfahan Micro Control do not have any rights in a registered trademark including ABB. The Complainant further states that even if Isfahan Micro Control Co. Ltd. were a reseller or distributor, it had no legitimate interest in the disputed domain name, because the website available at the disputed domain name does not accurately and prominently disclose that there is no relationship with the ABB Group of companies and because the Respondent merely tries to increase the likelihood of confusion by using a design for the letters "imc" which is similar to the design of the ABB logo, and because the Respondent offers products on its website which are not genuine ABB trademarked goods; and
(3) The disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent, who is registered under the same address as the former registrant, must have been aware of the Complainant and its rights in the ABB Marks when acquiring the disputed domain name on November 20, 2011, as the disputed domain name was transferred after having received notice of the dispute and after having been notified of incomplete and inaccurate WhoIs data. Furthermore, given that the ABB Marks are well known, the Respondent and even the former registrant knew or should have known the famous ABB trademark. With regard to bad faith use, the Complainant argues that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website available at the disputed domain name or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site and/or of a product or service, that the registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use, that the Respondent (and even the former registrant) failed to provide complete and accurate information to the registrar and that, even if Isfahan Micro Control Co. Ltd had registered the domain name in question, it would have registered and used it in bad faith, since, as a "leader in automation and drive technologies", it was certainly aware of the existence and of the activities of the ABB Group and particularly the Complainant under the famous ABB trademark.
B. Respondent
The Respondent states that Isfahan Micro Control Co. Ltd was authorized by ABB Iran in 2006 for product sales as well as dimensioning, selection and warranty handling for unit swaps for five ABB products. Having been duly authorized, Isfahan Micro Control Co. Ltd then established a domain name including its company name and ABB for advertising ABB Drives. The Respondent states that, after the cooperation had ended, the Complainant's Dubai office asked Isfahan Micro Control Co. Ltd to remove all ABB products from its website, which it did. The Respondent further states that Isfahan Micro Control Co. Ltd needs the disputed domain name for its business but generally agrees to change its name and disputed domain name. Furthermore, it asks if the Complainant is going to compensate the Respondent for its expenses in relation to advertisements for ABB products.
6. Discussion and Findings
A. Procedural Issue – Respondent Identity
The first point to be dealt with is the identity of the Respondent.
The Complaint is addressed to the registrant of the disputed domain name while the Response is filed in the name of Isfahan Micro Control Co. Ltd. Given that it seems that the disputed domain name has been used in connection with the website of Isfahan Micro Control Co. Ltd. ever since its registration, the Panel assumes that Isfahan Micro Control Co. Ltd. has been the beneficial owner of the domain name at any given time and that the present and the former registrant acted on its behalf. The Panel will therefore treat Isfahan Micro Control Co. Ltd. as Respondent in this proceeding and will refer to the registrants of the disputed domain name and Isfahan Micro Control Co. Ltd. collectively as the Respondent.
B. Substantive Elements of the Policy
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's highly distinctive and well established ABB Marks.
The additional word "imc" is the acronym of the Respondent's company name Isfahan Micro Control Co. Ltd. It is well established that the combination of a complainant's trademark with another trademark or company name in a domain name does not hinder a finding of confusing similarity between the domain name and the complainant's trademark, as such use of a complainant's trademark leads to confusion between either of the marks and the domain name in that Internet users are likely to be confused as to the affiliation or sponsorship of the web site (cf. Minnesota Mining and Manufacturing Company v. Belowcost, WIPO Case No. D2001-0420; ABB Asea Brown Boveri Ltd v. Mark Maddison, WIPO Case No. D2001-0538; Pfizer, Inc v. Martin Marketing, WIPO Case No. D2002-0793; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142).
Furthermore, it is well established that the generic top-level domain is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production of evidence that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy, and the burden of rebuttal is correspondingly shifted to the Respondent.
The Respondent stated that it was authorized by ABB Iran in 2006 for product sales as well as dimensioning, selection and warranty handling for unit swaps for five ABB products and registered the disputed domain name to advertise the Complainant's products. It furthermore states that it needs the disputed domain name for its business.
Based on the evidence provided on the record, the Panel cannot find any rights or legitimate interests of the Respondent. In particular, the Respondent's use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data case"); Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095). According to the documents available to the Panel, the website available at the disputed domain name does not only offer the Complainant's products but also third parties' products. Therefore, the Respondent's use of the disputed domain name does not meet the criteria set out in Oki Data case.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
(iii) Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 trade mark or service mark or to a competitor of that 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 trade mark 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 its 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 or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the ABB Marks. The Respondent itself states that it registered the disputed domain name after having been authorized to sell some of the Complainant's products. Therefore, the Respondent had positive knowledge of the Complainant and its rights in the ABB Marks when registering the disputed domain name.
In the Panel's view, by fully incorporating the ABB Marks into the disputed domain name and by using such domain name in connection with a website offering products other than the Complainant's products, the Respondent's intention must have been, in all likelihood, to try to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. Such intention is borne out by the unrebutted evidence presented by the Complainant showing that the website associated with the disputed domain name was used to sell products additional to those of the Complainant's.
Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <imc-abb.com> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: March 15, 2012