AbbVie, Inc. v. AbbVie
Claim Number: FA1802001773787
Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is AbbVie (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbvie-jp.com>, registered with Japan Registry Services Co., Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2018; the Forum received payment on February 27, 2018. The Complaint was received in both Japanese and English.
On February 28, 2018, Japan Registry Services Co., Ltd. confirmed by e-mail to the Forum that the <abbvie-jp.com> domain name is registered with Japan Registry Services Co., Ltd. and that Respondent is the current registrant of the name. Japan Registry Services Co., Ltd. has verified that Respondent is bound by the Japan Registry Services Co., Ltd. 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 March 2, 2018, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of March 22, 2018 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-jp.com. Also on March 2, 2018, the Japanese 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 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, AbbVie, Inc., is a specialty-focused research-based biopharmaceutical company that employs approximately 29,000 people worldwide in over 70 countries, and the company has well over $25 billion in annual revenues. Complainant uses its ABBVIE mark to promote its products and services in the medical and pharmaceutical industries. Complainant established rights in the ABBVIE mark through registration with trademark authorities world-wide, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered May 21, 2013). See Compl. Ex. E. Respondent’s <abbvie-jp.com> domain name is confusingly similar to Complainant’s ABBVIE mark because it merely adds a hyphen, the geographical term “jp” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent does not have rights and legitimate interests in the <abbvie-jp.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ABBVIE mark in any fashion. Although the WHOIS information of record lists “AbbVie” as the registrant, Respondent is not commonly known by the domain name because Respondent failed to provide any affirmative evidence to verify the WHOIS information. See Compl. Ex. A. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Currently, the domain name does not resolve to an active website and Respondent has not made any demonstrable preparations to use the domain name.
iii) Respondent registered and is using the <abbvie-jp.com> domain name in bad faith. Specifically, Respondent registered a confusingly similar domain name with the intention to attract users for commercial gain, even though the webpage associated with the domain name is not in use. Further, Respondent registered the domain name with full knowledge of Complainant’s rights in the ABBVIE mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Complainant is a specialty-focused research-based biopharmaceutical company that employs approximately 29,000 people worldwide in over 70 countries, and it has well over $25 billion in annual revenues. Complainant’s ABBVIE mark is well known in respect of its products and services in the medical and pharmaceutical industries.
2. Complainant has established its trademark rights in its ABBVIE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered May 21, 2013).
3. Respondent registered the <abbvie-jp.com> domain name on February 6, 2018.
4. The disputed domain name is not in use.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 claims it established rights in the ABBVIE mark through registration with USPTO (e.g., Reg. No. 4,340,091, registered May 21, 2013). See Compl. Ex. E. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Accordingly, the Panel holds that Complainant established rights in the ABBVIE mark for purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <abbvie-jp.com> domain name is confusingly similar to Complainant’s ABBVIE mark because it merely adds a hyphen, the geographical term “jp,” and the gTLD “.com” to the fully incorporated mark. The addition of a hyphen, geographic term, and gTLD do not negate confusing similarity between a mark and a disputed domain name. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant avers that the term “jp” is a geographical reference to the country Japan. Therefore, the Panel holds that Respondent’s <abbvie-jp.com> domain name is confusingly similar to Complainant’s ABBVIE mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights and legitimate interests in the <abbvie-jp.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ABBVIE mark in any fashion and Respondent is not commonly known by the disputed domain name. A respondent may lack rights and legitimate interests in a domain name where the respondent was not authorized to incorporate a complainant’s trademark into the domain name and respondent fails to provide additional evidence that it is commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). WHOIS information may be considered when determining rights in a domain name, however, absent additional affirmative evidence, a respondent may not be commonly known by the disputed domain name. See La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name). Complainant contends that although the WHOIS information of record lists “AbbVie” as the registrant, Respondent is not commonly known by the domain name because Respondent failed to provide affirmative evidence to verify the WHOIS information. See Compl. Ex. A. Therefore, the Panel concludes that Respondent is not commonly known by the <abbvie-jp.com> domain name.
Further, Complainant argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent has not made any demonstrable preparations to use the domain name because the domain name currently resolves to an inactive website. Using a confusingly similar domain name to resolve to an inactive website may not be considered a legitimate use pursuant to Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). The Panel notes that Complainant did not provide any evidence that the domain name resolves to an inactive website. However, the Panel recognizes as a result of its making a visit to the website to which the disputed domain name is resolved that it denies the display of the website. Given the circumstances above and in the absence of a Response from the Respondent, the Panel agrees with Complainant’s contentions that the <abbvie-jp.com> domain name resolves to an inactive website, and thus the Panel holds that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 argues that Respondent registered a confusingly similar domain name with the intention to attract users for commercial gain, even though the webpage associated with the domain name is not in use. Bad faith can be found under Policy ¶ 4(b)(iv) even where a respondent does not actively use a resolving domain. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Relatedly, Complainant claims that Respondent’s failure to make a use the domain name shows bad faith per Policy ¶ 4(a)(iii). Failure to make an active use of a domain name may evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant contends that the <abbvie-jp.com> domain name resolves to an inactive website. Complainant does not provide any evidence to show the alleged non-use of the webpage associated with the domain name. However, the Panel recognizes as a result of its making a visit to the website to which the disputed domain name is resolved that it denies the display of the website. Given the circumstances above and in the absence of a Response from Respondent, the Panel agrees with Complainant’s contentions that the <abbvie-jp.com> domain name resolves to an inactive website.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is a specialty-focused research-based biopharmaceutical company that employs approximately 29,000 people worldwide in over 70 countries, and the company has well over $25 billion in annual revenues. The Panel notes articles regarding the success of the Complainant’s business. See Compl. Ex. 2 (Wall Street Journal and Forbes Articles). As such, the Complainant’s mark ‘ABBVIE’ is considered as being a well-known and reputable trademark, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Further, Complainant contends that Respondent registered the <abbvie-jp.com> domain name in bad faith with full knowledge of Complainant’s rights in the ABBVIE mark. Actual knowledge of a complainant’s rights in a mark may evidence bad faith registration. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent is presumed to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends that its ABBVIE mark is famous and provided articles regarding the success of its business. See Compl. Ex. 2 (Wall Street Journal and Forbes Articles). Therefore, the Panel finds that Complainant’s ABBVIE mark is famous and infers that Respondent registered the domain name in bad faith with knowledge of Complainant’s rights in the mark.
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-jp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 28, 2018
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