Abbott Laboratories v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1101001367742
Complainant is Abbott Laboratories (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbottlab.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2011; the National Arbitration Forum received payment on January 20, 2011.
On January 17, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <abbottlab.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 January 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2011 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@abbottlab.com. Also on January 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" 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 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 <abbottlab.com> domain name is confusingly similar to Complainant’s ABBOTT mark.
2. Respondent does not have any rights or legitimate interests in the <abbottlab.com> domain name.
3. Respondent registered and used the <abbottlab.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abbott Laboratories, was founded in 1888. Complainant owns the ABBOTT mark and uses the mark in connection with its global health care company and in association with the distribution and sale of its medical and nutritional products and services. Complainant holds multiple trademark registrations for its ABBOTT mark with the United State Patents and Trademark Office (“USPTO”) (e.g. Reg. No. 704,356 issued Sept. 13, 1960).
Respondent, Privacy Ltd. Disclosed Agent for YOLAPT, registered the <abbottlab.com> domain name on November 26, 2001. The disputed domain name resolves to a directory website featuring links to third-party websites, some which are unrelated to Complainant, and some which directly compete with Complainant in the medical and nutrition industry.
Respondent has been involved in prior UDRP proceedings that resulted in findings of bad faith and the transfer of the disputed domain names to the respective complainants. See Revlon Consumer Products Corp. v. Whois Privacy Servs.,/Privacy Ltd. Disclosed Agent for YOLAPT, D2010-1070 (WIPO Sept. 6, 2010); see also Cabela’s, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301918 (Nat. Arb. Forum Feb. 24, 2010).
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 maintains that it has established rights in its ABBOTT mark. A complainant may establish rights in a mark through trademark registration with a federal trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Prior panels have also found that a complainant is not required to register its mark within the country of the respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Complainant holds multiple trademark registrations for its ABBOTT mark with the USPTO (e.g., Reg. No. 704,356 issued Sept. 13, 1960). Therefore, the Panel finds that Complainant has demonstrated its rights in the ABBOTT mark through its federal trademark registration according to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <abbottlab.com> domain name is confusingly similar to its ABBOTT mark. The disputed domain name utilizes Complainant’s mark in its entirety and only changes it by adding the generic top-level domain (“gTLD”) “.com.” and adding the descriptive word “lab,” which clearly relates to Complainant’s name and business in the development of pharmaceutical and nutritional products. The Panel finds that the addition of a gTLD and descriptive word do not sufficiently distinguish the disputed domain name from Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s ABBOTT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant asserts that Respondent lacks rights and legitimate interests in the <abbottlab.com> domain name. In Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has set forth a prima facie case in support of its allegations against Respondent. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights and legitimate interests under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶4(c) before making a determination.
Complainant contends that Respondent is not commonly known by the <abbottlab.com> domain name. The WHOIS information indicates that the domain name registrant is “Privacy Ltd. Disclosed Agent for YOLAPT,” which is not similar to the disputed domain name. Complainant asserts that Respondent does not own any rights in the ABBOTT mark or operate any business or organization under the mark. The Panel finds that Respondent is not commonly known by the <abbottlab.com> domain name under Policy ¶ 4(c), as there is no other information in the record that would provide a basis for finding otherwise. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <abbottlab.com> domain name resolves to a directory website which lists links to third-party websites, some of which compete with Complainant’s business within the medical and health care industry. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to websites potentially competing with Complainant is not 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). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent has been involved in prior UDRP proceedings that resulted in the transfer of the disputed domain names to the respective complainants after a finding of bad faith. E.g., Revlon Consumer Products Corp. v. Whois Privacy Servs.,/Privacy Ltd. Disclosed Agent for YOLAPT, D2010-1070 (WIPO Sept. 6, 2010); Cabela’s, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA 1301918 (Nat. Arb. Forum Feb. 24, 2010). The Panel finds that Respondent’s history of UDRP proceedings which resulted in findings of bad faith and transfer are evidence of a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant alleges that Respondent’s use of the <abbottlab.com> domain name disrupts its business. Internet users intending to purchase medical or health care products or services from Complainant may find Respondent’s resolving website due to the confusingly similar disputed domain name. Users may then purchase similar products or services from a competing business through one of the third-party links. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business and is evidence of bad faith use and registration under 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 directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors.
The <abbottlab.com> domain name resolves to a website featuring a directory of third-party links. The Panel infers that Respondent likely profits from these links via click-through fees. Internet users searching for Complainant and information on Complainant may find Respondent’s website. Given Respondent’s use of Complainant’s mark within the disputed domain name and on the resolving site, users may become confused as to Complainant’s association with the website and third-party links. Respondent tries to capitalize off this misperception through the receipt of click-through fees. The Panel finds that Respondent’s use of the confusingly similar disputed domain name for profit constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbottlab.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 28, 2011
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