AbbVie Inc. v. shi lei
Claim Number: FA2107001954302
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <allerganaesteticsgiftcard.com>, ,<allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, ,<allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com>, registered with DNSPod, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2021; the Forum received payment on July 8, 2021.
On July 19, 2021, DNSPod, Inc. confirmed by e-mail to the Forum that the <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names are registered with DNSPod, Inc. and that Respondent is the current registrant of the names. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 19, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 9, 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@allerganaesteticsgiftcard.com, postmaster@allerganaestheticsgiftcars.com, postmaster@allerganaesthticsgiftcard.com, postmaster@allergansavingcard.com, postmaster@offerallerganaestheticsgiftcard.com. Also on July 19, 2021, the Chinese language 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 August 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The relevant Registration Agreement for the at-issue domain is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant while conducting the proceeding in English would not unfairly burden Respondent.
Respondent targeted a U.S.-based company by incorporating the Complainant’s ALLERGAN trademark into the at-issue domain names. Doing so constitutes evidence that Respondent will not be prejudiced if the proceedings were to be conducted in English. See Morgan Stanley v. Peng Bi / Bi Peng, FA1709188 (Forum Feb. 16, 2017) (choosing to conduct the proceedings in English in part because “the disputed domain names contain a famous English language mark). Moreover, the domain names each have the top-level, “.com,” which primarily targets English speaking internet users, and each domain name contains English based words in its second-level namely “aesthetics,” “offer,” “saving,” “gift” and/or “gift card,” or a misspelled version thereof. Indeed, webpages addressed by the at-issue domain names are likewise in English.
Furthermore, Respondent has been involved in other UDRP disputes where Respondent was found to be proficient in English. Such cases were thus conducted in English. See, e.g. Diners Club International Ltd. v. 石磊 (Shi Lei). D2021-1257 (WIPO June 14, 2021) (finding that this Respondent was proficient in English because the website to which the disputed domain resolves was in English); Sidley Austin LLP v. 石磊 (Shi Lei) D2020-3004 (WIPO Feb. 16, 2021) (finding that this Respondent was proficient in English because the domain is in the English language, the domain resolves solely in the English language and that Shi Lei repeatedly participated in domain name proceedings prior to this one in the English language; Blue Cross and Blue Shield Association v. Shi Lei aka Shilei FA1805001784643 (Forum June 18, 2018) (finding this Respondent was proficient in the English language).
Since it appears that Respondent has command of the English language, requiring Complainant to translate all the documents of the proceeding into Chinese would result in Complainant having to incur unnecessary additional costs and might well delay the proceeding. Moreover, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore, in light of all the foregoing, the Panel finds this proceeding should continue in English.
A. Complainant
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”).
Respondent’s <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names are confusingly similar to Complainant’s ALLERGAN mark because they wholly incorporates the mark, merely adding the generic terms “aesthetics,” “offer,” “saving,” “gift” and/or “gift card,” or misspelled versions of them, and adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the at-issue 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 domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent uses the <allergansavingcard.com> domain to host a parked page and uses the remaining domain names in connection with a purported internet browser download.
Respondent registered and used the at-issue domain names in bad faith. Respondent uses the <allergansavingcard.com> domain to promote unrelated businesses by displaying hyperlinks. Respondent uses the <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, and <offerallerganaestheticsgiftcard.com> domain names to facilitate the installation of malware. Finally, Respondent had actual knowledge of Complainant’s rights in the ALLERGAN mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ALLERGAN trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the ALLERGAN trademarks.
Respondent uses <allergansavingcard.com> to address a parking pages that displays hyperlinks that appear to be unrelated to Complainant. Respondent uses <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, and <offerallerganaestheticsgiftcard.com> to facilitate the installation of malware on third-party devices.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its ALLERGAN trademark. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names each contain Complainant’s ALLERGAN trademark to which is added the generic term “aesthetics,” “offer,” “saving,” “gift” and/or “gift card,” or a misspelled version thereof, with each resulting string followed by a domain name-necessary top-level domain name, here “.com.” The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish any of the at-issue domain names from Complainant’s ALLERGAN trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names are each confusingly similar Complainant’s ALLERGAN trademark under the Policy. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “Shi Lei” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <allergansavingcard.com> domain name to address a parking page featuring links to third parties unrelated to Complainant. Respondent’s use of <allergansavingcard.com> in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) (holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as 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).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Likewise, <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, and <offerallerganaestheticsgiftcard.com> are not used for either a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Rather, such domain names are used to distribute malware. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each of the domain names.
First, as mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar <allergansavingcard.com> domain name to display hyperlinks related to third-parties. Doing so shows Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also 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).
Next, Respondent uses <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, and <offerallerganaestheticsgiftcard.com> to facilitate the distribution of malware. Respondent’s use of these domain names to redirect internet users to a web presence which disseminates malware shows Respondent’s bad faith per Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Finally, Respondent registered <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> knowing that Complainant had trademark rights in the ALLERGAN mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from the Respondent’s overt targeting of Complainant’s trademarks in multiple domain names. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <allerganaesteticsgiftcard.com>, <allerganaestheticsgiftcars.com>, <allerganaesthticsgiftcard.com>, <allergansavingcard.com>, and <offerallerganaestheticsgiftcard.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 11, 2021
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