WIPO Domain Name Decision: D2007-0138

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ABB Asea Brown Boveri Ltd. v. ASIAINDEX

Case No. D2007-0138

1. The Parties

The Complainant is ABB Asea Brown Boveri Ltd., of Zurich, Switzerland, represented by Kikinis Rohner Schwenninger Weinmann, Zurich, Switzerland.

The Respondent is ASIAINDEX, of Bali, of Indonesia.

2. The Domain Name and Registrar

The disputed domain name <abbfund.biz> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2007. On February 2, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On February 3, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com 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, billing, 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 February 13, 2007.

In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2007.

The Center appointed Anders Janson as the sole panelist in this matter on March 15, 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.

Due to a clerical error, the hardcopy of the Notification of Complaint did not reach the Respondent. To ensure full compliance with the Rules and to provide Respondent with a fair opportunity to participate in this proceeding, the Panel issued a Panel Order on March 19, 2007. On March 21, 2007, in accordance with the Panel Order, the Center re-notified the commencement of administrative proceeding and transmitted the Notification of Complaint together with other case correspondence. The Response due date was April 9, 2007.

The Center provided the Panel, on April 18, 2007, with information from Federal Express that the package with the above mentioned documents was delivered on April 12, 2007 to the Respondent. The Respondent has not filed any Response. The Panel finds that the Center, after having re-sent the Notification of Complaint together with the other documents mentioned above to the Respondent, has employed reasonably available means calculated to achieve actual notice to the Respondent. Accordingly, this dispute is properly before the Panel and the Panel will proceed with its decision on the merits.

4. Factual Background

The Complainant, known under the abbreviation ABB, is the parent company of a group of companies which operates in more than 100 countries worldwide. The ABB Group holds a global position on the market for electric power generation, transmission and distribution. The group had total revenue of roughly USD 22 billion in 2005 and employs over 100 000 people.

The Complainant has asserted that it holds numerous trademarks comprising the trademark ABB and the specific ABB logotype. The Complainant has, in the Complaint, put forward a large number of national and international registrations in various classes. Among the registrations put forward can be mentioned:

- Registration No 548237 ABB with priority of August 20, 2002, registered in class 36 for various financial services in Indonesia,

- Registration no 548226 stylized ABB logo with priority of August 20, 2002, registered in class 36 for various financial services in Indonesia,

The Panel notes that the registration dates of the above-mentioned registrations predate the registration of the disputed domain name by the Respondent, which was on December 19, 2006. The Complainant is furthermore the owner of a large number of domain names comprising the letters “abb”.

The Respondent is ASIAINDEX, with a stated address in Denpasar, Indonesia. No other information of the Respondent is available.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

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

- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- the Respondent has not acquired any trademark or service mark in the sign ABB. Nor is the Respondent commonly known by the domain name. Furthermore, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website.

- the disputed domain name was registered and is being used in bad faith; and

- that the disputed domain name <abbfund.biz> should be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name in question is <abbfund.biz>. The Complainant holds a number of registered trademarks of the letters “abb”. The Panel finds, as numerous panels have found before, that the Complainant has established that ABB is a well - recognized trademark and that the trademark is distinctive and famous. The disputed domain name contains the Complainant’s mark ABB in its entirety, with the added suffix “fund” and the generic and functional top level domain name “.biz”. In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. Accordingly, the question is whether the addition of the suffix “fund” makes the disputed domain name dissimilar to the Complainant’s registered trademarks or not. In several WIPO UDRP decisions, the panels have found that the fact that a domain name incorporates a complainant’s registered mark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).

The Panel finds that the term ABB is the distinctive part of the disputed domain name. The generic term “fund” adds little to the overall impression of the disputed domain name. Internet users are very likely to assume that the addition of the word “fund” to the trademark ABB signifies a website associated with the Complainant. The Panel finds that the addition of the suffix “fund” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name must therefore be considered confusingly similar to the trademark ABB. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a).

B. Rights or Legitimate Interests

The Respondent has not filed a Response. In these circumstances, when the Respondent does not have an obvious connection with the disputed domain name, a prima facie showing from the Complainant that the Respondent has no rights or legitimate interests is enough to shift the burden of proof to the Respondent to demonstrate that such rights and legitimate interests exists. The Respondent has not demonstrated or argued that he is using or has prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds based on the case file that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

The Complainant has asserted that the Respondent’s registration and use of the disputed domain name has been made in bad faith with regard to the Complainant’s well-established rights to the trademark ABB. It is, according to the Complainant, evident that the Respondent, by registering and using the disputed domain name has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website 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 of a product or service on the Respondent’s website or location.

Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) of the Policy states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

Based on the evidence provided by the Complainant, the Panel finds it established that the website of the disputed domain name, at least on January 29, 2007, consisted of a referral to the website “abbfund.com” offering a High Yield Investment Program. This website is not operated by the Complainant. It is in all likelihood that the Respondent, by these actions, is trying to mislead consumers in order to attract them to other websites making them believe that the websites behind those links are associated with the Complainant.

The Panel finds, with reference to the above-mentioned and the proof provided by the Complainant, that the Respondent is using the disputed domain name in bad faith, hence having intentionally attempted to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with Complainant’s mark as to the source.

The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <abbfund.biz> be transferred to the Complainant.

Anders Janson
Sole Panelist

Dated: April 23, 2007