AbbVie, Inc. v. Domain Administrator / Sugarcane Internet Nigeria Limited
Claim Number: FA2107001954316
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Administrator / Sugarcane Internet Nigeria Limited (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com>, registered with Sav.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2021; the Forum received payment on July 8, 2021.
On July 8, 2021, Sav.com, LLC confirmed by e-mail to the Forum that the <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names are registered with Sav.com, LLC and that Respondent is the current registrant of the names. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC 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 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@allerganaesthecticsgiftcard.com, postmaster@allerganaestheicsgiftcard.com, postmaster@allerganasethicsgiftcard.com, postmaster@exclusiveallerganaestheticsgiftcard.com. Also on July 12, 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 August 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, AbbVie, Inc., is a research-based biopharmaceutical company. Complainant has rights in the ALLERGAN mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,596,709, registered Mar. 24, 2009). Respondent’s <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names are confusingly similar to Complainant’s ALLERGAN mark because they wholly incorporate the mark, merely adding the generic terms “aesthetics,” “exclusive,” and “gift card,” or misspelled versions of them, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names. Respondent is not commonly known by the domain names and is not licensed to use Complainant’s ALLERGAN mark. Further, Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, the disputed domains resolve to parked pages with links to various unrelated sites. Respondent also offers the disputed domain names for sale.
Respondent registered and used the <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names in bad faith. Respondent uses the domain names to promote unrelated businesses for its own commercial benefit. Additionally, Complainant registered the disputed domain names with knowledge of Complainant’s rights in the ALLERGAN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names.
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 claims rights in the ALLERGAN mark based on registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant provides evidence of registration with the USPTO (e.g. Reg. No. 3,596,709, registered Mar. 24, 2009). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names are confusingly similar to Complainant’s ALLERGAN mark because they wholly incorporate the mark, merely adding the generic terms “aesthetics,” “exclusive,” and “gift card,” or misspelled versions of them, and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD is not sufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then 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 name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names as Respondent is not commonly known by the domain names and is not licensed to use Complainant’s ALLERGAN mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name 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.”). Additionally, lack of authorization to use a mark constitutes 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). The WHOIS information of record notes “Domain Administrator/Sugarcane Internet Nigeria Limited” as the registrant and no information suggests that Complainant has authorized Respondent to use the ALLERGAN mark in any way. The Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Complainant claims that Respondent fails to use the disputed domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use as the disputed domains resolve to parked pages with links to various unrelated sites. Use of a disputed domain to display commercial hyperlinks is not generally considered a bona fide offering of goods or services, or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Complainant provides screenshots of the parked links pages resolving at the disputed domains. The Panel finds that Respondent does not use the domain names 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).
Complainant also notes that Respondent also offers the disputed domain names for sale. An offer to sell a disputed domain name suggests a lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant also notes that the WHOIS records for the disputed domain names indicate that they are being offered for sale for prices ranging from $250 – 463 USD. The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant contends that Respondent registered and used the <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names in bad faith because Respondent uses the domain names to promote unrelated businesses for its own commercial benefit. Use of a disputed domain name to display pay-per-click links suggests bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). As noted above, Complainant provides screenshots of the parked links pages resolving at the disputed domains, arguing that Complainant commercially benefits from the goodwill associated with Complainant’s mark. This is evidence of bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain names with knowledge of Complainant’s rights in the ALLERGAN mark. While constructive knowledge is insufficient, actual knowledge of a Complainant’s rights in a mark may support a finding of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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”). Complainant claims that Respondent’s use of Complainant’s registered ALLERGAN mark for use in its domain names was an attempt to create association with Complainant and suggests actual knowledge of Complainant’s rights in the mark. The Panel finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii)
Complainant has proved this element.
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 <allerganaesthecticsgiftcard.com>, <allerganaestheicsgiftcard.com>, <allerganasethicsgiftcard.com>, and <exclusiveallerganaestheticsgiftcard.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
August 12, 2021
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