Abbott Laboratories v. SmartCom
Claim Number: FA0906001270636
Complainant is Abbott Laboratories (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <abott.com>, registered with Dotster, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2009.
On June 26, 2009, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <abott.com> domain name is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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 postmaster@abott.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <abott.com> domain name is confusingly similar to Complainant’s ABBOTT mark.
2. Respondent does not have any rights or legitimate interests in the <abott.com> domain name.
3. Respondent registered and used the <abott.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Abbott
Laboratories, is a global heath care company that is a recognized leader in
researching and developing medicines, laboratory diagnostics, and other
technologies for improving and managing health.
Complainant holds numerous registrations of its ABBOTT mark with various
government trademark authorities throughout the world, including with the
United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 704,356
issued September 13, 1960).
Respondent registered the <abott.com>
domain name on April 14, 2004. The disputed
domain name resolves to a website that features hyperlinks to third-party
websites, some of which directly compete with Complainant. Respondent’s resolving website also displays
a general message stating that the disputed domain name is for sale.
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.
The Panel finds that Complainant has sufficiently
established rights in the ABBOTT mark under Policy ¶ 4(a)(i)
via its trademark registrations held throughout the world and with the
USPTO. See Google,
Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
(finding that the complainant had established rights in the GOOGLE mark through
its holding of numerous trademark registrations around the world); see also
The <abott.com>
domain name contains a misspelling of Complainant’s ABBOTT mark and merely adds
the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the
misspelling of Complainant’s mark nor the addition of a gTLD negates a finding
of confusing similarity. Thus, the Panel
finds that the <abott.com>
domain name is confusingly similar to Complainant’s ABBOTT mark under Policy ¶
4(a)(i). See Hallelujah Acres, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”).
Respondent’s <abott.com>
domain name resolves to a
website that displays several hyperlinks to various third-party websites, some
of which directly compete with Complainant. The Panel infers that Respondent
receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s
use of the confusingly similar disputed domain name, along with the
aforementioned hyperlinks, diverts Internet users to competing websites for
commercial gain, and thus is not a bona
fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4 (c)(iii). See ALPITOUR
S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum
Feb. 27, 2007) (finding that “using the confusingly similar
<viaggidea.com> domain name to operate a website that features links to various
commercial websites from which Respondent presumably receives referral fees….is
neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii).”); see
also Disney Enters., Inc. v.
Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the
operation of a pay-per-click website at a confusingly similar domain name was
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)).
Furthermore, Respondent is listed in the WHOIS information
as “SmartCom
In addition, the Panel finds that Respondent’s general offer
to sell the disputed domain name is further evidence that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v.
Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a
respondent’s willingness to sell a domain name to the complainant suggests that
a respondent has no rights or legitimate interests in that domain name under
Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name).
Finally, the Panel
finds that Respondent is engaged in typosquatting because Respondent is taking
advantage of a common misspelling of Complainant’s ABBOTT mark by diverting
Internet users. Therefore, the Panel
finds that Respondent’s engagement in typosquatting is further evidence that
Respondent lacks rights and legitimate interests in the <abott.com> domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The website resolving from the <abott.com>
domain name
contains a message stating that the disputed domain name is for sale. The Panel finds that this general offer to
sell the disputed domain name constitutes bad faith registration and use under
Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also
Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat.
Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered
domain names for sale).
Respondent’s <abott.com>
domain name
resolves to a website the displays hyperlinks to third-party websites, some of
which redirect to Complainant’s competitors.
The Panel finds that Respondent’s use of the disputed domain name
disrupts Complainant’s busines and constitutes bad faith registration and use
under Policy ¶ 4(a)(i). 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 Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names).
Moreover,
the Panel finds that Respondent’s presumed accrual of click-through fees from
the use of the <abott.com> domain name in conjuction with the
aforementioned hyperlinks is evidence of bad faith registration and use under
Policy ¶ 4(b)(iv). See
Finally,
Respondent is taking advantage of a common misspelling of Complainant’s ABBOTT
mark. The Panel finds that Respondent is
engaging in typosquatting, which constitutes bad faith registration and use
under Policy ¶ 4(a)(iii). See Nextel
Commc’ns Inc. v. Geer, FA
477183 (Nat. Arb.
Forum July 15, 2005) (finding that the respondent’s registration and use of the
<nextell.com> domain name was in bad faith because the domain name
epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA
449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain
names in dispute constitutes bad faith because the domain names are merely
typosquatted versions of the [complainant’s] IMDB mark.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abott.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 11, 2009
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