national arbitration forum

 

DECISION

 

AbbVie, Inc. v. AbbVie Company

Claim Number: FA1307001509085

PARTIES

Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is AbbVie Company (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbvieco.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.

 

On July 11, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <abbvieco.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2013 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@abbvieco.com.  Also on July 11, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant AbbVie, Inc. 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.

 

Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ABBVIE mark (e.g., Reg. No. 4,340,091, registered May 21, 2013).

 

The disputed domain name <abbvieco.com> is confusingly similar to the ABBVIE mark, adding only the generic term “co” -a common abbreviation for “Company”- and the most common generic top-level domain “.com.” Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s ABBVIE mark. The disputed domain does not resolve to any website when typed into an address bar. Respondent has used the disputed domain name in connection with what appears to be a phishing scheme where Respondent impersonates Complainant’s human resources department through e-mails, attempting to get third parties to provide Respondent with personal information.

 

Respondent has registered and is using the disputed domain name in bad faith. Respondent is using the domain name to send emails to third parties representing itself as Complainant and encouraging those parties to respond with personal information because they have been “duped” into believing that it is Complainant that is looking for employees to hire.

 

Respondent registered the disputed domain name with knowledge of Complainant’s rights.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns a USPTO registered trademark for ABBVIE.

 

Respondent is not affiliated with Complainant and is not authorized to use the ABBVIE mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in ABBVIE.

 

Respondent uses the disputed domain name to impersonate Complainant’s human resources department through e-mails in order to get personal information.

 

DISCUSSION

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(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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s registration of the ABBVIE mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).

 

Respondent’s <abbvieco.com> domain name is confusingly similar to Complainant’s ABBVIE mark within the meaning of Policy ¶ 4(a)(i). The <abbvieco.com> domain name incorporates Complainant’s ABBVIE mark in its entirety, simply adding the descriptive term “co” -a common -abbreviation for company- and appending the generic top-level domain “.com” to form the domain name. Under the Policy these differences do nothing to distinguish the at-issue domain name from Complainant’s trademark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a top level domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”).

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent is not authorized to use Complainant’s trademark in a domain name or otherwise. Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

The WHOIS record for the <abbvieco.com> domain name lists ““AbbVie Company,” located in Fort Lauderdale, Florida as the domain name’s registrant. However, Complainant’s search did not reveal any company listed in Florida with that name and its Google search for “AbbVie Company” reveals only Complainant. Respondent is actually known as “David Reed” and there is no evidence in the record which otherwise suggests that Respondent is commonly known by the at-issue domain name. Therefore, the Panel concludes that Policy ¶ 4(c)(ii) is inapplicable regarding the instant dispute. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.”; see also 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).

 

Respondent has used the disputed domain name in connection with what appears to be a phishing scheme where Respondent purports to be associated with Complainant’s human resources department via email.  Respondent thereby attempts to encourage third parties to provide Respondent with personal information. Respondent has attempted to get persons to set up “Yahoo Messenger” accounts so that Respondent can obtain such personal information. Therefore, Respondent is not using the <abbvieco.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).

 

In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below although the Complaint does not address Policy ¶ 4(b) circumstances, non-Policy ¶ 4(b) circumstance are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent uses the confusingly similar domain name to send email to third parties. In the email Respondent impersonates Complainant’s human resources department and encourages the email recipient to respond with personal information so that the recipient may be considered for employment.  Respondent’s use of the at-issue domain name in this manner constitutes phishing and demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. null, FA 1473913 (Nat. Arb. Forum, January 17, 2013)(finding that the use of the domain name to send emails that appear to originate from Complainant constitutes phishing and supports a finding of bad faith); see Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

Finally, Respondent had actual knowledge of Complainant’s rights in the ABBVIE trademark prior to registering the at-issue domain name.  Respondent’s prior knowledge is clear because of the notoriety of Complainant’s mark and also from the fact that the confusingly similar <abbvieco.com>  domain name is used by Respondent to facilitate a phishing scheme which relies on deceiving email recipients into believing that they are dealing with Complainant. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <abbvieco.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  August 7, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page