Abbott Laboratories v.
Claim Number: FA0902001246421
Complainant is Abbott Laboratories (“Complainant”), represented by James
F. Struthers, of Richard Law Group,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rxabbot.com>, registered with Compana, Llc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2009.
On February 9, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <rxabbot.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 February 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 3, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on February 11, 2009.
On February 17, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant describes itself as a global health care company, recognized as a leader in researching and developing medicines, laboratory diagnostics, and other technologies for improving and managing health. Complainant is ranked among the top 100 companies globally, with sales exceeding $25 billion in 2007, and has more than 100 facilities worldwide selling products in more than 130 countries. Complainant has an established internet presence at www.abbott.com.
The Complainant claims to own numerous trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office that include the name "ABBOTT" (a list of those marks is provided as Exhibit B of the Complaint). Complainant informs that the ABBOTT mark was first used in commerce at least as early as 1919.
The Complainant is also the holder of domain names incorporating "ABBOTT", among them <rxabbott.com> (since 1996), and operates a web site under the said domain name (Exhibits C and D of the Complaint).
The Complainant argues that the disputed domain name is confusingly similar to Complainant’s well-known mark ABBOTT, as it incorporates a misspelling of the trade mark along with the generic or descriptive term “RX”, the latter being an abbreviation for the term “prescription”.
Complainant further states that the Respondent has no rights or legitimate interest in the disputed domain name, as the Respondent is not commonly known by <rxabbot.com>, nor has Respondent used the domain name in connection with a bona fide offering of goods and services or for a legitimate non commercial or fair use. Respondent is using a confusingly similar variant of Complainant’s trade mark to exploit the fact that Complainant's customers and potential customers may assume that a website located at such a domain name is affiliated with or sponsored by Complainant.
The Complainant has not licensed the use of its trade mark or otherwise authorized the Respondent to use the ABBOTT mark or any variations thereof.
The Complainant accuses the Respondent for bad faith registration and use of the disputed domain name. Respondent registered <rxabbot.com> with knowledge of Complainant's rights. Complainant refers to the notoriety of the ABBOTT mark, and claims that Respondent must have known about Complainant’s ownership of the ABBOTT mark prior to the registration of the domain name. The domain name resolves to a list of links to third-party sites, some of which offer goods related to those offered under Complainant's marks, which Respondent benefits financially from, this being a further evidence of bad faith.
Finally, the Complainant refers to the fact Respondent has had numerous cases filed against it for the use and registration of domain names incorporating famous trademarks. This evidences a pattern of conduct by Respondent which is further evidence of Respondent's bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent agrees to the relief requested by the Complainant, however stating that this is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer”.
The Complainant is a health care company claiming to have “numerous trademarks and service marks” registrations including the mark ABBOTT. The Complainant has not provided any distinctive evidence of its registered trade mark rights, just a list of marks and registration numbers and dates (Exhibit B). This Panel has however no reason to doubt that Complainant is in fact the owner of trademark rights for ABBOTT, and further the Respondent has not contested the trade mark claims by the Complainant.
According to Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “a Panel shall 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 this case, Respondent does not contest Complainant’s request that the disputed domain name be transferred from Respondent to Complainant. In fact, Respondent requests that the Panel order the transfer.
Therefore, under these special circumstances, this Panel decides to forego the traditional UDRP analysis, not to make any further findings or discussion, and order the immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Giving the special circumstances in this case, the fact that Respondent has consented to the transfer of the domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rxabbot.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: March 2, 2009
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