AbbVie Inc v. Konayem Temirtassova
Claim Number: FA1502001604178
Complainant is AbbVie Inc (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Konayem Temirtassova (“Respondent”), Kazakhstan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <synthroid.xyz>, <buysynthroid.xyz>, and <genericsynthroid.xyz>, registered with Mesh Digital Limited.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2015; the Forum received payment on February 10, 2015.
On Feb 10, 2015, Mesh Digital Limited confirmed by e-mail to the Forum that the <synthroid.xyz>, <buysynthroid.xyz>, and <genericsynthroid.xyz> domain names are registered with Mesh Digital Limited and that Respondent is the current registrant of the names. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 February 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2015 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@synthroid.xyz, postmaster@buysynthroid.xyz, postmaster@genericsynthroid.xyz. Also on February 11, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
AbbVie Inc. (“Abbvie”) claims that it is the result of a separation from Abbott Laboratories (“Abbott”) into two independent companies, Abbott and AbbVie. AbbVie is a specialty-focused research-based biopharmaceutical company that employs approximately 25,000 persons worldwide in over 170 countries, including in China with AbbVie China, and the company has well over $17 billion in annual revenues. The division of Abbott into Abbott and AbbVie was highly publicized in many publications, including the Wall Street Journal. See Exhibit B. More information can be found about AbbVie and its products and services at AbbVie’s official website found at <abbvie.com>. See Exhibit C.
AbbVie is the owner of the SYNTHROID trademark which has been in use since 1952 in connection with a prescription drug used for persons with hypothyroidism and is one of the most popular brand named thyroid replacement medications. The SYNTHROID trademark has been registered with the United States Patent and Trademark Office since 1953 and is in full force and effect and owned by Abbvie as shown by the records of the United States Patent and Trademark Office. See Exhibit E.
The SYNTHTROID trademark was registered long prior to the registration date of the disputed domain names. See Exhibit A and Exhibit E.
Complainant alleges that the disputed domain name <synthroid.xyz> is identical to the SYNTHROID mark, adding only the gTLD “.xyz.” It further alleges that the disputed domain names <buysynthroid.xyz> and <genericsynthroid.xyz> are confusingly similar to the SYNTHROID mark, adding only the generic or descriptive terms “buy” or “generic” and the common gTLD “.xyz.”
As such, Complainant argues that the disputed domain names are confusingly similar to Complainant’s registered trademark.
Complainant further argues that Respondent has no rights or legitimate interests in or to the disputed domain names. Complainant points out that the Respondent is not commonly known by Complainant’s SYNTHROID Mark, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Further, Complainant demonstrates that, according to WHOIS, Respondent is Konayem Temirtassova. Respondent is not licensed by Complainant to use Complainant’s trademarks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods.
Complainant next alleges that, at the time that Respondent registered the disputed domain names, Complainant’s SYNTHROID Mark was registered and was known to many consumers around the world. Complainant claims that it is clear from the disputed domain names that Respondent registered the disputed domain names with knowledge of Complainant’s rights and intended to create an association with Complainant and its products as there is no other explanation for the use of the highly arbitrary and distinctive SYNTHROID mark in the domain names. Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use.
Complainant next alleges that Respondent profits from trading on the goodwill of the Complainant by diverting Internet customers from Complainant to Respondent. Respondent allegedly accomplishes this by listing third party goods for sale on web pages associated with the disputed domain names. In so doing, Respondent disrupts Complainant’s business.
Finally, the Complainant points out that Respondent has a pattern of disruptive domain name registrations. Respondent has allegedly registered numerous domain names that contain third party pharmaceutical trademark names, such as <albuterol.xyz>, <azithromycin.xyz>, <buycelebrex.xyz>, <buycymbalta.xyz>, <buyprednisone.xyz>, <buyzoloft.xyz>, <celebrex.xyz>, and <cymbalta.xyz> among others. See Exhibit I. It is evident that Respondent is merely registering domain names that contain famous pharmaceutical brands in order to capitalize on their fame.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain names on December 29, 2014.
As the Respondent has failed to file a Response in this matter, the Panel will decide this case based on the reasonable assertions from Complainant’s complaint. As such, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in or to the domain names and that the Respondent has engaged in a pattern of bad faith use and registration of domain names including the disputed domain names.
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 disputed domain names are confusingly similar to the Complainant’s trademark SYNTHROID. Complainant is correct that Respondent cannot escape responsibility for using a well-known and registered trademark of another by simply adding the gTLD .xyz or the words “buy” or “generic”. To make such a claim would be unreasonable. Complainant points this Panel to adequate authority for this proposition. See, Roche Products Limited v. Alex Shvako, FA 1417951 (Nat. Arb. Forum Jan 13, 2012)(finding that the addition of “buy” to the trademarks of Complainant in <buyaccutane.us> did not distinguish the domain name from the trademark); See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); Roche Products v. Jatin Jani, FA 1390813 (Nat. Arb. Forum, Aug. 22, 2011) (finding the addition of “generic” in <genericvalium.us> was not sufficient to distinguish the disputed domain name from the VALIUM trademark); Johnson & Johnson v. Fundacion Private Whois FA 1453515 (Nat. Arb. Forum, Aug. 21, 2012) (finding the addition of “generic” in <genericrisperdal.com> was not sufficient to distinguish the disputed domain name from the RISPERDAL trademark).
As such, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s registered and well-known trademark.
The Panel also agrees with Complainant that the Respondent has no rights or legitimate interests in or to the disputed domain names. The disputed domains resolve to parked pages that contain links to various other sites that include information about SYNTHROID or that resolve to sites that sell products that are unrelated to Abbvie or its Synthroid product, such as Viagra or Cialis, products that have completely different uses than SYNTHROID. See Exhibits F through H. Although the sites state that the domain owner does not maintain any relationship with the advertisers, it is evident that someone looking for information on Abbvie’s Synthroid product may click on one of the links and be surprised to find information that is not related to that product. It is clear that someone related to the disputed domain name is getting pay per click revenue as a result of the links on the pages and Complainant is reasonable in claiming that Respondent is reaping that financial benefit.
Seeking to attract traffic and revenue using Complainant’s well-known trademark, and promoting products of others, does not reflect 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). See Microsoft Corporation v. Daina Trading, FA 1533432 (Nat. Arb. Forum, Jan. 2. 2014)(finding the use of the famous XBOX trademark to attract consumers to Respondent’s commercial website which also promoted products of competitors was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Microsoft Corporation v. The Private Whois Privacy Service, FA 1484502 (Nat. Arb. Forum March 24, 2013)(finding the use of <xbox-gold.com> for pay per click advertising was neither 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)); Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum Jan. 10, 2007)(finding no legitimate interest where the domain name resolved to a website featuring links to third party websites); 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 paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy); Vance International, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007)(finding 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 profiting commercially from the click-through fees); WeddingChannel.com Inc. v. Vasiliev, FA156716 (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, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); and TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
As such, Respondent has no rights or legitimate interests in or to the disputed domain names.
Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent uses the disputed domain names to disrupt the legitimate business of the Complainant. Respondent lists for sale on the disputed domain names the goods of third parties. Respondent, most likely, receives click through fees as unsuspecting Internet customers click on the disputed domain names expecting to access Complainant’s goods. This is the definition of bad faith use and registration of a domain name. Complainant is correct in pointing to the following authority for this proposition: V Secret Catalogue, Inc. v. Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”); and G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent’s demonstrated pattern of bad faith use and registration of domain names to profit from unsuspecting Internet users is further and conclusive evidence of its bad faith in the present case.
As such, the Panel finds that the disputed domain names are used and registered in bad faith by the Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <synthroid.xyz>, <buysynthroid.xyz>, and <genericsynthroid.xyz> domain names transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: March 12, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page