AbbVie, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2107001954268
Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allerganaesheticsgiftcard.com>, registered with Media Elite Holdings Limited.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2021; the Forum received payment on July 8, 2021.
On July 13, 2021, Media Elite Holdings Limited confirmed by email to the Forum that the <allerganaesheticsgiftcard.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@allerganaesheticsgiftcard.com. Also on July 14, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 August 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is a specialty-focused research-based biopharmaceutical company with approximately 30,000 employees in over 70 countries, and over $32 billion in annual revenues. Complainant and a predecessor in interest have used ALLERGAN for many years in connection with a variety of pharmaceutical products, including Botox. The ALLERGAN mark is the subject of longstanding trademark registrations in the United States and other jurisdictions around the world. The ALLERGAN brand ranked number 18 among global pharmaceutical companies in a 2020 ranking, immediately prior to its acquisition by Complainant. The official website for Complainant's wholly-owned Allergan subsidiary is found at <allerganaesthetics.com>.
Respondent registered the disputed domain name <allerganaesheticsgiftcard.com> in September 2020. The domain name is being used to redirect users to parked pages composed of links to various third-party sites, from which Respondent is alleged to receive clickthrough revenues. The domain name previously was redirected to an Afternic/GoDaddy web page advertising the domain name for sale. Complainant states that Respondent is not commonly known by the disputed domain name; is not licensed to use Complainant's mark; and is not an authorized vendor, supplier, or distributor of Complainant's goods and services.
Complainant contends on the above grounds that the disputed domain name <allerganaesheticsgiftcard.com> is confusingly similar to its ALLERGAN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <allerganaesheticsgiftcard.com> incorporates Complainant's registered ALLERGAN trademark, adding the generic or descriptive terms "aesthetics" (misspelled as "aeshetics") and "gift card" (without the space), and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., AbbVie Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1954235 (Forum Aug. 2, 2021) (finding <allerganaestheticagiftcard.com>, <allerganaesthicsgiftcard.com>, <allerganesteticsgiftcard.com>, and <allerganestheticgiftcard.com> confusingly similar to ALLERGAN). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It has been redirected to parked pages composed of pay-per-click links and to a page offering the domain name for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Twitch Interactive, Inc. v. Solimul Hasan Khan, FA 1935907 (Forum Apr. 1, 2021) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's well-known ALLERGAN
mark and is similar to the <allerganaesthetics.com> domain name used by
Complainant. The domain name is held in the name of what the Panel presumes to
be a privacy registration service acting on behalf of an undisclosed beneficial
owner (possibly the respondent in AbbVie Inc. v. Carolina Rodrigues /
Fundacion Comercio Electronico, supra, considering its similarity to
the domain names that were the subject of that proceeding and other
commonalities between the two cases). Its sole apparent uses have been to
redirect users to other websites, either promoting the domain name for sale (presumably
for a price exceeding Respondent's out-of-pocket costs), or composed of links
that presumably generate revenue for Respondent. Such conduct is indicative of
bad faith registration and use under the Policy. See, e.g., AbbVie Inc. v.
Carolina Rodrigues / Fundacion Comercio Electronico, supra (finding
bad faith where <allerganesteticsgiftcard.com> and similar domain names
were offered for sale for prices in excess of out-of-pocket costs); Twitch
Interactive, Inc. v. Solimul Hasan Khan, supra (finding bad faith
where domain names registered through privacy registration service were used to
display pay-per-click links and to offer one of the domain names for sale); Mediacom
Communications Corp. v. Domain Administrator / Fundacion Privacy Services LTD,
FA 1913479 (Forum Oct. 23, 2020)
(presuming Respondent to be a privacy registration service, and finding bad
faith where domain name was used solely to display pay-per-click links); World
Wrestling Entertainment, Inc. v. Domain Administrator / Fundacion Privacy
Services LTD, FA 1893019 (Forum
May 18, 2020) (finding bad faith where domain name differed from domain name
used by complainant by addition of one letter, and was used to display
pay-per-click links). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allerganaesheticsgiftcard.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 9, 2021
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