Abbott Laboratories v. Michael Williams / abbott
Claim Number: FA2101001927115
Complainant is Abbott Laboratories (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Michael Williams / abbott (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbottlaboratorieusa.com>, registered with NameCheap, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2021; the Forum received payment on January 4, 2021.
On January 4, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <abbottlaboratorieusa.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 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@abbottlaboratorieusa.com. Also on January 7, 2021, 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 February 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant, Abbott Laboratories, is a global healthcare company devoted to improving people’s lives. Complainant has rights in the ABBOTT mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,724,557, registered December 15, 2009).
2. Respondent’s <abbottlaboratorieusa.com>[i] domain name is confusingly similar to Complainant’s mark because it merely adds the terms “laboratorie” and “usa” along with the “.com” generic top level domain (“gTLD”) to Complainant’s ABBOTT mark.
3. Respondent does not have rights or legitimate interests in the <abbottlaboratorieusa.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use the ABBOTT mark.
4. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain redirects to Complainant’s own website.
5. Respondent registered and uses the <abbottlaboratorieusa.com> domain name in bad faith. Respondent redirects the domain name to Complainant’s own website.
6. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the ABBOTT mark based on the fame of the mark worldwide.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ABBOTT mark. Respondent’s domain name is confusingly similar to Complainant’s ABBOTT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <abbottlaboratorieusa.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 rights in the ABBOTT mark based on registration with the USPTO (e.g., Reg. No. 3,724,557, registered December 15, 2009). Registration of a mark with the USPTO is a valid showing of rights in a mark. 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.”). Because the record contains evidence of the ABBOTT mark with the USPTO, the Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <abbottlaboratorieusa.com> domain name is confusingly similar to Complainant’s mark because it merely adds the terms “laboratorie” and “usa” along with the “.com” gTLD to Complainant’s ABBOTT mark. The addition of generic, descriptive, or geographic terms to a mark, as well as a gTLD, are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Complainant points out that the addition of the term “laboratorie” reflects Complainant’s official “Abbott Laboratories” name. Thus, the <abbottlaboratorieusa.com> domain name is confusingly similar to Complainant’s ABBOTT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <abbottlaboratorieusa.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <abbottlaboratorieusa.com> domain name because Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use the ABBOTT mark. When no response is submitted, WHOIS information can be used to identify a respondent, and even if a respondent appears to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). Likewise, lack of authorization to use a mark constitutes a 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). Here, the WHOIS information lists “Michael Williams / Abbott” as the registrant; however, Complainant has provided evidence that this information is false as the email address provided is for a competing pharmaceutical company and no additional evidence suggests Respondent is commonly known by the <abbottlaboratorieusa.com> domain, nor is there evidence that Complainant has authorized Respondent to use the ABBOTT mark in any way. Thus, the Panel holds that Respondent is not commonly known by the <abbottlaboratorieusa.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <abbottlaboratorieusa.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain redirects to Complainant’s own website. Under Policy ¶¶ 4(c)(i) or (iii), redirecting a domain name to a complainant’s own website does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii). . .”). Here, Complainant provides evidence that the <abbottlaboratorieusa.com> domain name automatically redirects to Complainant’s “abbott.com” website. Thus, the Panel holds that Respondent is not using the <abbottlaboratorieusa.com> 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <abbottlaboratorieusa.com> domain name in bad faith because Respondent redirects the domain name to Complainant’s own website. Under Policy ¶ 4(a)(iii), redirecting a domain name incorporating the mark of a complainant to the complainant’s own website is evidence of bad faith. See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."). The record includes evidence that the <abbottlaboratorieusa.com> domain name automatically redirects to Complainant’s official website. Thus, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Additionally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the ABBOTT mark based on the fame of the mark worldwide. When a mark is famous and well-known, actual knowledge is sufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent must have been familiar with Complainant’s ABBOTT mark because it was already famous and Respondent intentionally incorporated the mark in the abbottlaboratorieusa.com> domain name to suggest an association with Complainant’s products and services. Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbottlaboratorieusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 5, 2021
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