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DECISION

 

Abbott Laboratories v. Cong Ty TNHH Thuong Mai va San Xuat Mat Ong Nhan Duc

Claim Number: FA2308002057353

 

PARTIES

Complainant is Abbott Laboratories ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Cong Ty TNHH Thuong Mai va San Xuat Mat Ong Nhan Duc ("Respondent"), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ensure-nest.com>, registered with P.A. Viet Nam Company Limited.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 14, 2023; Forum received payment on August 14, 2023.

 

On August 15, 2023, P.A. Viet Nam Company Limited confirmed by e-mail to Forum that the <ensure-nest.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company 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 August 16, 2023, Forum served the Complaint and all Annexes, including a Vietnamese and English Written Notice of the Complaint, setting a deadline of September 5, 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@ensure-nest.com. Also on August 16, 2023, the Vietnamese and English 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 September 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

According to Rule 11(a), "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

 

In this case, the domain name was registered through a Vietnamese registrar, P.A. Viet Nam Company Limited. The domain name registrar's website and legal agreements, including the domain name registration agreement, are in Vietnamese. In addition, the content contained on the Respondent's website through the disputed domain name is also in Vietnamese. It is for this reason that the Complainant had the Complaint translated into Vietnamese and Forum had the required notices translated into Vietnamese.

 

Under the rules the Complainant may ask for the proceedings to be in English, but it did not do so here. Technically, therefore, these proceedings should all be conducted in Vietnamese, by a Panelist that is fluent in Vietnamese. However, given the decision below, the Panel believes the issue of language is not dispositive.

 

PARTIES' CONTENTIONS

A. Complainant

Abbott Laboratories ("Abbott" or "Complainant") is a global healthcare company, founded in 1886 by physician Wallace Calvin Abbott. The company sells its products, consisting of diagnostics, medical devices, nutritionals and branded generic pharmaceuticals, in more than 160 countries and has more than 115,000 employees worldwide.

 

One of Complainant's nutritional products is ENSURE, which was introduced into the market in 1973. According to the Complainant, ENSURE is the No. 1 doctor recommended brand for oral nutritional products for patients. Complainant has registered the ENSURE mark in dozens of countries around the world, including in Vietnam.  One of the trademark registrations from the Vietnamese Office of Intellectual Property, No. 49740, was originally filed on September 9, 2001.

 

Respondent registered the disputed domain name, ensure-nest.com on May 4, 2022, nearly 21 years after Complainant's applied for a trademark registration for its ENSURE mark in Vietnam. A news article submitted by Complainant dated November 28, 2017, confirms that Abott Laboratories first entered the Vietnamese market more than 20 years prior to the publishing of the article. Complainant does considerable business in Vietnam including the distribution of hundreds of thousands of bottles of the ENSURE product there.  See Comp. Exhibit D.

 

Claimant alleges that the disputed domain name is confusingly similar to the ENSURE mark by merely adding a hyphen, the term "nest" and the most common gTLD, .com. It alleges that the term "nest" is a generic or descriptive term and therefore does not avoid confusing similarity.  Respondent is not commonly known by the disputed domain name and has not been licensed or otherwise authorized to use the Complainant's marks. Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is it using the name in connection with a legitimate noncommercial or fair use of goods or services pursuant to Policy ¶ 4(c)(i).  Respondent is using the disputed domain name to attract consumers to unrelated products.

 

Complainant alleges that Respondent's registration and use of the disputed domain name was in bad faith because: (a) it had actual knowledge of Complainant's rights based on the use of the mark on the Website, and (b) it diverted consumers looking for Complainant to its own products and services.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.  Respondent registered the disputed domain name on May 4, 2022.

 

FINDINGS

1.        The disputed domain name is arguably confusingly similar to the Complainant's mark for standing purposes under the Policy. However, given the decision below, it is not necessary to issue a definitive finding on this issue.

2.       The Complainant has not met its burden of proof to establish that the Respondent does not have rights and/or legitimate interests to the disputed domain name.

3.       Similarly, the Complainant has not met its burden of establishing that the Respondent under the totality of circumstances registered and used the disputed domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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, but not required, 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the ENSURE mark globally based upon numerous registrations with national trademark offices, including Registration No. 965,204 with the United States Patent and Trademark Office initially registered on July 31, 1973 in connection with "Liquid nutritive perparations for oral or gavage feeding."  Just as pertinent here, Complainant has several trademark registrations in Vietnam, including Registration No. 49740 with the Vietnamese National Office of Intellectual Property, which has a "priority date" of September 21, 2001. See Complaint at Exhibit C. The Registration in Vietnam lists the associated goods and services as "Dietetic substances adapted for medical use."  Id.  

 

Registration of a mark with the USPTO or any other national trademark office substantively reviewing trademark applications is a valid showing of rights in a mark under Policy ¶ 4(a)(i). 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)."). Since Complainant provides evidence of registration of the ENSURE mark with the USPTO as well as the Vietnam Office of Intellectual Property, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).

 

Complainant argues Respondent's <ensure-nest.com> domain name is identical or confusingly similar to Complainant's ENSURE mark. The addition of a gTLD and a generic term fails to sufficiently distinguish a Disputed Domain Name from a mark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) ("Respondent's <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant's ANT FINANCIAL mark.  It incorporates the mark entirely.  It adds a hyphen, the descriptive terms "investor relations," and the ".com" gTLD, but these additions are insufficient to distinguish the Domain name from complainant's mark for the purposes of Policy ¶ 4(a)(i)."). 

 

Here, the disputed domain contains the ENSURE mark in its entirety while adding in a hyphen, the term "nest", and the ".com" gTLD.   According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), Section 1.7 states that:

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name.

 

This test 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 disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant's trademark and the disputed domain name to ascertain confusing similarity.

 

While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant's mark, the broader case context such as website content trading off the complainant's reputation, or a pattern of multiple respondent domain names targeting the complainant's mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant's reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element).

Issues such as the strength of the complainant's mark or the respondent's intent to provide its own legitimate offering of goods or services without trading off the complainant's reputation, are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner's standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.

In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.

Section 1.8 of the WIPO Jurisprudential Overview 3.0 adds that "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element." 

Complainant is correct in asserting that the addition of generic or descriptive terms does not prevent a finding of confusing similarity between a domain name and a Complainant's trademark. See See Advance Magazine Publishers Inc. v. Privacy service provided by Withheld for Privacy ehf / Herman Leman, Contact Privacy Inc. Customer 7151571251 / House of Dreams Shop LLC, Alexandr Shishkin, Whois Privacy Protection Foundation / Yanis B., Welcome Formation, Vogue Meta, Mrs Bilkish / Air Ticket Bangladesh, Souleymen Bardai, D2022-2046 (WIPO August 15, 2022) ("the addition of such terms as "meta", "themeta", or "nft"  in the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Complainants' trademark.").

 

However, is the addition of the term "nest", a term completely unrelated to the complainant's goods and/or services, "confusingly similar" to the Complainant's ENSURE mark? Complainant argues that in the disputed domain name, <ensure-nest.com>, the "ensure" portion of the domain name is the dominant feature.  However, one can just as easily argue that the term "nest" is the dominant portion of the domain name given that the products offered on Respondent's website relate to birds' nests. However, given the decision on elements two and three of the Policy below, it is not crucial to definitively determine whether the domain name and the Complainant's mark are "confusingly similar."

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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.").

 

Under Policy ¶ 4(c)(ii), Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in theENSURE mark.  In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See 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 names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. 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 disputed domain name lists the owner of the domain as the Respondent and there is no evidence in the record whereby the Respondent is either commonly known by the domain name nor that the Complainant has authorized the Respondent to use Complainant's ENSURE mark.

 

That said, Complainant must also establish that the Respondent is not using, and has not used, the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the disputed Domain Name.  Complainant alleges that the Respondent's use of the disputed domain name in connection with a commercial website that sells various food products under the name ENSURE NEST is not a bona fide offering of goods or services. It states that seeking to attract traffic and revenue using Complainant's ENSURE trademark does not reflect of bona fide offering under the Policy.  The Complainant then cites a number of previous UDRP decisions including Microsoft Corporation v. Pengcheng Zhang, FA 1819611 (Forum Jan. 3, 2019), Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002), and Fossill, In. v. Fong, FA 1116234 (Forum, Jan. 10, 2007) to support its claims.

 

The Panel, however, views this case differently than the above cases. In both Microsoft and Fossil, the defaulting Respondent used the disputed domain names to link to pay-per-click ads or ad-driven third-party websites. In Nike, the Respondent used the disputed domain name to sell the same types of sporting equipment as actually sold by that complainant. In this case, however, the disputed domain name leads users to a live website in Vietnamese, which through the use of Google Translate, actually sells bird's nests-related food items. The Panel notes that in many Asian countries such as Vietnam, Thailand, Japan and China, bird's nests are in fact sold as food items, skincare products and as a popular source of gifts. The Complainant has not alleged that it also sells Bird's Nests-related items.

 

The Panel believes that the determination of whether the Respondent has rights or a legitimate interest to the disputed domain name is dependent on whether or not the Respondent, in selling food items made from bird's nests, is infringing on Complainant's trademark rights in the ENSURE mark. This determination, however, exceeds the scope of the UDRP and relies on complex legal issues which are more suitable for the courts to decide as opposed to being decided under the UDRP. The Policy's primary purpose is to "combat abusive domain name registrations and not provide a prescriptive code for resolving more complex trademark disputes." See Swisher International, Inc. v. Hempire State Smoke Shop, FA 1952939 (July 27, 2021) (quoting Luvilon Industries NV v. Top Serve Tennis Pty Ltd, DAU2005-0004 (WIPO Sept.r 6, 2005)).  Although Luvilon was decided under the .au Dispute Resolution Policy, the .au Dispute Resolution Policy is substantially the same as the UDRP with respect to its purpose.     Also see Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) ("the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name.  The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.").

 

For all of the reasons above, the Panel does not believe that the Complainant has met its burden of proof in establishing that the Respondent does not have rights or a legitimate interest to the disputed domain name.

 

Registration and Use in Bad Faith

The Complainant's claim that the disputed domain name was both registered and used in bad faith is inextricably tied to the issue of whether the Respondent has rights or a legitimate interest in the domain name. Complainant argues that the domain name was registered in bad faith because the Respondent had actual knowledge of the Complainant's rights when it registered the name, and the domain name was used in bad faith by attempting to commercially benefit from the goodwill associated with Complainant's trademarks.  

 

However, in light of (a) the Complainant's failure to prove the Respondent lacks rights or legitimate interests to the disputed domain name, and (b) the fact that to make such a determination likely involves evidentiary tools not available to the parties or to the panels, the Panel does not find it necessary to address the question of registration and use in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <ensure-nest.com> domain name REMAIN WITH Respondent.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: September 19, 2023