Abbott Laboratories v.
Claim Number: FA0902001246421
PARTIES
Complainant is Abbott Laboratories (“Complainant”), represented by James
F. Struthers, of Richard Law Group,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rxabbot.com>, registered with Compana, Llc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 5, 2009; the
National Arbitration Forum received a hard copy of the Complaint on February 6, 2009.
On February 9, 2009, Compana, Llc confirmed by e-mail to the
National Arbitration Forum that the <rxabbot.com> domain name is
registered with Compana, Llc and that the
Respondent is the current registrant of the name. Compana, Llc
has verified that Respondent is bound by the Compana,
Llc registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On February 11, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 3, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@rxabbot.com by e-mail.
A timely Response was received and determined to be complete on February 11, 2009.
On February 17, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant describes itself as a global health care company,
recognized as a leader in researching and developing medicines, laboratory diagnostics, and other technologies
for improving and managing health. Complainant is ranked among the top 100 companies globally, with sales exceeding $25
billion in 2007, and has more than 100 facilities
worldwide selling products in more than 130 countries.
Complainant has an established internet presence at www.abbott.com.
The Complainant claims to own numerous trademarks and service marks registered on
the Principal Register of the United States Patent and Trademark Office that include the name "ABBOTT" (a list of
those marks is provided as Exhibit B of the Complaint). Complainant informs
that the ABBOTT mark was first used in commerce at least as early as 1919.
The Complainant is also
the holder of domain names incorporating "ABBOTT", among them <rxabbott.com> (since 1996), and
operates a web site under the said domain name (Exhibits C and D of the
Complaint).
The Complainant argues
that the disputed domain name is confusingly similar to Complainant’s
well-known mark ABBOTT, as it incorporates a misspelling of the trade mark
along with the generic or descriptive term “RX”, the latter being an
abbreviation for the term “prescription”.
Complainant
further states that the Respondent has no rights or legitimate interest in the
disputed domain name, as the Respondent is not commonly known by <rxabbot.com>, nor has Respondent used the domain name in
connection with a bona fide offering of goods and services or for a legitimate non commercial or fair use.
Respondent is using a confusingly similar variant of Complainant’s trade mark
to exploit the fact that Complainant's
customers and potential customers may assume that a website located at such a
domain name is affiliated with or sponsored by Complainant.
The Complainant has not
licensed the use of its trade mark or otherwise authorized the Respondent to
use the ABBOTT mark or any variations thereof.
The Complainant accuses
the Respondent for bad faith registration and use of the disputed domain name.
Respondent registered <rxabbot.com> with
knowledge of Complainant's rights. Complainant refers to the notoriety of the ABBOTT mark, and claims that
Respondent must have known about Complainant’s ownership of the ABBOTT mark prior to the registration of the
domain name. The domain name resolves to a list of links to third-party sites, some of which offer goods related to those offered under Complainant's
marks, which Respondent benefits financially from, this being a further
evidence of bad faith.
Finally, the Complainant refers to the fact Respondent has had numerous cases filed against it for the use and registration of domain
names incorporating famous trademarks. This evidences a pattern of conduct by Respondent which is further evidence of
Respondent's bad faith pursuant to Policy ¶ 4(b)(iv).
B. Respondent
Respondent agrees to the relief requested by the Complainant, however stating that this is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer”.
FINDINGS
The Complainant is a health care company claiming to have
“numerous trademarks and service marks”
registrations including the mark ABBOTT. The Complainant has not provided any
distinctive evidence of its registered trade mark rights, just a list of marks
and registration numbers and dates (Exhibit B). This Panel has however no reason
to doubt that Complainant is in fact the owner of trademark rights for ABBOTT,
and further the Respondent has not contested the trade mark claims by the
Complainant.
According to Paragraph 15(a)
of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “a
Panel shall 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.”
In this case, Respondent does not contest Complainant’s request that the
disputed domain name be transferred from Respondent to Complainant. In fact, Respondent requests that the Panel order the transfer.
Therefore,
under these special circumstances, this Panel decides to forego the traditional
UDRP analysis, not to make any further findings or discussion, and order the
immediate transfer of the disputed domain name.
See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman
Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain
name registration where the respondent stipulated to the transfer); see also
Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb.
Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain
name to be transferred to the Complainant . . . Since the requests of the
parties in this case are identical, the Panel has no scope to do anything other
than to recognize the common request, and it has no mandate to make findings of
fact or of compliance (or not) with the Policy.”); see also Disney Enters.,
Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such
circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the traditional
UDRP analysis and order the transfer of the domain names.”).
DECISION
Giving the special circumstances in this case, the fact that Respondent
has consented to the transfer of the domain name, the Panel concludes that
relief shall be GRANTED.
Accordingly, it is Ordered that the <rxabbot.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dated: March 2, 2009
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