AbbVie Inc. v. Domain Registrar / Proxy Name Services LLC
Claim Number: FA2306002049338
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Registrar / Proxy Name Services LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbvieperkspot.com>, registered with 1API GmbH.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on June 16, 2023; Forum received payment on June 16, 2023.
On June 19, 2023, 1API GmbH confirmed by e-mail to Forum that the <abbvieperkspot.com> domain name (the Domain Name) is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 10, 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@abbvieperkspot.com. Also on June 19, 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.
A timely Response was received and determined to be complete on July 5, 2023.
On July 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
On or about July 5, 2023, after effecting service of the Complaint upon Respondent, Forum received a document reading in relevant part as follows:
Etison LLC is in receipt of your email notice dated June 19, 2023 in regards to the domain "abbvieperkspot.com". As an initial matter, please be advised that ClickFunnels is an ecommerce software and marketing company that provides high-quality, content-neutral web architecture to tens of thousands of active brands of all sizes. As part of the suite of services it makes available to its customers, ClickFunnels provides a domain name proxy and privacy protection service. ClickFunnels registers domain names and handles registration fees on behalf of its clients. It does not select the names of the registered domain names, nor does it provide input into other branding decisions. In an effort to quickly and amicably resolve this matter, I have disabled the DNS and ensured that use is prohibited. Additionally, we would like to consent to remedy and settle this dispute by transferring the domain.
This communication is signed by the Compliance Director of ClickFunnels. The information furnished to Forum by the registrar lists “Domain Registrar / Proxy Name Services, LLC” as the registrant of the Domain Name. Nowhere does the name of the registrant appear in this communication. Nowhere in this communication does the sender represent that it is the registrant of the Domain Name or that the registrant has authorized it to consent to a transfer. Nor does it explain what relationship, if any, Etison LLC may have to the Domain Name. Accordingly, the purported consent to transfer is without legal effect and the Panel will analyze the case in accordance with the UDRP.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a specialty-focused research-based biopharmaceutical company. It has rights in the ABBVIE mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and multiple trademark agencies throughout the world. Respondent’s <abbvieperkspot.com> Domain Name is identical or confusingly similar to Complainant’s mark. It incorporates the ABBVIE mark in its entirety, merely adding the term “perkspot” and the common generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the Domain Name. Complainant has not authorized or licensed Respondent to use the ABBVIE mark, and Respondent is not an authorized vendor, supplier or distributor of Complainant. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it to advertise and promote its own business and passing itself off as Complainant.
Respondent registered and uses the Domain Name in bad faith. It registered the Domain Name with actual knowledge of Complainant and its mark, and is using the Domain Name to attract for commercial gain Internet users to its website by causing confusion with Complainant’s mark as to the source, sponsorship, endorsement or affiliation of its web site. Also, it registered the Domain Name using a privacy shield.
B. Respondent
The substance of the Response filed herein is set forth in the analysis of the purported consent to transfer the Domain Name set forth above. It contains no allegations or argument directed at or relevant to the merits of the case.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
The ABBVIE mark was registered to Complainant with the USPTO (Reg. No. 4,340,091) on May 21, 2013 (USPTO registration certificate included in Complaint Exhibit C). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <abbvieperkspot.com> Domain Name is identical or confusingly similar to Complainant’s mark. It incorporates the mark in its entirety, merely adding the term “perkspot” and the “.com” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the ABBVIE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use 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;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it has not been commonly known by the Domain Name, (ii) Complainant has not authorized or licensed Respondent to use the ABBVIE mark, (iii) Respondent is not an authorized vendor, supplier or distributor of Complainant, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it to advertise and promote its own business and is passing itself off as Complainant. These allegations are addressed as follows:
The WHOIS information furnished to Forum by the registrar lists “Domain Registrar / Proxy Name Services, LLC” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has not licensed or authorized Respondent to use its mark, and that Respondent is not one of its vendors, suppliers or distributors. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit D contains screenshots of the website resolving from the Domain Name. It prominently features the name “abbvie” in the banner at the top of the first page but otherwise contains no reference to Complainant, its mark or its business and instead advertises and promotes its home lending business, named Palmlending, LLC There is no evidence of this site passing itself off as that of Complainant. The only use being made of the Domain Name appears to be to attract Internet traffic to Respondent’s website, where it conducts a business wholly unrelated to that of Complainant. Still, this is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the Domain Name within the meaning of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any relevant evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by registering and using a Domain Name including Complainant’s exact mark, Respondent is clearly using the confusingly similar Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Notwithstanding the fact that Respondent is neither passing off as nor competing with Complainant, its registration and use of the Domain Name falsely suggests an affiliation which does not exist, and the only possible purpose of its doing so is to attract Internet traffic to its own commercial website by trading off of Complainant’s mark. Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use.
It is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. Complainant’s mark is unique and whimsical in nature, it is a coined term which has no meaning except for its association with Complainant. It would not normally be chosen by another person for inclusion in a domain name for any purpose other than to target Complainant. This may not fit within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Next, although not argued in so many wards by Complainant, Respondent registered and is using the Domain Name, which incorporates and is confusingly similar to the ABBVIE mark, but Respondent has no legitimate connection with that mark or its owner, the Complainant. In light of the nonexclusive nature of Policy ¶ 4(b), the use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
Complainant argues that Respondent’s registration of the Domain Name with a privacy service is also evidence of bad faith. Many UDRP panels, especially in the years first following the adoption of the Policy, accepted this argument. More recently, however, in light of many instances of abuse of information gained from domain name registrations, many registrants, and indeed even registrars themselves, have opted to use privacy services. The WIPO Overview 3.0, at ¶ 3.6, acknowledges that there are recognized legitimate uses of privacy and proxy services, and in 2018 the European Union adopted its General Data Protection Regulation (GDPR) which potentially subjects entities around the world to stiff penalties in the interest of protecting personal identifying information of European Union citizens worldwide. Domain name registrars offer and recommend data privacy services to domain name registrants to protect their data, and domain name registrants are with increasing frequency using such services. In summary, there are any number of reasons a registrant might choose to use a privacy service that do not involve bad faith, and the use of such services cannot be taken ipso facto as evidence of bad faith. Rovio Entertainment Corporation v. baobin chi, Case No. D2021-0888 (WIPO May 26, 2021) (“. . . the mere fact that the WhoIs details of a respondent are protected by a privacy filter alone cannot be sufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a).”).
Any inference of bad faith based upon the use of a privacy service would most likely involve some notion that a respondent did so in order to hinder or delay the filing of an administrative proceeding seeking transfer. The use of a privacy service may cause some minor delay after the administrative proceeding is commenced, to enable the provider to obtain previously screened registrant information from the registrar, but it does not impose any real deterrent to the filing of a case. UDRP cases are in the nature of in rem proceedings. The Panel has jurisdiction over the domain name and can enter any orders contemplated by the relevant policy as to the domain name without personal jurisdiction over the respondent. In this case, there is no evidence to support any contention that Respondent’s use of a privacy service to register the Domain Name was for any improper or unlawful purpose. Complainant’s argument that it was in bad faith is not proven.
For the reasons first above set forth, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <abbvieperkspot.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: July 12, 2023
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