AbbVie, Inc. v David Jurewicz / JumpStart System
Claim Number: FA2003001889996
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., United States. Respondent is David Jurewicz / JumpStart System (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buykaletra.online>, <buykaletra.org>, <purchasekaletra.online>, and <purchasekaletra.net>, registered with 1&1 IONOS SE.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2020; the Forum received payment on March 26, 2020.
On March 30, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <buykaletra.online>, <buykaletra.org>, <purchasekaletra.online>, <purchasekaletra.net> domain names are registered with 1&1 IONOS SE and that Respondent is the current registrant of the names. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2020 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@buykaletra.online, postmaster@buykaletra.org, postmaster@purchasekaletra.online, postmaster@purchasekaletra.net. Also on April 1, 2020, 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 April 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, AbbVie, Inc., is a research-based biopharmaceutical company. Complainant has rights in the KALTERA mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,451,327, registered May 15, 2001). The disputed domain names <buykaletra.online>, <buykaletra.org>, <purchasekaletra.online>, and <purchasekaletra.net> are confusingly similar to Complainant’s KALTERA mark because they include the mark in its entirety, merely adding the generic or descriptive terms “buy” or “purchase” followed by a generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the names and is not licensed by Complainant to use the KALTERA mark. Further, Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent provides links to unrelated third-party sites. Additionally, Respondent’s ownership of the disputed domain names creates the potential for the sale of counterfeit pharmaceuticals.
iii) Respondent registered and used the disputed domain names in bad faith. Respondent uses Complainant’s mark to attract users to its own websites where it displays links to unrelated products and services. Respondent has also created an opportunity to commit fraud through the sale of generic versions of Complainant's drug. Additionally, Respondent has actual knowledge of Complainant’s rights in the KALTERA mark.
B. Respondent
Respondent did not submit a response.
1. The disputed domain names were registered on March 17, 2020.
2. Complainant has established rights in the KALTERA mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,451,327, registered May 15, 2001).
3. The websites associated with the disputed domain names display links to third party websites unrelated to Complainant’s business.
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 asserts rights in the KALTERA mark based on registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant has provided evidence of registration with the USPTO (e.g. Reg. No. 2,451,327, registered May 15, 2001). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s KALTERA mark because they include the mark in its entirety, merely adding the generic or descriptive terms “buy” or “purchase” followed by a gTLD. The addition of generic or descriptive terms and a gTLD is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Complainant asserts that the disputed domain names add either “buy” or “purchase” to the KALTERA mark as well as the “.org”, “.net”, or “.online” gTLD. Thus, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the names and is not licensed by Complainant to use the KALTERA mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “David Jurewicz / JumpStart System” as the registrant of the disputed domain names and Complainant claims that it has not licensed or authorized Respondent to use the KALTERA mark. Thus, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use because Respondent currently only uses the sites to provide links to unrelated third-party websites. Use of a disputed domain name to redirect Internet users to unrelated commercial websites is not considered a bona fide offering of goods or services, or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain names and notes that the links present on the websites appear to redirect to third-party sites unrelated to Complainant’s business. The Panel agrees with Complainant that Respondent is not using the disputed domain names for bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain names.
Complainant claims that Respondent registered and uses the disputed domain names in bad faith because Respondent uses Complainant’s KALTERA mark to attract users to its own websites where it displays links to unrelated products and services. Use of a disputed domain name to attract users for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant argues that Respondent has unfairly and opportunistically attempted to commercially benefit from the KALTERA mark by attracting users to its sites. Complainant provides screenshots of the websites associated with the disputed domain names which appear to display links to third party websites, presumably for commercial gain. The Panel agrees with Complainant, and thus it finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buykaletra.online>, <buykaletra.org>, <purchasekaletra.online>, <purchasekaletra.net> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 1, 2020
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