AbbVie, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1904001837944
Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwabbvie.com>, registered with GoDaddy.com, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2019; the Forum received payment on April 9, 2019.
On April 9, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwwabbvie.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2019 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@wwwabbvie.com. Also on April 9, 2019, 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 May 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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, AbbVie Inc., uses their mark ABBVIE in connection with biopharmaceuticals. Complainant has rights in the ABBVIE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,344,288, registered May 28, 2013). See Amend. Compl. Ex. C. Respondent’s <wwwabbvie.com> domain name is confusingly similar to Complainant’s ABBVIE mark as it incorporates the mark in its entirety and merely adds the generic or descriptive abbreviation “www” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <wwwabbvie.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ABBVIE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to redirect users to various third party sites unrelated to Complainant. Further, Respondent is offering the domain name for sale.
Respondent registered and is using the <wwwabbvie.com> domain name in bad faith as Respondent offers to sell the domain name. Further, Respondent has exhibited a pattern of bad faith registration. Additionally, Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s pay-per-click advertising website. Moreover, Respondent employed a privacy service when registering the domain name. Finally, Respondent had actual knowledge of Complainant’s rights in the ABBVIE mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,340,091 ABBVIE (word), registered May 21, 2013 for services in class 44;
No. 4,358,949 ABBVIE (word), registered June 25, 2013 for goods in class 5; and
No. 4,344,288 ABBVIE (word), registered May 28, 2013 for services in class 42.
The disputed domain name was registered on November 30, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the ABBVIE trademark based upon registration of the trademark with the USPTO (e.g. Reg. No. 4,344,288, registered May 28, 2013). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the ABBVIE trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <wwwabbvie.com> domain name is confusingly similar to the ABBVIE trademark as it incorporates the trademark in its entirety and merely adds the generic or descriptive abbreviation “www” and the “.com” gTLD. Omission of a period after the generic term “www” is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See The Toro Company v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1615881 (Forum May 27, 2015) (concluding that the <wwwtoro.com> domain name is confusingly similar, as the domain name consists of the Complainant's TORO mark, the generic term “www” and the gTLD “.com”). The Panel therefore agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s ABBVIE trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <wwwabbvie.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ABBVIE trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its trademark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record in the present case identifies the owner of the disputed domain name as “Carolina Rodrigues / Fundacion Comercio Electronico” and no information on record indicated that Respondent was authorized to register a domain name with Complainant’s trademark. The Panel therefore find under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <wwwabbvie.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <wwwabbvie.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the domain name resolves to a website which is being used to redirect users to various third party sites unrelated to Complainant. Use of a domain name to redirect users to third party websites unrelated to a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel notes that Complainant provides screenshots of the various websites allegedly associated with the disputed domain name, showing redirections to websites such as “World of Warships” and “Keto Lux.” The Panel therefore determines that Respondent does not have rights or legitimate interests in the <wwwabbvie.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent’s lack of rights or legitimate interests in the <wwwabbvie.com> domain name is demonstrated by its offer to sell the disputed domain name. Offering to sell a disputed domain name may indicate a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Here, Respondent has offered to sell the disputed domain name for at minimum $500 as shown in Complainant’s provided screenshot. As such, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and is using the disputed <wwwabbvie.com> domain name in bad faith as Respondent offers to sell the domain name. Offering to sell a confusingly similar domain name can evince bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). As noted above, the Complainant has provided a screenshot of a website where the domain name is in fact listed for sale. The Panel therefore considers the Respondent’s general offer to sell the disputed domain name as evidence of bad faith per Policy ¶ 4(b)(i).
Further, Complainant contends that Respondent has engaged in a pattern of bad faith registration based on past UDRP proceedings ordering the transfer of disputed domain names. Past adverse UDRP proceedings against a respondent may establish bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant cites several past UDRP proceedings which list the Respondent as “Carolina Rodrigues / Fundacion Comercio Electronico.” The Panel finds that Respondent registered the <wwwabbvie.com> domain name in bad faith per Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s various resolving websites. Use of a disputed domain name to divert users away from a complainant’s own website to those of unrelated third-parties, presumably for commercial gain, may demonstrate bad faith per Policy ¶ 4(b)(iv). See Dell Inc. v. Prashant Chhibber, FA 1785651 (Forum June 1, 2018) (“The Panel finds that Respondent used the domain names to create confusion with Complainant’s DELL mark for commercial gain and that Respondent registered the domain names in bad faith under Policy ¶ 4(b)(iv).”). Again, as noted above, Complainant provides screenshots of the various websites allegedly associated with the disputed domain name, and based on the evidence provided by the Complainant, the Panel finds that Respondent registered and uses the <wwwabbvie.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s bad faith is indicated by its actual knowledge of Complainant’s rights in the ABBVIE trademark prior to registering the disputed domain name. A respondent’s actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name may indicate bad faith per 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.”). Here, Complainant asserts that Respondent’s actual knowledge can be inferred given the uniqueness of the trademark and the fact that the trademark is well-known. Based on the evidence and arguments provided by the Complainant, the Panel agrees with Complainant’s contention, and finds that Respondent registered the disputed domain name in bad faith per 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 <wwwabbvie.com> domain name be TRANSFERRED from Respondent to Complainant
Petter Rindforth, Panelist
Dated: May 6, 2019
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