AbbVie, Inc. and AbbVie AB v. ZhangHua Zhong / Hua Zhong Zhang
Claim Number: FA1811001817277
Complainant is AbbVie, Inc. and AbbVie AB (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ZhangHua Zhong / Hua Zhong Zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duopa.top>, registered with Chengdu West Dimension Digital Technology Co., 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2018; the Forum received payment on November 20, 2018.
On November 21, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <duopa.top> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 November 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 2018 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@duopa.top. Also on November 26, 2018, 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 December 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
LANGUAGE OF THE PROCEEDINGS
A. Complainant
1. Complainant is the result of a separation from Abbot Laboratories (“Abbott”) into two independent companies: Abbott and AbbVie. Complainant is a specialty-focused, research-based biopharmaceutical company. Complainant has rights in the DUOPA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,732,594, registered May 5, 2015). Respondent’s <duopa.top>[i] domain name identical and/or confusingly similar to Complainant’s DUOPA mark as Respondent merely adds the “.top” generic top-level domain (“gTLD”) to the mark.
2. Respondent has no rights or legitimate interests in the <duopa.top> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s DUOPA mark and is not commonly known by the domain name.
3. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect to a website that features links to gambling and pornographic content.
4. Respondent registered and uses the <duopa.top> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to its resolving website where it features links to gambling and pornographic websites. Further, Respondent’s use of the resolving website to feature adult-oriented material constitutes bad faith.
5. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the DUOPA mark prior to registering and subsequent use of the <duopa.top> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DUOPA mark. Respondent’s domain name is confusingly similar to Complainant’s DUOPA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <duopa.top> domain name and that Respondent registered and uses the 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.
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 has rights in the DUOPA mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,732,594, registered May 5, 2015). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, Complainant’s registration of the DUOPA mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <duopa.top> domain name is confusingly similar to the DUOPA mark, as the name incorporates the mark in its entirety while merely adding the “.top” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“we conclude from a review of the record that Respondent’s <mellosolar.com> domain name is substantively identical and confusingly similar to Complainant’s MELLO SOLAR mark.”). The Panel holds that the <duopa.top> domain name is confusingly similar to the DUOPA mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <duopa.top> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <duopa.top> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the DUOPA mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of <duopa.top> domain name as “ZhangHua Zhong / Hua Zhong Zhang,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel holds that Respondent is not been commonly known by the <duopa.top> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <duopa.top> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent’s domain name resolves to a website that features links related to gambling and pornographic website. Use of a domain name the incorporates the mark of another to redirect users to gambling or other adult-oriented websites does not constitute a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”); see also Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the <duopa.top> domain name’s resolving website which features gambling and other adult-oreinted material. The Panel therefore finds that Respondent fails to have rights or legitimate interests in the <duopa.top> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent’s use of the <duopa.top> domain name to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a domain name that is confusing similar to a mark to which another has rights for commercial purposes constitutes bad faith registration and use per Policy ¶¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The <duopa.top> domain name resolves to a website that features gambling and pornographic material. Thus, the Panel holds that Respondent registered and uses the <duopa.top> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's DUOPA mark, it is inconceivable that Respondent could have registered the <duopa.top> domain name without actual knowledge of Complainant's rights in the mark. Based on the record, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the DUOPA mark prior to registering the domain name; actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <duopa.top> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 26, 2018
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