AbbVie, Inc. v. Zhichao Yang
Claim Number: FA2107001954234
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aallerganaestheticsgiftcard.com>, <ailerganaestheticsgiftcard.com>, <alierganaestheticsgiftcard.com>, <allergaanestheticsgiftcard.com>, <allergamaestheticsgiftcard.com>, <allerganaedtheticsgiftcard.com>, <allerganaeestheticsgiftcard.com>, <allerganaeshteticsgiftcard.com>, <allerganaesstheticsgiftcard.com>, <allerganaestgeticsgiftcard.com>, <allerganaestheeticsgiftcard.com>, <allerganaestheitcsgiftcard.com>, <allerganaesthericsgiftcard.com>, <allerganaestheticcsgiftcard.com>, <allerganaestheticgsiftcard.com>, <allerganaestheticscard.com>, <allerganaestheticsgfitcard.com>, <allerganaestheticsgftcard.com>, <allerganaestheticsggiftcard.com>, <allerganaestheticsgidtcard.com>, <allerganaestheticsgifftcard.com>, <allerganaestheticsgift.com>, <allerganaestheticsgiftard.com>, <allerganaestheticsgiftcaard.com>, <allerganaestheticsgiftcardd.com>, <allerganaestheticsgiftcarf.com>, <allerganaestheticsgiftcarrd.com>, <allerganaestheticsgiftcatd.com>, <allerganaestheticsgiftcrad.com>, <allerganaestheticsgiftcsrd.com>, <allerganaestheticsgiftxard.com>, <allerganaestheticsgifycard.com>, <allerganaestheticsgiiftcard.com>, <allerganaestheticsgitfcard.com>, <allerganaestheticsglftcard.com>, <allerganaestheticsgoftcard.com>, <allerganaestheticsigftcard.com>, <allerganaesthetiicsgiftcard.com>, <allerganaesthetiscgiftcard.com>, <allerganaesthetisgiftcard.com>, <allerganaesthetivsgiftcard.com>, <allerganaesthetocsgiftcard.com>, <allerganaesthetticsgiftcard.com>, <allerganaestheyicsgiftcard.com>, <allerganaesthheticsgiftcard.com>, <allerganaesthteicsgiftcard.com>, <allerganaesthwticsgiftcard.com>, <allerganaestjeticsgiftcard.com>, <allerganaesttheticsgiftcard.com>, <allerganaetheticsgiftcard.com>, <allerganaetsheticsgiftcard.com>, <allerganarstheticsgiftcard.com>, <allerganastheticsgiftcard.com>, <allrrganaestheticsgiftcard.com>, <myallerganaestheticsgiftcard.com>, and <wwwallerganaestheticsgiftcard.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (hereafter, the “disputed domain names”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2021; the Forum received payment on July 7, 2021. The Complaint was received in English.
On Jul 12, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the disputed domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 July 15, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 4, 2021 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@aallerganaestheticsgiftcard.com, postmaster@ailerganaestheticsgiftcard.com, postmaster@alierganaestheticsgiftcard.com, postmaster@allergaanestheticsgiftcard.com, postmaster@allergamaestheticsgiftcard.com, postmaster@allerganaedtheticsgiftcard.com, postmaster@allerganaeestheticsgiftcard.com, postmaster@allerganaeshteticsgiftcard.com, postmaster@allerganaesstheticsgiftcard.com, postmaster@allerganaestgeticsgiftcard.com, postmaster@allerganaestheeticsgiftcard.com, postmaster@allerganaestheitcsgiftcard.com, postmaster@allerganaesthericsgiftcard.com, postmaster@allerganaestheticcsgiftcard.com, postmaster@allerganaestheticgsiftcard.com, postmaster@allerganaestheticscard.com, postmaster@allerganaestheticsgfitcard.com, postmaster@allerganaestheticsgftcard.com, postmaster@allerganaestheticsggiftcard.com, postmaster@allerganaestheticsgidtcard.com, postmaster@allerganaestheticsgifftcard.com, postmaster@allerganaestheticsgift.com, postmaster@allerganaestheticsgiftard.com, postmaster@allerganaestheticsgiftcaard.com, postmaster@allerganaestheticsgiftcardd.com, postmaster@allerganaestheticsgiftcarf.com, postmaster@allerganaestheticsgiftcarrd.com, postmaster@allerganaestheticsgiftcatd.com, postmaster@allerganaestheticsgiftcrad.com, postmaster@allerganaestheticsgiftcsrd.com, postmaster@allerganaestheticsgiftxard.com, postmaster@allerganaestheticsgifycard.com, postmaster@allerganaestheticsgiiftcard.com, postmaster@allerganaestheticsgitfcard.com, postmaster@allerganaestheticsglftcard.com, postmaster@allerganaestheticsgoftcard.com, postmaster@allerganaestheticsigftcard.com, postmaster@allerganaesthetiicsgiftcard.com, postmaster@allerganaesthetiscgiftcard.com, postmaster@allerganaesthetisgiftcard.com, postmaster@allerganaesthetivsgiftcard.com, postmaster@allerganaesthetocsgiftcard.com, postmaster@allerganaesthetticsgiftcard.com, postmaster@allerganaestheyicsgiftcard.com, postmaster@allerganaesthheticsgiftcard.com, postmaster@allerganaesthteicsgiftcard.com, postmaster@allerganaesthwticsgiftcard.com, postmaster@allerganaestjeticsgiftcard.com, postmaster@allerganaesttheticsgiftcard.com, postmaster@allerganaetheticsgiftcard.com, postmaster@allerganaetsheticsgiftcard.com, postmaster@allerganarstheticsgiftcard.com, postmaster@allerganastheticsgiftcard.com, postmaster@allrrganaestheticsgiftcard.com, postmaster@myallerganaestheticsgiftcard.com, postmaster@wwwallerganaestheticsgiftcard.com. Also on July 15, 2021, the Chinese language 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 August 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Complainant alleges that, because Respondent is conversant in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that: (1) each of the disputed domain names contains the English mark ALLERGAN with additional misspellings of English words like “gift card” and “aesthetics”; (2) each of the disputed domain names resolves to pages that are fully in the English language; and (3) Respondent has been involved in numerous UDRP complaints where the Panel has found that he is proficient in the English language. The Panel finds that Respondent is conversant in the English language, and determines that this proceeding will be in English.
A. Complainant
1. Respondent’s disputed domain names are confusingly similar to Complainant’s ALLERGAN mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent did not file a Response.
Complainant is in the pharmaceutical business and holds a registration for the ALLERGAN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,147,765, registered March 31, 1998).
Respondent registered the disputed domain names on May 12, 2021, and uses them for hyperlinks unrelated to Complainant or hyperlinks for third party providers of Complainant’s products.
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”).
The Panel finds that Complainant has rights in the ALLERGAN mark through Complainant’s registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s disputed domain names all include the ALLERGAN trademark in its entirety (or a misspelling thereof) and include generic or descriptive terms like “aesthetics” or “gift card” or misspellings of those terms. Adding descriptive terms to a complainant’s mark or a misspelled version of a complainant’s mark fails to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Klein Tools, Inc. v. chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s ALLERGAN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names, as Respondent is not commonly known by the domain names. Complainant has not authorized Respondent to use its ALLERGAN mark. The WHOIS information for the disputed domain names lists the registrant as “Zhichao Yang.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights 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.”); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain names where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Complainant argues that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses them in connection with various hyperlinks. Using a disputed domain name in connection with unrelated or competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots showing the disputed domain names are being used in connection with parked pages that display links to various third party sites, including sites of unrelated retailers and third party providers of Complainant’s products. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the disputed domain names in bad faith, as Respondent has a history of cybersquatting. A respondent’s prior adverse UDRP history can demonstrate bad faith under Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Complainant shows that Respondent is a known serial cybersquatter with over 100 cases against him involving typosquatting. See e.g., Caterpillar Inc. v. Zhichao Yang, FA2002001882877 (Forum Mar. 14, 2020) (“Respondent has established a pattern of bad faith registrations. Therefore, the Panel may find Respondent registered and uses the disputed domain names in bad faith per Policy ¶ (4)(b)(ii).) The Panel finds therefore finds bad faith under Policy ¶ 4(b)(ii).
Complainant also contends that Respondent registered and uses the disputed domain names in bad faith as Respondent uses them in connection with hyperlinks unrelated to Complainant or hyperlinks for third party providers of Complainant’s products. Using a disputed domain name in connection with competitive and unrelated hyperlinks can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (4)(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also 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). Accordingly, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (4)(b)(iv).
Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the ALLERGAN mark. Complainant claims that it is clear from Respondent’s use of the ALLERGAN mark in each of the disputed domain names, that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aallerganaestheticsgiftcard.com>, <ailerganaestheticsgiftcard.com>, <alierganaestheticsgiftcard.com>, <allergaanestheticsgiftcard.com>, <allergamaestheticsgiftcard.com>, <allerganaedtheticsgiftcard.com>, <allerganaeestheticsgiftcard.com>, <allerganaeshteticsgiftcard.com>, <allerganaesstheticsgiftcard.com>, <allerganaestgeticsgiftcard.com>, <allerganaestheeticsgiftcard.com>, <allerganaestheitcsgiftcard.com>, <allerganaesthericsgiftcard.com>, <allerganaestheticcsgiftcard.com>, <allerganaestheticgsiftcard.com>, <allerganaestheticscard.com>, <allerganaestheticsgfitcard.com>, <allerganaestheticsgftcard.com>, <allerganaestheticsggiftcard.com>, <allerganaestheticsgidtcard.com>, <allerganaestheticsgifftcard.com>, <allerganaestheticsgift.com>, <allerganaestheticsgiftard.com>, <allerganaestheticsgiftcaard.com>, <allerganaestheticsgiftcardd.com>, <allerganaestheticsgiftcarf.com>, <allerganaestheticsgiftcarrd.com>, <allerganaestheticsgiftcatd.com>, <allerganaestheticsgiftcrad.com>, <allerganaestheticsgiftcsrd.com>, <allerganaestheticsgiftxard.com>, <allerganaestheticsgifycard.com>, <allerganaestheticsgiiftcard.com>, <allerganaestheticsgitfcard.com>, <allerganaestheticsglftcard.com>, <allerganaestheticsgoftcard.com>, <allerganaestheticsigftcard.com>, <allerganaesthetiicsgiftcard.com>, <allerganaesthetiscgiftcard.com>, <allerganaesthetisgiftcard.com>, <allerganaesthetivsgiftcard.com>, <allerganaesthetocsgiftcard.com>, <allerganaesthetticsgiftcard.com>, <allerganaestheyicsgiftcard.com>, <allerganaesthheticsgiftcard.com>, <allerganaesthteicsgiftcard.com>, <allerganaesthwticsgiftcard.com>, <allerganaestjeticsgiftcard.com>, <allerganaesttheticsgiftcard.com>, <allerganaetheticsgiftcard.com>, <allerganaetsheticsgiftcard.com>, <allerganarstheticsgiftcard.com>, <allerganastheticsgiftcard.com>, <allrrganaestheticsgiftcard.com>, <myallerganaestheticsgiftcard.com>, and <wwwallerganaestheticsgiftcard.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 9, 2021
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