AbbVie, Inc. v. Isabel Norrington
Claim Number: FA1709001748405
Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Isabel Norrington (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbvvie.com>, registered with Google Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2017; the Forum received payment on September 11, 2017.
On September 11, 2017, Google Inc. confirmed by e-mail to the Forum that the <abbvvie.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 September 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@abbvvie.com. Also on September 13, 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 October 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. AbbVie Inc. (“AbbVie”) is the result of a separation from Abbott Laboratories (“Abbott”) into two independent companies, Abbott and AbbVie. Abbott is a global health care company that is a recognized leader in researching and developing medicines, laboratory diagnostics, and other technologies for improving and managing health.
2. Complainant registered the ABBVIE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,340,091, registered May 21, 2013). Respondent’s <abbvvie.com>[1] domain name is confusingly similar to Complainant’s mark as it adds an additional “V” to the ABBVIE mark and adds the common generic top-level-domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <abbvvie.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
4. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent impersonates an executive of Complainant to send fraudulent emails.
5. Respondent registered and uses the <abbvvie.com> domain name in bad faith. Respondent disrupts Complainant’s business through an attempt to defraud Complainant. Respondent had actual knowledge of Complainant’s rights in the ABBVIE mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ABBVIE mark. Respondent’s domain name is confusingly similar to Complainant’s ABBVIE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <abbvvie.com> domain name and that Respondent registered and uses the domain name 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.
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.”).
Complainant asserts rights in the ABBVIE mark based upon registration with the USPTO. Registration of a mark with a trademark authority such as the USPTO sufficiently establishes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues Respondent’s <abbvvie.com> domain name is confusingly similar to Complainant’s mark as it adds an additional “V” to the ABBVIE mark and adds the common gTLD “.com.” Misspelling of a complainant’s mark and the addition of a gTLD has been found insufficient to defeat a test of confusing similarity per Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). The Panel agrees that Respondent’s misspelling of Complainant’s mark and addition of a gTLD are insufficient to differentiate the ABBVIE mark from the <abbvvie.com> domain name per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <abbvvie.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <abbvvie.com> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the ABBVIE mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies Respondent as “Isabel Norrington.” Additionally, the lack of evidence in the record to indicate that the Complainant authorized Respondent to register a domain name using Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the <abbvvie.com> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <abbvvie.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant asserts Respondent failed to use the domain name in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent has used the <abbvvie.com> domain name to send a fraudulent wire transfer request to Complainant. Use of the <abbvvie.com> domain name to send fraudulent emails in an attempt to pass off as an agent of Complainant does not constitute a bona fide offer per Policy ¶ 4(c)(i) or a legitimate noncommercial use per Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). The Panel agrees with Complainant that Respondent is attempting to defraud the Complainant and finds this to be a failure to make a bona fide offer or use of the <abbvvie.com> domain name per Policy ¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent disrupts Complainant’s business through an attempt to defraud Complainant via fraudulent emails and wire transfers. Use of the <abbvvie.com> domain name for this purpose shows bad faith use per Policy ¶ 4(b)(iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii)). The Panel agrees with Complainant and finds that Respondent used the <abbvvie.com> domain name in bad faith per Policy ¶ 4(b)(iii).
Last, Complainant argues Respondent had actual knowledge of Complainant’s rights in the ABBVIE mark prior to registration of the <abbvvie.com> domain name. Complainant contends that Respondent must have had actual knowledge of the ABBVIE mark prior to registration due to the domain name’s use of the ABBVIE mark and Respondent’s use of the domain name to send fraudulent emails to Complainant. The Panel agrees. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <abbvvie.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page