AbbVie, Inc. v. Marino Apollinari / MNA Inc.
Claim Number: FA2201001979950
Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Marino Apollinari / MNA Inc. (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopallergan.com>, registered with GoDaddy.com, LLC.
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.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2022; the Forum received payment on January 11, 2022.
On January 13, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shopallergan.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2022 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@shopallergan.com. Also on January 13, 2022, 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.
A timely Response was received and determined to be complete on January 21, 2022.
On January 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka 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 shall 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts:
- it is a pharmaceutical company that sells a variety of pharmaceutical products;
- it has rights in the ALLERGAN mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,596,709, registered on March 24, 2009);
- Respondent’s <shopallergan.com> domain name is identical or confusingly similar to Complainant’s ALLERGAN mark, as it incorporates the mark in its entirety, only adding the generic term “shop” and the “.com” generic top-level domain (“gTLD”);
- Respondent has no rights or legitimate interests in the <shopallergan.com> domain name. Complainant has not authorized or licensed Respondent to use the ALLERGAN mark, nor is Respondent commonly known by the disputed domain name Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website presents users with unrelated third-party links.
- Respondent registered and uses the <shopallergan.com> domain name in bad faith. Respondent attempts to attract users for commercial gain by hosting a website that redirects users to unrelated third-party hyperlinks;
- Respondent had actual and/or constructive notice of Complainant’s rights in the mark.
B. Respondent responds:
- it disputes Complainant’s assertions that the disputed domain name is confusingly similar to Complainant’s mark;
- <shopallegran.com> domain name is a pseudonym, SHO PALL ERGAN, under which Respondent sells prints of photographs taken by Respondent;
- Respondent argues the disputed domain name and mark will not be confused because the disputed domain name does not have the spaces between words to read as the ALLERGAN mark;
- Respondent has rights and legitimate interests in the disputed domain name. Respondent is using the disputed domain name for a bona fide offering of goods and services because the resolving website does not sell, offer, or reference any pharmaceutical operations related to Complainant’s mark;
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s ALLERGAN mark, as it incorporates the mark in its entirety, only adding the generic term “shop” and the “.com” generic top-level domain and that the Respondent, a natural person, not only does not hold rights or legitimate interest but registered and used the disputed domain name 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.
Complainant asserts rights in the ALLERGAN mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO (e.g., Reg. No. 3,596,709, registered on March 24, 2009). See Compl. Ex. D. Registering a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i), as it was decided in the UDRP practice of the Forum. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Therefore, the Panel finds Complainant has sufficiently established rights in the ALLERGAN mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <shopallergan.com> domain name is identical or confusingly similar to Complainant’s ALLERGAN mark as it incorporates the mark in its entirety, only adding the generic term “shop” and the “.com” gTLD. Simply adding a generic word and a gTLD is not sufficient to differentiate the disputed domain name from the mark it incorporates per Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
Responding to the assertion of the Complainant, the Respondent argues without documenting his arguments, that the <shopallergan.com> domain name is not confusingly similar to Complainant’s mark because the disputed domain name is a pseudonym that, without any spacing, is not read as SHOP ALLERGAN, rather as SHO PALL ERGAN.
In the absence of any documentation supporting the Respondent arguments, the Panel considers that the spacing between words is irrelevant to the analysis under the first element pf the Policy See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”).
Therefore, the Panel find Respondent’s <shopallergan.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) and the first element under of paragraph 4(a) of the Policy is therefore established.
Under Policy ¶ 4(a)(ii), the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, 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 contends the Respondent lacks rights and legitimate interests in the disputed domain name because the Respondent is not authorized to use the ALLERGAN mark, nor is the Respondent commonly known by the disputed domain name. To determine whether a Respondent is commonly known by the disputed domain name, the Panel references to WHOIS information. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). In the present case, the WHOIS information initially showed Respondent’s information was protected by a privacy shield, but was later verified that Respondent is known as “Marino Apollinari / MNA Inc.” See Compl. Ex. A; see also Registrar Verification Email.
There is further no indication that Complainant authorized Respondent to use the ALLERGAN mark in any way. As a consequence, the Panel finds the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <shopallergan.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website presents users with unrelated hyperlinks to Complainant’s business. Using a disputed domain name to host a website with a variety of third-party links, related or unrelated to a complainant’s business, is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
Here, Respondent asserts he uses the disputed domain name to sell photography, unrelated to Complainant’s pharmaceutical business, which would confer him rights and legitimate interests in the disputed domain name. Although Respondent claims the disputed domain name and resolving website do not interfere or compete with Complainant’s business, the Panel notes that hosting unrelated hyperlinks is a disruption to Complainant’s business and the website does have a section for “pharma pharmaceuticals” (See Compl. Ex. F) and finds that such use of the disputed domain name is not a bona fide offering of goods and services or legitimate noncommercial or fair use.
Following the above, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and subsequently, the second element of paragraph 4(a) of the Policy is therefore established.
Complainant first argues Respondent acted in bad faith because Respondent attempts to attract users for commercial gain by hosting pay-per-click hyperlinks. When a respondent uses the disputed domain name to host a parked website with hyperlinks that financially benefit the respondent, a panel may find bad faith per 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); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). This Panel refers to the screenshot of the resolving website, where Respondent presents users with third-party hyperlinks (See Compl. Ex. F) and therefore, the Panel finds the Respondent acted in bad faith.
Similarly, Complainant contends Respondent had actual and/or constructive notice of Complainant’s rights in the ALLERGAN mark, evidenced by the fame of the mark, as well as Respondent’s use of the mark. While past UDRP panels have not recognized constructive notice as sufficient to establish bad faith, actual notice has been determined by the notoriety of the mark and the use implemented by the respondent. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). In these proceedings, the Panel notes that the Complainant provides evidence of the mark’s notoriety, as well as Respondent’s use of the mark to benefit from the mark’s fame. See Compl. Ex. B; see also Compl. Ex. E. It is the opinion of this Panel that the Respondent had actual notice of Complainant’s rights in the ALLERGAN mark, and registered and used the disputed domain name in bad faith.
The Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Considering the contentions of the Complainant, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is therefore established
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopallergan.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka, Panelist
Dated: February 7, 2022
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