Abbvie, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1701001714211
Complainant is Abbvie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbviee.com>, registered with Tucows Domains 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 January 25, 2017; the Forum received payment on January 25, 2017.
On January 26, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <abbviee.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 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@abbviee.com. 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
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 <abbviee.com> is confusingly similar to Complainant’s ABBVIE mark because it incorporates the mark in its entirety, adding the letter “e” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <abbviee.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 noncommercial or fair use of the domain. Respondent’s <abbviee.com> resolves to a webpage displaying the VISTAPRINT mark and a link to Respondent’s website, offering products and services unrelated to Complainant.
Respondent registered and is using <abbviee.com> in bad faith. Respondent has been named in over thirty UDRP cases, engaging in similar conduct, thereby evincing a pattern of bad faith registrations. Additionally, the disputed domain name disrupts Complainant’s business by attracting internet users to a webpage offering a link to goods and services unrelated to Complainant. Furthermore, Respondent registered <abbviee.com> with actual knowledge of Complainant and its rights to the ABBVIE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ABBVIE mark through its registration of such trademark with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its ABBVIE trademark.
Respondent’s <abbviee.com> addresses a webpage displaying the VISTAPRINT mark and a link to Respondent’s website, offering products and services unrelated to Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the ABBVIE mark through its registration of such mark with the United States Patent and Trademark Office as well as other registrars worldwide. Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. 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 . . .”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <abbviee.com> domain name contains Complainant’s entire ABBVIE trademark with a second “e” added. The top-level domain name “.com” is then appended thereto to complete the domain name. The trivial differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s ABBVIE trademark under Policy ¶ 4(a)(i). See Enterprise Holdings, Inc. v. Tynia Coleman / New Life Family Ministries, FA 1333282 (Forum Aug. 10, 2010) (“the mere addition of the letter ‘e’ and a gTLD to a registered trademark generates confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i).”)
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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the 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 the at-issue domain name.
WHOIS information for the at-issue domain name lists “VistaPrint Technologies Ltd.” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <abbviee.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <abbviee.com> addresses a webpage displaying the VISTAPRINT mark. The website also displays a link to Respondent’s website where products and services unrelated to Complainant are offered. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has been named in over thirty UDRP cases for engaging in similar conduct as here, thereby evincing a pattern of bad faith registrations. This pattern of cybersquatting suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ (b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”)
Second, the at-issue domain name by misdirecting internet users to Respondent’s website, demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”)
Third, Respondent engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse a misspelled trademark laden domain name with the target trademark. Here, Respondent adds an “e” to Complainant’s trademark and uses the misspelling of Complainant’s trademark in the confusingly similar at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <abbviee.com> domain name knowing that Complainant had trademark rights in the ABBVIE trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, Respondent’s history of cybersquatting, and from Respondent’s use of the confusingly similar domain name to misdirect internet users to Respondent’s website. The foregoing makes clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <abbviee.com> domain name 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 <abbviee.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Paul M. DeCicco, Panelist
Dated: February 23, 2017
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