Abbvie, Inc. v. Vladimir Talko
Claim Number: FA1702001717946
Complainant is Abbvie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Vladimir Talko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vicodin.club>, (‘the Domain Name’) registered with NameCheap, 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.
Dawn Osborne of PBIP as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2017; the Forum received payment on February 17, 2017.
On February 20, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <vicodin.club> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2017 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@vicodin.club. Also on February 20, 2017, 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 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 is the owner of the VICODIN trade mark which has been in use continuously since 1978 in connection with a narcotic pain reliever. Its official web site for its VICODIN product is found at Vicodin.com. All of its trade mark registrations were issued before registration of the Domain Name on January 26, 2017.
The Domain Name is identical to Complainant’s VICODIN trade mark, merely adding the gTLD .club at the end, which does not differentiate them.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by Complainant’s VICODIN mark. Respondent is not affiliated with Complainant in any way, is not an authorised distributor and is not licensed to use the VICODIN mark.
Respondent is using the Domain Name for a site that appears to be being built as an online location to buy Vicodin and perhaps other pharmaceutical preparations. When any links on the page are clicked the user is taken to another site where pharmaceuticals not connected with the Complainant are sold. This is unlawful. Provenance of the products is unknown and they may be counterfeit. Respondent is using the VICODIN mark to market pharmaceutical products without authorisation. This is not a bona fide offering of goods and services or legitimate fair use.
The Domain Name was registered and is being used in bad faith. It is being used to set up an online pharmacy. Unsuspecting customers who may purchase unlawfully sold pharmaceutical products may find that their health is harmed and this is also disruptive to Complainant’s business under Policy 4 (b)(iii). Diverting customers to products unrelated to Complainant and unrelated to its Vicodin product is bad faith registration and use pursuant to Policy 4 (b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations for VICODIN, inter alia, in the United States for pharmaceuticals which has been in use continuously since 1978 in connection with a narcotic pain reliever. Its official web site for its VICODIN product is found at Vicodin.com.
The Domain Name was registered on January 26, 2017. While it appears to give some information about Vicodin it contains links that lead to sites where third party pharmaceuticals unconnected with the Claimant can be purchased.
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(f), 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 (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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's VICODIN mark (which is registered in USA for pharmaceuticals and has been used since at least 1978) and the gTLD .club.
The gTLD .club does not serve to distinguish the Domain Name from the VICODIN mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent is using the Domain Name for information about VICODIN and also links to point to third party web sites offering pharmaceuticals which are not connected to Complainant. It does not make it clear on the web site that there is no commercial connection with Complainant, The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See McGuireWoods LLP v Mykhailo Loginov/Loginov Enterprises doo FA 1412001594837 (Forum Jan 22, 2015) (respondent’s use of the disputed domain names to feature hyperlinks containing links in competition with complainant’s products is not a bona fide offering of goods and services pursuit to Policy 4 ( c) (i) and is not a legitimate non-commercial or fair use pursuant to Policy 4 ( c) (iii).)
Finally panels have concluded that offering products illegally cannot establish legitimate rights or interests under the Policy. See Nycomed Denmark ApS v Diaz, D2006-0779 (WIPO Aug. 15, 2006)
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with Complainant in a confusing and disruptive manner. In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive, in that visitors to the site might reasonably believe it is connected to or approved by Complainant, as it offers competing goods and services and information about Complainant’s product VICODIN without any explanation. The discussion on Respondent's web site of Complainant’s product shows that Respondent is aware of Complainant and its product. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating the likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site under Policy 4 (b) (iv) and causes disruption under 4 (b)(iii). See Disney Enters. Inc v Noel, FA 198805 (Forum Nov 11, 2003) where ‘respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitors web site [it] is a reasonable inference that respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy 4 (b) (iii) and (iv).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <vicodin.club> domain name be TRANSFERRED from Respondent to Complainant .
Dawn Osborne, Panelist
Dated: April 3, 2017
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