Abbvie, Inc. v. Domain Admin / Hush Whois Protection Ltd.
Claim Number: FA1701001713592
Complainant is Abbvie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Admin / Hush Whois Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbviepaf.com>, registered with Key-Systems GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2017; the Forum received payment on January 20, 2017.
On January 23, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <abbviepaf.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@abbviepaf.com. Also on January 23, 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 20, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
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. See Compl., at Attached Ex. D. Respondent’s <abbviepaf.com> is confusingly similar to Complainant’s ABBVIE mark because it incorporates the mark in its entirety, adding the descriptive term “paf” and the “.com” generic top level domain (“gTLD”). Complainant specifically notes that “paf” is the acronym for its Patient Assistance Foundation, located at <abbviepaf.org>.
Respondent does not have rights or legitimate interests in <abbviepaf.com>. 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 <abbviepaf.com> domain name 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 for the sum of $19,269, further evincing a lack of rights or legitimate interests. See Compl., at Attached Exs. F–G.
Respondent registered and is using <abbviepaf.com> 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 Complainant. Furthermore, Respondent has placed the disputed domain name for sale, asking the sum of $19,269, thus evincing bad faith registration under Policy ¶ 4(b)(i). See Compl., at Attached Ex. G. Respondent registered <abbviepaf.com> with actual knowledge of Complainant and its rights to the ABBVIE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a worldwide specialty research-based biopharmaceutical business.
2. Complainant has established its trademark rights by registering the ABBVIE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered May 21, 2013) and internationally.
3. Respondent registered the <abbviepaf.com> domain name on February 10, 2014.
4. The domain name resolves to a webpage displaying pay-per-click links to websites in direct competition with Complainant and to goods and services unrelated to Complainant and Respondent is also attempting to sell the domain name.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is a worldwide specialty research-based biopharmaceutical company. Complainant uses the ABBVIE mark in conjunction with its medical and pharmaceutical services. Complainant claims it registered the ABBVIE mark with the USPTO (e.g., Reg. No. 4,340,091, registered May 21, 2013). Additionally, Complainant states it has registered the ABBVIE mark with multiple government trademark agencies throughout Europe, Asia, Australia, Africa, and North and South America. See Compl., at Attached Ex. D. The consensus among Panels is that mark registrations with USPTO and other government trademark agencies are sufficient to show rights in a mark according to Policy ¶ 4(a)(i). 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 . . .”). Therefore, the Panel finds that Complainant’s mark registrations with multiple trademark agencies around the world are sufficient to show rights in the ABBVIE mark pursuant to Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ABBVIE mark. Complainant submits that Respondent’s <abbviepaf.com> domain name is confusingly similar to Complainant’s ABBVIE mark because it incorporates the mark in its entirety, adding the descriptive term “paf” and the “.com” gTLD. Complainant notes that “paf” is the acronym for its Patient Assistance Foundation, located at <abbviepaf.org>. Generally, panels have found that the addition of a descriptive term and a gTLD do not negate confusing similarity for the purposes of the Policy ¶ 4(a)(i) analysis. See ForumAllianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent’s <abbviepaf.com> is confusingly similar to the ABBVIE mark according to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ABBVIE mark and to use it in its domain name adding the descriptive term “paf” which is the acronym for Complainant’s Patient Assistance Foundation, located at <abbviepaf.org>;
(b) Respondent registered the domain name on February 10, 2014;
(c) The domain name resolves to a webpage displaying pay-per-click links to websites in direct competition with Complainant and to goods and services unrelated to Complainant and Respondent is also attempting to sell the domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in <abbviepaf.com> as Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case indicates that Respondent used the privacy service “Hush Whois Protection Ltd.” to shield its identity. Panels typically hold 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).”). In the absence of a response, the Panel concludes that Respondent is not commonly known by <abbviepaf.com> pursuant to Policy ¶ 4(c)(ii).
(f) Complainant submits that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name. In support of its argument, Complainant demonstrates that Respondent’s <abbviepaf.com> domain name resolves to a webpage displaying pay-per-click links to websites in direct competition with and also to goods and services unrelated to Complainant, presumably for Respondent’s profit. See Compl., at Attached Exs. F–G. 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).” See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015). Accordingly, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively;
(g) Complainant also submits that Respondent is attempting to sell the domain name for the sum of $19,269, further evincing a lack of rights or legitimate interests in the disputed domain name. See Compl., at Attached Ex. G. Typically, panels have found that such actions demonstrate a lack of rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) especially where the domain name, as in the present case, is such that only one party would be likely to buy it. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“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.”). Therefore, the Panel determines that Respondent lacks rights and legitimate interests in <abbviepaf.com> pursuant to Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant submits that Respondent has attempted to sell the disputed domain name. See Compl., at Attached Ex. G. Generally, panels have decided that such actions show bad faith under Policy ¶ 4(b)(i) especially where the domain name, as in the present case, is such that only one party would be likely to buy it. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Consequently, the Panel finds that Respondent has acted in bad faith according to Policy ¶ 4(b)(i).
Secondly, Complainant reiterates that Respondent uses the disputed domain name to redirect Internet users to its own website, which offers pay-per-click hyperlinks to Complainant’s competitors. The Panel notes Complainant’s attached Exhibits F–G. Complainant submits that such conduct is indicative of bad faith under Policy ¶ 4(b)(iv). As the Panel agrees with Complainant’s argument and evidence here, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Thirdly, Complainant submits that due to the fame of Complainant and its marks, Respondent must have had actual and/or constructive knowledge of Complainant and its marks when registering the disputed domain name. The Panel here finds that arguments of bad faith based on constructive notice are generally held not to be persuasive. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the ABBVIE mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbviepaf.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 21, 2017
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