Abbvie, Inc. v. Domain Manager / samirnet -domain names for sale
Claim Number: FA1701001713511
Complainant is Abbvie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Manager / samirnet -domain names for sale (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbviepas.org>, registered with SiteName Ltd..
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2017; the Forum received payment on January 20, 2017.
On January 28, 2017, SiteName Ltd. confirmed by e-mail to the Forum that the <abbviepas.org> domain name is registered with SiteName Ltd. and that Respondent is the current registrant of the name. SiteName Ltd. has verified that Respondent is bound by the SiteName Ltd. 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2017 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@abbviepas.org. Also on January 26, 2017, 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 February 23, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 worldwide specialty research-based biopharmaceutical company. Complainant uses the ABBVIE mark in conjunction with its medical and pharmaceutical services. Complainant registered the ABBVIE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered May 21, 2013). Additionally, Complainant has registered the ABBVIE mark with multiple government trademark agencies throughout Europe, Asia, Australia, Africa, and North and South America. Respondent’s <abbviepas.org> is confusingly similar to Complainant’s ABBVIE mark because it incorporates the mark in its entirety, adding the letters “pas” and the “.org” generic top-level domain (“gTLD”). Complainant specifically notes that “pas” is presumed to be the acronym for “patient assistance services,” which directly relates to its Patient Assistance Foundation that offers patient assistance services, located at <abbviepaf.org>.
Respondent does not have rights or legitimate interests in <abbviepas.org>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the ABBVIE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <abbviepas.org> resolves to a webpage displaying pay-per-click links to websites in direct competition with and unrelated to Complainant, presumably for Respondent’s profit. Additionally, Respondent is attempting to sell the domain name, further evincing a lack of rights or legitimate interests.
Respondent registered and is using <abbviepas.org> in bad faith. The disputed domain name disrupts Complainant’s business by attracting internet users to a webpage offering pay-per-click links to companies in direct competition with and unrelated to Complainant. Furthermore, Respondent has placed the disputed domain name for sale, thus evincing bad faith registration under Policy ¶ 4(b)(i). Respondent registered <abbviepas.org> with actual knowledge of Complainant and its rights to the ABBVIE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Abbvie, Inc., of North Chicago, IL, USA. Complainant is the owner of domestic and international registrations for the mark ABBVIE, which it has used continuously since at least as early as 2013, in connection with its provision of goods and services in the biopharmaceutical global health care industry.
Respondent is Domain Manager / samirnet -domain names for sale of Bangalore, India. Respondent’s registrar’s address is listed as Rishon Lezion, Israel. The Panel notes that Respondent registered <abbviepas.org> on or about November 30, 2016.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a worldwide specialty research-based biopharmaceutical company. Complainant uses the ABBVIE mark in conjunction with its medical and pharmaceutical services. Complainant registered the ABBVIE mark with USPTO (e.g., Reg. No. 4,340,091, registered May 21, 2013). Additionally, Complainant states it registered the ABBVIE mark with multiple government trademark agencies throughout Europe, Asia, Australia, Africa, and North and South America. Prior panels have found that mark registrations with the USPTO and other government trademark agencies are sufficient to show rights in a mark. See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”). The Panel here finds that Complainant’s registrations with multiple trademark agencies are sufficient to show rights in the ABBVIE mark.
Complainant asserts that Respondent’s <abbviepas.org> is confusingly similar to Complainant’s ABBVIE mark because it incorporates the mark in its entirety, adding the letters “pas” and the “.org” gTLD. Complainant specifically notes that “pas” is presumed to be an acronym for “patient assistance services,” which directly relates its Patient Assistance Foundation that offers patient assistance services, located at <abbviepaf.org>. Past panels have held that the deliberate introduction of errors or changes, such as the addition of [letters] or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant. Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000). Furthermore, “[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). The Panel here finds that Respondent’s <abbviepas.org> is confusingly similar to Complainant’s ABBVIE mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant asserts that Respondent does not have rights or legitimate interests in <abbviepas.org>. To support its argument, Complainant maintains that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case indicates that Respondent used a privacy service to shield its identity and is identified as “Domain Manager” of “samirnet –domain names for sale.” Previous panels have found that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel here finds that Respondent is not commonly known by <abbviepas.org>.
Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant demonstrates that Respondent’s <abbviepas.org> resolves to a webpage displaying pay-per-click links to websites in direct competition with and unrelated to Complainant, presumably for Respondent’s profit. Prior panels have found that “[a r]espondent’s use of the disputed domain name[ ] to feature parked hyperlinks containing links in competition with [c]omplainant’s . . . services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015). Additionally, Complainant states that Respondent is attempting to sell the domain name, further evincing a lack of rights or legitimate interest. “An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.” Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007). The Panel here finds that Respondent lacks rights and legitimate interests in <abbviepas.org> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element
Respondent registered and is using <abbviepas.org> in bad faith. The Panel again notes that the disputed domain name resolves to a webpage displaying pay-per-click links to companies in direct competition with or unrelated to Complainant. Complainant contends that the disputed domain name disrupts Complainant’s business by attracting internet users to a webpage offering pay-per-click links presumably for Respondent’s profit. “[Panels have found that t]he use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).” Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015). Moreover, Past panels have held that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv). T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006).
Furthermore, Complainant shows Respondent has placed the disputed domain name for sale, thus evincing bad faith registration under Policy ¶ 4(b)(i). “There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.” CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000). Additionally, “Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use." Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015). The Panel here finds that Respondent registered and is using <abbviepas.org> in bad faith under the Policy.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the domain name <abbviepas.org> be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 9, 2017
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