AbbVie Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2107001954235
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allerganaestheticagiftcard.com>, <allerganaesthicsgiftcard.com>, <allerganesteticsgiftcard.com> and <allerganestheticgiftcard.com> registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2021; the Forum received payment on July 7, 2021.
On July 8, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allerganaestheticagiftcard.com>, <allerganaesthicsgiftcard.com>, <allerganesteticsgiftcard.com>, and <allerganestheticgiftcard.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2021 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@allerganaestheticagiftcard.com, postmaster@allerganaesthicsgiftcard.com, postmaster@allerganesteticsgiftcard.com, postmaster@allerganestheticgiftcard.com. Also on July 8, 2021, 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 July 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, AbbVie, Inc., is a research-based biopharmaceutical company. Complainant has rights in the ALLERGAN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,596,709, registered Mar. 24, 2009). The disputed domain names are confusingly similar to Complainant’s ALLERGAN mark because they wholly incorporate the mark, merely adding the generic terms “aesthetics” and “gift card,” or misspelled versions of them, and the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain names and is not licensed to use Complainant’s ALLERGAN mark. Further, Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use as the disputed domains do not resolve to an active site. Respondent also offers the disputed domain names for sale.
iii) Respondent registered and used the disputed domain names in bad faith. Respondent is a notorious cybersquatter with numerous adverse decisions. Respondent also fails to make an active use of the domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the ALLERGAN mark when it registered the disputed domain names. Respondent has engaged in the practice of typo-squatting by intentionally registering domain names that are misspelling of Complainant’s mark.
B. Respondent
Respondent did not submit a response.
1. The <allerganaestheticagiftcard.com> domain name was registered on April 6, 2021 and the <allerganaesthicsgiftcard.com>, <allerganesteticsgiftcard.com> and <allerganestheticgiftcard.com> domain names were registered on May 7, 2021.
2. Complainant has established rights in the ALLERGAN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,596,709, registered March 24, 2009).
3. The disputed domain names are being offered for sale for a minimum bid of $899 each.
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”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 disputed domain names since Respondent is not commonly known by the domain names and is not licensed to use Complainant’s ALLERGAN mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name 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.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See 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). The WHOIS information of record notes “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant and no information suggests that Complainant has authorized Respondent to use the ALLERGAN mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Further, Complainant claims Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use as the disputed domains do not resolve to active sites and Respondent offers the disputed domain names for sale. Failure to make active use of a disputed domain name is not a bona fide offering of goods or services, or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Similarly, an offer to sell a disputed domain name suggests a lack of rights and legitimate interests. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant claims the disputed domain names are not being used in connection with active websites and provides screenshots of the security alerts preventing users from continuing upon accessing the disputed domains. Complainant also notes that the WHOIS records for the disputed domain names indicate that they are being offered for sale for a minimum bid of $899 each. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent registered and used the disputed domain names in bad faith since Respondent is a notorious cybersquatter with numerous adverse decisions. Previous UDRP decisions decided against a respondent may suggest a pattern of bad faith under Policy ¶ 4(a)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant notes that there have been 172 adverse decisions against Respondent with Forum as well as over 190 adverse decisions at WIPO. Thus, the Panel agrees that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant provides a screenshot of the WHOIS records for the disputed domains indicating that they are being offered for sale for a minimum bid of $899 each. An offer to sell a disputed domain name in excess of out-of-pocket costs may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt a minimum bid of $899. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i).”). The Panel considers the minimum bid of $899 each for the disputed domain names being in excess of out-of-pocket costs. Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allerganaestheticagiftcard.com>, <allerganaesthicsgiftcard.com>, <allerganesteticsgiftcard.com>, and <allerganestheticgiftcard.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 2, 2021
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