Abbott Laboratories v. Domain Park Limited
Claim Number: FA0711001106459
Complainant is Abbott Laboratories (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <abbottpharmaceutical.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2007.
On November 9, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <abbottpharmaceutical.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@abbottpharmaceutical.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <abbottpharmaceutical.com> domain name is confusingly similar to Complainant’s ABBOTT mark.
2. Respondent does not have any rights or legitimate interests in the <abbottpharmaceutical.com> domain name.
3. Respondent registered and used the <abbottpharmaceutical.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abbott Laboratories, is a global health care company and the owner of the trademark ABBOTT. Complainant has utilized the ABBOTT mark in connection with pharmaceuticals, nutrition products, medical devices, information in the field of medicine and healthcare, and other related goods and services since as early as 1919. Complainant owns several registrations worldwide for the ABBOTT mark, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 740,515 – issued November 13, 1962 and Reg. No. 704356 – issued September 13, 1960). Complainant owns various domain name registrations for domain names incorporating the ABBOTT mark, the most relevant of which is <abbott.com>.
Respondent registered the domain name <abbottpharmaceutical.com> on June 27, 2007. Currently the disputed domain name, <abbottpharmaceutical.com>,
resolves to a parked website that provides links to Complainant’s
competitor’s products and services.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the ABBOTT mark. Complainant holds several trademark
registrations in the
Complainant contends that Respondent’s disputed domain name
is confusingly similar to Complainant’s ABBOTT mark. Complainant contends that the disputed domain
name, <abbottpharmaceutical.com>, includes the
entirety of Complainant’s mark, merely adding the generic term
“pharmaceutical,” which directly relates to Complainant’s business, and the
generic top-level domain (“gTLD”) “.com.”
The Panel finds these alterations to an otherwise unchanged mark to be
minor and insufficient to distinguish the disputed domain name from
Complainant’s mark in any meaningful way for the purposes of Policy ¶
4(a)(i). See Am. Int’l Group, Inc. v.
Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding
that the addition of the term “assurance,” to the complainant’s AIG mark failed
to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i)
because the appended term related directly to the complainant’s business); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name
combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business);
see also Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD,
whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶
4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Where Complainant makes a prima facie case under
Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete
evidence that it does possess rights to or legitimate interests in the disputed
domain name. The Panel finds that Complainant has established a prima facie case in the matter at
hand. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent has failed to submit a response to the Complaint. Therefore, the Panel is entitled to presume that Respondent lacks all rights and legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the record to determine if Respondent has any rights or legitimate interests in the <abbottpharmaceutical.com> domain name pursuant to Policy ¶ 4(c).
The disputed domain name, <abbottpharmaceutical.com>,
currently resolves to a website that displays Complainant’s mark and contains
links to Complainant’s competitors. The
Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
Complainant contends that Respondent is not commonly known
by the <abbottpharmaceutical.com> domain
name and is not authorized to use Complainant’s ABBOTT mark in any way.
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it
indicate that Respondent is or ever was commonly known by the <abbottpharmaceutical.com> domain
name. Absent evidence suggesting
otherwise, the Panel finds that Respondent has not established rights to or legitimate
interests in the domain name in accordance with Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent currently utilizes the disputed domain name, <abbottpharmaceutical.com>, to resolve to a parked website
that provides links to Complainant’s competitor’s products and services. The Panel finds such use to establish that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use
of a confusingly similar domain name to attract Internet users to a website
containing commercial links to the websites of the complainant’s competitors
represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Moreover, Respondent is presumed to be benefiting through the use of click-through fees from these links to Complainant’s competitors. Internet users searching for Complainant’s ABBOTT mark would easily be confused by the disputed domain name, which results in additional traffic to Respondent’s websites. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees))
Complainant contends that Respondent registered and used the disputed domain name with knowledge of Complainant’s rights in the ABBOTT mark. Complainant contends that Respondent’s website prominently and repeatedly displays its ABBOTT mark. The Panel finds that Respondent has registered the disputed domain names with full knowledge of Complainant's business and trademarks. The Panel finds this conduct to be further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”) see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant also contends that Respondent has had numerous cases filed against it for the use and registration of domain names incorporating famous trademarks. See Morgan Stanley v. Domain Park Ltd, FA 0455852 (Nat. Arb. Forum Sept. 10, 2007). The Panel finds that Respondent has engaged in a pattern of conduct indicative of bad faith pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
The Panel concludes that 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 <abbottpharmaceutical.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 21, 2007
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