AbbVie Inc. v. Liu Yuan
Claim Number: FA2005001895254
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., United States. Respondent is Liu Yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbviescholarship.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2020; the Forum received payment on May 7, 2020. The Complaint was submitted in both Chinese and English.
On May 8, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd.; confirmed by e-mail to the Forum that the <abbviescholarship.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd.; and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd.; has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd.; registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@abbviescholarship.com. Also on May 11, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <abbviescholarship.com> domain name is confusingly similar to Complainant’s ABBVIE mark.
2. Respondent does not have any rights or legitimate interests in the <abbviescholarship.com> domain name.
3. Respondent registered and uses the <abbviescholarship.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, AbbVie, Inc., is a research-based biopharmaceutical company. Complainant holds a registration for the ABBVIE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,340,091, registered May 21, 2013).
Respondent registered the <abbviescholarship.com> domain name on April 18, 2020, and uses it to provide links to various third-party sites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the ABBVIE mark under Policy ¶ 4(a)(i) based on registration with the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent’s <abbviescholarship.com> domain name uses Complainant’s ABBVIE mark and merely adds the term “scholarship” and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD is not sufficient to distinguish a domain name from a mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Respondent’s <abbviescholarship.com> domain name is confusingly similar to Complainant’s ABBVIE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <abbviescholarship.com> domain name since Respondent is not commonly known by the disputed domain name. Respondent is not licensed or authorized by Complainant to use its ABBVIE mark. The WHOIS information of record notes “Liu Yuan” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and thus has no rights under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant also argues that Respondent fails to use the <abbviescholarship.com> domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use and instead uses the domain name to provide links to various third-party sites. The use of a disputed domain name to redirect Internet users to unrelated commercial webpages is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the webpage at <abbviescholarship.com>, which displays third-party links. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has rights under Policy ¶ 4(c)(i) Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <abbviescholarship.com> domain name in bad faith based upon Respondent’s history of adverse UDRP decisions. Evidence of a history of bad faith domain name registration may support a finding of bad faith under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provides an excerpt from a previous UDRP decision in which a panel concluded that the same respondent displayed a pattern of bad faith registration and use. Therefore, the Panel finds bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that registered and uses the <abbviescholarship.com> domain name in bad faith because Respondent uses the disputed domain name to commercially benefit by promoting unrelated businesses. The use of a disputed domain name to display third party hyperlinks may be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant provides a screenshot of the hyperlinks listed on Respondent’s webpage and argues that Respondent presumably receives click through revenue from the hyperlinks. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbviescholarship.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 5, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page