AbbVie Inc. v. ma zhiyong / mazhiyong
Claim Number: FA1502001604404
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ma zhiyong / mazhiyong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbvie.wang>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2015; the Forum received payment on February 11, 2015. The Complaint was submitted in both English and Chinese.
On February 16, 2015, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <abbvie.wang> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 18, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 10, 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@abbvie.wang. Also on February 18, 2015, the Chinese language 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 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company which is a specialty-focused research-based biopharmaceutical enterprise operating internationally including in China.
2. Complainant is the owner of the ABBVIE trademark for which it has obtained many registrations in the United States, in China where Respondent is domiciled and in other countries.
3. Respondent registered the disputed domain name on January 17, 2015.
4. The disputed domain name is identical to the ABBVIE trademark and the gTLD “.wang” that has been added does not negate that identical nature;
5. Respondent has no rights or legitimate interests in the disputed domain name as:
(a) Respondent is not commonly known by Complainant’s ABBVIE Mark;
(b) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate non-commercial or fair use;
(c) Respondent is not licensed by Complainant to use Complainant’s trademarks;
(d) There is no use that Respondent could make of the disputed domain name that would be a legitimate use;
(e)The disputed domain does not resolve when typed into an address bar and is not linked to an active website;
(f) Additionally, failure to make active use of a domain name that is identical to Complainant’s ABBVIE trademark is not a bona fide offering of goods or services.
6. Respondent registered the disputed domain name in bad faith as:
(a) Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services;
(b) The registration of the disputed domain name by Respondent has precluded Complainant from reflecting its ABBVIE mark in the “.wang” space;
(c) Respondent has registered many domain names in the “.wang” space that incorporate well-known brands, including <adpchina.wang>, <credit-suisse.wang>, <deutschebank.wang>, <merrilllynch.wang> and others.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating internationally including in China where Respondent is domiciled.
2. Complainant is the registered owner of the ABBVIE service mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g.Reg.No.4,340,091,Registered May 21, 2013), in China ( e.g. Reg. No.10651869,Registered June 7, 2013) and in other international jurisdictions.
3. Respondent registered the disputed domain name on January 17, 2015. It does not resolve when typed into an address bar and is not linked to an active website.
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 first question that arises is whether Complainant has rights in a
trademark or service mark on which it may rely. Complainant is the registered owner of the ABBVIE service mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g.Reg.No.4,340,091, Registered May 21, 2013) and in China ( e.g. Reg. No.10651869,Registered June 7, 2013).Complainant has also adduced evidence which the Panel accepts that it has registered the ABBVIE mark in other jurisdictions ( collectively, “the ABBVIE mark”). Complainant uses the ABBVIE mark in connection with providing the services of a research-based biopharmaceutical company operating internationally including in China. The Panel concludes that Complainant’s valid registration of the ABBVIE mark with the USPTO and internationally sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See 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.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ABBVIE mark. Complainant asserts the domain name is identical to the trademark and the Panel agrees with that submission. In that regard it should be noted that the panel in Red Bull GmbH v. xiangsong, D2014-1704 (WIPO November 27, 2014) decided that “… the addition of .wang to the famous RED BULL mark was not a distinguishing factor because “.wang” is a transliteration of a Chinese character that translates loosely to “net”, “network” or “website.”” Apart from that, the domain name is exactly the same as the trademark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ABBVIE
mark and to use it in its entirety in the disputed domain name;
(b) Respondent registered the disputed domain name on January 17, 2015; it does not resolve when typed into an address bar and is not linked to an active website;
(c)Respondent registered the disputed domain names, retained it and used it in the manner so described without the authorization or consent of Complainant;
(d) Complainant submits that Respondent is not commonly known by the domain name or any variation of it or by the ABBVIE mark. The Panel notes that the WHOIS information lists “Ma Zhiyong”
as registrant of the domain name. As Respondent has failed to adduce any evidence to the contrary for the Panel’s consideration, the Panel finds no basis on the evidence for concluding that Respondent is commonly known by the disputed domain name or any variation thereof or by the ABBVIE mark per Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). See also Abbvie, Inc. v. Abbvie Company, FA 1509085 (Nat. Arb. Forum, Aug. 7, 2013) (finding that the evidence did not support a finding that Respondent was commonly known by the AbbVie name which is a factor in determining that Policy ¶ 4(c)(ii) does not apply);
(e)Complainant submits that the disputed domain name does not resolve when typed into an address bar and does not resolve to an active website, that as ABBVIE is a highly arbitrary trademark, there is no use that Respondent could make of the disputed domain name that would be legitimate and that failure to make active use of a domain name that is identical to Complainant’s ABBVIE trademark is not a bona fide offering of goods or services. The Panel agrees with this submission and so finds. See Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Wang Yanchao, D2014-1413 (WIPO Oct. 27, 2014) (finding the inactive use of <calvinklein.wang> established that there were no rights or legitimate interests in the domain name). Accordingly Respondent has not used the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i); and
(f) There is no evidence to show that Respondent has made a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons. First, the Panel finds on the evidence that at the time that Respondent registered the disputed domain name, Complainant’s ABBVIE Mark was registered and known to many consumers around the world and that Respondent had actual knowledge of the mark. The mark was well known as was the name of Complainant’s parent company Abbott Laboratories and its separation was noted in the Wall Street Journal and Forbes magazine. Moreover, the fact that Respondent chose the name at all calls for an explanation and the fact that one has not been forthcoming suggests that anything Respondent could say on this subject would not be of advantage to it. It is clear that Respondent deliberately chose the name and has held onto it without any entitlement to do so, which again raises the suggestion that this has been done for questionable motives.
Secondly, Complainant also submits that Respondent must be taken to have intended to create an association with Complainant and its products and services and that the fact that the disputed domain name is identical to Complainant’s ABBVIE trademark is an indication that Respondent had a prima facie intention to attract users for commercial gain, even where the domain is not in use. The Panel agrees with that submission. See Homer TLC, Inc. v. Issac Portis, FA 1585480 (Nat. Arb. Forum, Sept. 11, 2014) (finding that the fact that <homedepot.xyz> is identical to the registered trademark HOME DEPOT clearly indicates that there is a prima facie intention of the Respondent to attract Internet users for commercial gain, even where the disputed domain name was not in active use). Other cases cited by Complainant are to the same effect; see Morgan Stanley v. Yang Yi, FA 1582246 (Nat. Arb. Forum, Oct. 20, 2014) (finding that Respondent’s registration and use of <morganstanley.xyz> was in bad faith where the domain was passively held); Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Wang Yanchao, D2014-1413 (WIPO Oct. 27, 2014) (finding the inactive use of <calvinklein.wang> established bad faith registration and use); Red Bull GmbH v. xiangsong, D2014-1704 (WIPO November 27, 2014) (finding that the inactive use of <redbull.wang> established that the domain was registered and used in bad faith).
Thirdly, Complainant submits that because the disputed domain name incorporates Complainant’s mark ABBVIE in its entirety, the registration of the disputed domain name by Respondent has precluded Complainant from reflecting its mark in the ”.wang” space which is evidence of bad faith in violation of Policy ¶ 4(b)(ii). The Panel agrees with this submission and so finds. See the case cited by Complainant, Bulgari S.p.A. v. Liu Xiao Qian, D2014-1529 (WIPO November 20, 2014) (finding that Respondent has engaged in a pattern of conduct in registering many domain names that include third party trademarks which further establishes bad faith).
Fourthly, the evidence is that Respondent has registered many domain names in the “.wang” space that incorporate well-known brands, including <adpchina.wang>, <credit-suisse.wang>, <deutschebank.wang>, <merrilllynch.wang> and others. See Complainant’s Exhibit G. This is additional evidence of bad faith within the meaning of Policy ¶ 4(b)(ii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed domain name using the ABBVIE mark and its use since then, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbvie.wang> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 23, 2015
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