Abbott Laboratories v. Miles White
Claim Number: FA1511001646590
Complainant is Abbott Laboratories (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Miles White (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbottlaboratorries.com>, registered with eNom, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2015; the Forum received payment on November 11, 2015.
On November 11, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <abbottlaboratorries.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 November 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@abbottlaboratorries.com. Also on November 12, 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 December 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <abbottlaboratorries.com> domain name is confusingly similar to Complainant’s ABBOTT mark.
2. Respondent does not have any rights or legitimate interests in the <abbottlaboratorries.com> domain name.
3. Respondent registered and uses the <abbottlaboratorries.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, a global health care company, was founded in 1888. Complainant has registered the ABBOTT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,635,244, registered June 9, 2009).
Respondent registered the <abbottlaboratorries.com> domain name on October 27, 2015, and uses it to impersonate an executive of Complainant.
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 Panel finds that Complainant’s trademark registrations of the ABBOTT mark with the USPTO demonstrates rights in the mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <abbottlaboratorries.com> domain name incorporates the ABBOTT mark and merely adds a misspelling of the descriptive term “laboratories,” part of Complainant’s company name, and the gTLD “.com.” Previous panels have held that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Thus, the Panel finds that the <abbottlaboratorries.com> domain name is confusingly similar to Complainant’s ABBOTT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and thus 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information lists “Miles White” as registrant and Respondent has failed to provide any evidence for the Panel’s consideration. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to impersonate an executive of Complainant, namely Mr. Miles White, Chairman of the Board and CEO. The Panel notes Exhibit D, an E-mail sent from Respondent on October 27, 2015, wherein Respondent attempts to impersonate an executive of Complainant. Past panels have concluded that a respondent’s use of an E-mail address associated with a disputed domain name to impersonate a complainant’s CEO does not constitute 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 Brownell Travel, Inc. v. Troy Haas, FA 1589137 (Nat. Arb. Forum, Dec. 20, 2014) (finding that Respondent’s use of an email address associated with the disputed domain name to impersonate Complainant’s Chief Executive Officer sending requests to Complainant’s Account Manager in an attempt to commit fraud upon Complainant does not amount to any bona fide offering or a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is disrupting and competing with Complainant’s business by using the disputed domain name to impersonate an executive of Complainant, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iii). The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See The Hackett Group, Inc. v. Brian Herns/The Hackett Group, FA 1597465 (Nat. Arb. Forum, Feb. 6, 2015) (finding that the use of emails associated with the domain name to send fraudulent emails contains the requisite competitive nature under Policy ¶ 4(b)(iii) and this is evidence of bad faith disruption).
Complainant contends that Respondent registered the <abbottlaboratorries.com> domain name with actual knowledge of Complainant’s mark, a violation of Policy ¶ 4(a)(iii). The Panel agrees, based on Respondent’s use of the disputed domain name, and finds further bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbottlaboratorries.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 10, 2015
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