AbbVie Inc. v. Oliver Scott
Claim Number: FA2306002047328
Complainant is AbbVie Inc. (“Complainant”), represented by Kim Boyle of Richard Law Group, Inc., Texas. Respondent is Oliver Scott (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pm-abbvie.com>, registered with 123-Reg Limited.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023. Forum received payment on June 2, 2023.
On June 8, 2023, 123-Reg Limited confirmed by e-mail to Forum that the <pm-abbvie.com> domain name is registered with 123-Reg Limited and that Respondent is the current registrant of the name. 123-Reg Limited has verified that Respondent is bound by the 123-Reg Limited 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 June 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2023 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@pm-abbvie.com. Also on June 9, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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., is a specialty-focused research-based biopharmaceutical company that employs approximately 50,000 persons worldwide in over 70 countries and has over $58 billion in annual revenues. Its official website is at “www.abbvie.com”. Complainant has rights to the ABBVIE mark based upon numerous registrations, including with the United Kingdom Intellectual Property Office (“UKIPO”). Respondent’s <pm-abbvie.com> domain name is confusingly similar to Complainant’s ABBVIE mark.
Respondent does not have rights or legitimate interests in the <pm-abbvie.com> domain name. Respondent is not licensed or authorized to use Complainant’s ABBVIE mark and is not commonly known by the domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. That the domain name resolves to a page which requires a username and password for access, is an indication that Respondent may be engaging in conduct best characterized as “phishing.” Further, there is no possible legitimate business that Respondent could have that would include the well-known ABBVIE trademark.
Respondent registered and uses the <pm-abbvie.com> domain name in bad faith. There is no possible use that Respondent could make of the domain name that would not be in bad faith. It is clear from the domain name and Respondent’s possible use of it for “phishing” that Respondent registered the domain name with knowledge of Complainant’s rights in the ABBVIE trademark and intended to create an association with Complainant and its products and services. Respondent’s use of a privacy shield raises a presumption of bad faith which Respondent has done nothing to rebut.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights to the ABBVIE mark based upon registration with the UKIPO (Reg. No. UK00910740141, registered on August 1, 2012) and other trademark registration agencies worldwide. The Panel finds Respondent’s <pm-abbvie.com> domain name to be confusingly similar to Complainant’s ABBVIE mark as it contains the mark in its entirety, merely adding the letters “pm”, a hyphen, and the inconsequential generic top-level domain (“gTLD”) “.com” to form the domain name.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <pm-abbvie.com> domain name was registered on October 1, 2019, many years after Complainant has shown that its ABBVIE mark had become famous. It resolves to a webpage that requires a username and password for access.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <pm-abbvie.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous ABBVIE mark when Respondent registered the <pm-abbvie.com> domain name and that Respondent registered and is using the domain name in bad faith for the purpose of phishing for the personal information of Internet users by masquerading as Complainant.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pm-abbvie.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 10, 2023.
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