Abbott Laboratories v.
Claim Number: FA0810001227146
Complainant is Abbott Laboratories (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbottdiagnostic.com>, registered with Compana, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2008.
On October 7, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <abbottdiagnostic.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 7, 2008.
On October 16, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Abbott Laboratories is a global health care company that is a recognized leader in researching and developing medicines, laboratory diagnostics, and other technologies for improving and managing health. Abbott is ranked among the top 100 companies globally, with sales exceeding $22 billion in 2005.
Abbott owns numerous trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office that include the name “ABBOTT” (collectively, the “ABBOTT Marks”). The mark ABBOTT was first used by Abbott in commerce at least as early as 1919.
Complainant owns various domain name registrations for domain names incorporating ABBOTT the most relevant of which is <abbottdiagnostics.com>. Complainant has owned and used the domain name at <abbottdianostics.com> since 1996.
The domain name <abbottdiagnostic.com> is confusingly similar to Complainant’s famous ABBOTT mark, which was registered as a trademark throughout the world long before Respondent registered the domain name.
Respondent’s domain name <abbottdiagnostic.com> incorporates Complainant’s well-known ABBOTT trademark in its entirety, along with the generic or descriptive term “diagnostic” and the most common URL suffix “.com.”
Respondent is not commonly known by the name <abbottdiagnostic.com>, nor has Respondent used the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent is using Complainant’s ABBOTT mark to exploit the fact that Complainant’s customers and potential customers may assume that a website located at a domain name incorporating the ABBOTT trademark is affiliated with or sponsored by Complainant.
Respondent registered the disputed domain name with knowledge of Complainant’s rights, which is evidence of bad faith registration and use. Based upon Complainant’s registration of the ABBOTT mark throughout the world and the notoriety of the ABBOTT mark, one could easily infer that Respondent knew of Complainant’s ownership of the ABBOTT mark and that Respondent acted in bad faith by registering a domain name that includes a mark it knew or should have known was the proprietary property of another.
Respondent agrees to the relief requested by Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the Policy but rather is an offer of “unilateral consent to transfer.”
Respondent requests that the Panel order the immediate transfer of the disputed domain name.
Based upon Respondent’s consent and for the reasons set forth below, the Panel finds that the disputed domain name should be transferred to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 rights in the ABBOTT mark (Reg. No. 704,356 issued Sept. 13, 1960), which was registered with the United States Patent and Trademark Office (“USPTO”). Based on such registration with the USPTO, the Panel finds that Complainant has asserted sufficient rights in the ABBOTT mark under Policy ¶ 4(a)(i) in order to achieve UDRP standing. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <abbottdiagnostic.com> domain name contains Complainant’s entire ABBOTT mark while adding the descriptive generic term “diagnostic” and the generic top-level domain “.com.” The Panel finds that the addition of a descriptive word relating to Complainant’s business fails to distinguish the disputed domain name in any regard. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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).
Complainant has proven this element.
Since Respondent had consented to
the transfer of the domain name, it is not necessary to review the other
elements. “There is no need for a
decision or findings on the merits where the respondent, by consenting to the
requested relief, obviates the necessity for such a ruling.” Citigroup Inc v.
Having established that Complainant has an interest in the domain name and that Respondent consented to the requested relief, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbottdiagnostic.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 13, 2008
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