Abbott Laboratories v. Richard Dean
Claim Number: FA1511001649146
Complainant is Abbott Laboratories (“Complainant”), represented by Sarah E. Bro of McDermott Will & Emery LLP, California, United States. Respondent is Richard Dean (“Respondent”), represented by Dean M. La Perna, Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <abbottlab.info>, <abbottlab.net>, <abbottlab.org>, <abbottlabs.org>, and <abbottlabs.mobi>, 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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2015; the Forum received payment on November 20, 2015.
On November 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <abbottlab.info>, <abbottlab.net>, <abbottlab.org>, <abbottlabs.org>, and <abbottlabs.mobi> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2016 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@abbottlab.info, postmaster@abbottlab.net, postmaster@abbottlab.org, postmaster@abbottlabs.org, and postmaster@abbottlabs.mobi. Also on November 24, 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.
A timely Response was received and determined to be complete on January 7, 2016.
An Additional Submission was received from Complainant on January 12, 2016.
On January 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B, Banks, Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant’s ABBOTT mark is famous for use in connection with medical apparatus and equipment, medical devices, nutritional products, pharmaceutical preparations, medical diagnostic reagents, online health and medical services, research and development services, educational services, computer software, and publications. Complainant has registered the ABBOTT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 704,356, registered September 13, 1960), which demonstrates Complainant’s rights in its mark. The <abbottlab.info>, <abbottlab.net>, <abbottlab.org>, <abbottlabs.org>, and <abbottlabs.mobi> domain names are confusingly similar to Complainant’s mark as they wholly incorporate the ABBOTT mark, add the generic terms “lab” or “labs,” and add the generic top-level domains (“gTLD”) “.info,” “.net,” “.org,” and “.mobi.”
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain names to redirect Internet users to sponsored websites, wherein links unrelated to Complainant’s business are displayed. The Panel is reminded of Attached Exhibit B for screenshots of Respondent’s resolving webpages.
Respondent has registered and is using the disputed domain names in bad faith. First, Respondent has registered multiple domain names in the present proceeding, thereby demonstrating a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). Second, Respondent uses its disputed domain names with the intent to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Finally, given the well-known status of Complainant’s mark, Respondent registered the disputed domains with actual knowledge of the ABBOTT mark.
B. Respondent
Respondent’s disputed domains are not confusingly similar to Complainant’s mark. Respondent’s domains were registered in conjunction with TEAS Plus New Application for applied registered trademark “ABBOTT LABS.” The registered trademark “ABBOTT LABS” was sent a suspension letter for potential conflict with ABBOTT MOBILE HEALTH mark applied by Complainant and abandoned by Complainant due to not filing the Statement of Use form with the USPTO. Thus, Respondent is in the final stages of trademark certification for the ABBOTT LABS mark with the USPTO.
Respondent has rights and legitimate interests in the disputed domains. Respondent is unaware of the domains running click-through links or redirection of sponsored websites. Respondent’s <abbottlab.info> domain was being developed to coincide with the “Statement of Use” filing in the final phase of the trademark process. The remaining domains were forwarded to <abbottlab.info> with mask so that the domains would reflect the ABBOTT LABS mark.
Respondent registered the disputed domains in good faith and has followed all governing laws of the USPTO. Complainant is clearly attempting to cause and create confusion.
C. Additional Submissions
Complainant uses its additional submission to reiterate its contentions in its original complaint. A summary of Complainant’s additional submission is included below.
Respondent does not deny that its disputed domains are confusingly similar to Complainant’s ABBOTT mark. Moreover, Respondent presents erroneous arguments that Complainant committed “gross negligence” by allowing one of its pending USPTO applications to go abandoned. Not only does the abandoned status of a USPTO mark not have relevance in the instant proceeding, but Complainant has twenty-seven other USPTO registrations for the ABBOTT and ABBOTT-formative marks. Finally, Respondent does not own the registered USPTO trademark for ABBOTT LABS. Instead, Alleghany Holdings Group, LLC (not Respondent), owns a pending application for this stylized mark.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent’s disputed domains do not forward to <abbottlab.info>.
Respondent registered the domains in bad faith. Respondent’s contention that it is unaware of the domain names in dispute running click-through links or redirection of sponsored websites is irrelevant in this matter, as Respondent is responsible for the content of the resolving websites.
1 - The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2 - The Respondent has no rights or legitimate interests in respect of the disputed domain names.
3 - The disputed domain names were registered and are being used in bad faith.
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.
Complainant has registered the ABBOTT mark with the USPTO (e.g., Reg. No. 704,356, registered September 13, 1960). The ABBOTT mark is famous for use in connection with medical apparatus and equipment, medical devices, nutritional products, pharmaceutical preparations, medical diagnostic reagents, online health and medical services, research and development services, educational services, computer software, and publications. Complainant's USPTO registration demonstrates its rights in its mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the 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)). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <abbottlab.info>, <abbottlab.net>, <abbottlab.org>, <abbottlabs.org>, and <abbottlabs.mobi> domain names are confusingly similar to Complainant’s mark as they wholly incorporate the ABBOTT mark, add the generic terms “lab” or “labs,” and add the generic top-level domains (“gTLD”) “.info,” “.net,” “.org,” and “.mobi.” Previous panels have held that the addition of generic terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). 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 Policy ¶ 4(a)(i)). Previous panels have also found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). As such, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). 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 names. Complainant contends that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Richard Dean” as registrant. As such, the Panel finds that Respondent is not commonly known by the disputed domain names 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 names 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 names to redirect Internet users to sponsored websites, wherein links unrelated to Complainant’s business are displayed. Previous panels have held that a respondent’s use of a domain to host links unrelated to a complainant’s business 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent is not using the disputed domain names 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).
Complainant argues that Respondent has registered multiple infringing domain names in the present proceeding, thereby demonstrating a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). Past panels have held that a respondent’s registration and use of several infringing domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). As such, the Panel finds that Respondent registered and is using the domains in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends that Respondent uses its disputed domain names with the intent to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Previous panels have determined that a respondent taking advantage of the confusing similarity between its domain names and a complainant’s mark by using the domains to maintain websites with various links to websites unrelated to the complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, given the well-known status of Complainant’s mark, Complainant contends that Respondent registered the disputed domains with actual knowledge of the ABBOTT mark. It seems clear to this Panel that Respondent knew of the ABBOTT mark and that ABBOTT was a medical equipment, research and testing facility. Why else would Respondent select this well-known trademark for registration and use? And, Respondent admits in his response that he knew of ABBOTT in relation to its failure to renew a USPTO registration. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. 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). Accordingly, the Panel finds that Respondent was aware of Complainant's mark and that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating 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 <abbottlab.info>, <abbottlab.net>, <abbottlab.org>, <abbottlabs.org>, and <abbottlabs.mobi> domain names BE TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Daniel B. Banks, Jr., Panelist
Dated: January 25, 2016
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