AbbVie Inc. and AbbVie Endocrine Inc. v. Yura Skripak
Claim Number: FA1308001515831
Complainant is AbbVie Inc. and AbbVie Endocrine Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Yura Skripak (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <luprondepotped.com>, registered with GODADDY.COM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2013; the National Arbitration Forum received payment on August 21, 2013.
On August 21, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <luprondepotped.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 August 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@luprondepotped.com. Also on August 23, 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 September 19, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
AbbVie Inc. is the result of a separation from Abbott Laboratories into two independent companies, Abbott and AbbVie Inc. One of AbbVie Inc.’s subsidiary entities is AbbVie Endocrine Inc. The two are collectively referred to as Complainant.
Complainant owns rights in the LUPRON, LUPRON DEPOT, and LUPRON DEPOT-PED marks which are registered with the United States Patent and Trademark Office (“USPTO”): LUPRON (Reg. No. 1,357,567 registered September 3, 1985); LUPRON DEPOT (Reg. No. 1,511,474 registered November 8, 1988); LUPRON DEPOT-PED (Reg. No. 3,508,159 registered September 30, 2008).
Complainant uses its “LUPRON marks” for pharmaceutical preparations. Complainant uses the LURPRON DEPOT-PED as the name of a prescription only medication administered as an intramuscular injection for the treatment of central precocious puberty.
Respondent’s <luprondepotped.com> domain name is identical to complainant’s LUPRON DEPOT-PED mark. Respondent removes the hyphen and adds the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the <luprondepotped.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent has not used the disputed domain name for a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant has not licensed Respondent to use its marks in any way. Respondent’s disputed domain name resolves to a website claiming to have general information about Complainant’s pharmaceutical products. Respondent uses images that are copied from Complainant’s official website, as well as a copyright notice. Respondent’s resolving website advertises for Complainant’s products as well as products that compete with Complainant.
Respondent registered and uses the <luprondepotped.com> disputed domain name in bad faith. Respondent had knowledge of Complainant and its marks at the time it registered the disputed domain name. Respondent is attempting to mislead and confuse consumers as to the source or affiliation of Respondent. Respondent presumably receives revenue from its use of the website resolving from the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel finds that the nominal Complainants should be treated as a single entity for the purposes of the Policy because Complainant AbbVie Endocrine Inc.is a wholly-owned subsidiary of Complainant AbbVie Inc. This relationship creates a sufficient nexus between Complainants such that they may be together considered as one. Therefore, references throughout this decision to “Complainant” reference Complainants collectively. See Microsoft Corporation and Skype v. Nabil Lolz (Nat. Arb. Forum Jun. 19, 2013) (finding a parent/subsidiary relationship between co-complainants is sufficient to allow co-complainants to proceed as a single complainant.)
Complainant owns USPTO registered trademarks for LUPRON DEPOT-PED as well as related marks.
Respondent is not affiliated with Complainant and is not authorized to use the LUPRON DEPOT-PED mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in LUPRON DEPOT-PED.
Respondent uses the <luprondepotped.com> domain name to address a website claiming to have general information about Complainant’s pharmaceutical products. The website displays images that are copied from Complainant’s official website, a fraudulent copyright notice, and further advertises Complainant’s products as well as competitive products.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the LUPRON DEPOT-PED mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its mark where Respondent operates to demonstrate such rights. 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)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent removes the space between “LUPRON” and “DEPOT,” the hyphen between “DEPOT” and “PED,” terms, and appends the top-level domain name, “.com,” thereto. The resulting differences between the Complainant’s mark and Respondent’s domain name are insufficient to distinguish the two for the purposes of the Policy. Therefore, the Panel concludes that the <luprondepotped.com> domain name is identical to Complainant’s trademark under Policy ¶4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
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 an 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). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Yura Skripak” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain name addresses a website purporting to have general information about Complainant’s LUPRON DEPOT-PED products. Thereon, Respondent uses images that are copied from Complainant’s official website including multiple copies of Complainant’s trademark. The website also features a copyright notice (“Copyright © 2013 Lupron Depot-Ped”) which further makes the page appear to come from Complainant. Respondent’s website incorporates pay-per-click advertisements for Complainant’s products as well as competing products. Respondent’s use of the identical <luprondepotped.com> domain name for such purposes is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which urge the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses the at-issue domain name to address a website which, inter alia, promotes pay-per-click advertising links for third parties, including some that compete with Complainant. Respondent’s website features Complainant’s registered LUPRON marks as well as a links to the website <planetdrugsdirect.com>. That website allows Internet users to order drugs that are not made by Complainant. Using a domain name identical to Complainant’s trademark to sponsor competing links and/or competing products disrupts Complainant’s business and demonstrates bad faith pursuant to Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent purposely uses the at-issue domain name to mislead and confuse Internet users as to the source or affiliation of Respondent’s pay-per-click rich website. Using the domain in this manner demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the LUPRON DEPOT-PED mark prior to registering the at-issue domain name. Respondent’s prior knowledge is inferred from the notoriety of Complainant’s LUPRON DEPOT-PED mark and from the fact that Complainant’s entire mark is featured in the at-issue domain name and displayed on Respondent’s <luprondepotped.com> website. Respondent’s prior knowledge of Complainant’s trademark rights in Respondent’s identical domain name shows Respondent acted in bad faith 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <luprondepotped.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 24, 2013
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