AbbVie Inc. v. Martin Devos / Cable Interactive Technologies
Claim Number: FA2109001966949
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Martin Devos / Cable Interactive Technologies (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <noreply-abbvie.com> and <federation-abbvie.com>, registered with Amazon Registrar, Inc.
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 the Forum electronically on September 29, 2021. The Forum received payment on September 29, 2021.
On October 1, 2021, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <noreply-abbvie.com> and <federation-abbvie.com> domain names are registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 October 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@noreply-abbvie.com, postmaster@federation-abbvie.com. Also on October 5, 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 October 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 ABBVIE mark based on registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <noreply-abbvie.com> and <federation-abbvie.com> domain names are confusingly similar to Complainant’s ABBVIE mark.
Respondent does not have rights or legitimate interests in the <noreply-abbvie.com> and <federation-abbvie.com> domain names. Respondent is not commonly known by the domain names; is not licensed to use the ABBVIE mark; and is not an authorized vendor, supplier or distributor of Complainant’s goods and services. Further, Respondent fails to use the domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because they resolve to error message web pages. Due to the structure of the domain names and the inclusion of the highly arbitrary and well known ABBVIE trademark, there is no legitimate use that Respondent could make of the domain names.
Respondent registered and uses the <noreply-abbvie.com> and <federation-abbvie.com> domain names in bad faith due to Respondent’s inactive holding of them and their potential for use in connection with phishing. In a number of cases under the Policy, Complainant has obtained transfer of domain names incorporating the ABBVIE mark which had been registered and used in connection with phishing attempts, some involving impersonation of Complainant’s employees. There is no possible use that Respondent could make of the domain names that would not be in bad faith. Based on recent history of other cases, Complainant reasonably believes that Respondent intends to use the domain names to impersonate executives of Complainant to obtain personal information from unsuspecting persons.
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 in the ABBVIE mark based on numerous registrations, including with the USPTO (e.g. Reg. No. 4,340,091, registered May 21, 2013). The Panel finds Respondent’s <noreply-abbvie.com> and <federation-abbvie.com> domain names to be confusingly similar to Complainant’s ABBVIE mark because they simply add to Complainant’s mark the generic or descriptive terms “no reply” or “federation” with a hyphen, which are insufficient to distinguish the domain names from the mark, and the inconsequential “.com” generic top-level domain, which may be ignored.
Complainant has established this element.
(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 <noreply-abbvie.com> and <federation-abbvie.com> domain names were registered on September 23, 2021, many years after Complainant has shown that its ABBVIE mark had become famous. They do not resolve to active websites, instead resolving to error pages. Similar domain names incorporating Complainant’s mark have been used by others for phishing and impersonation.
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 names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <noreply-abbvie.com> and <federation-abbvie.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark.
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 <noreply-abbvie.com> and <federation-abbvie.com> domain names and that Respondent did so in bad faith with intent to take unfair advantage of Complainant’s mark.
Although the <noreply-abbvie.com> and <federation-abbvie.com> domain names do not resolve to active websites, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of the domain names that would not amount to an infringement of Complainant’s rights in its famous ABBVIE mark. Accordingly, the Panel finds that Respondent’s passive use of the domain names demonstrates registration and use in bad faith.
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 <noreply-abbvie.com> and <federation-abbvie.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 28, 2021
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