AbbVie, Inc. and Pharmacyclics LLC v. Beverly Silva
Claim Number: FA1812001822196
Complainant is AbbVie, Inc. and Pharmacyclics LLC (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Beverly Silva (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pharmacyclicsllc.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2018; the Forum received payment on December 21, 2018.
On December 24, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <pharmacyclicsllc.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2019 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@pharmacyclicsllc.com. Also on December 27, 2018, 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 January 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: AbbVie, Inc. and Pharmacyclics LLC. Complainant AbbVie is a specialty-focused research-based biopharmaceutical company. Complainant Pharmacyclics LLC is a subsidiary of AbbVie, Inc. and is the owner of the PHARMACYCLICS mark, which is used in connection of pharmaceuticals used as therapeutics for cancer.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. As such, the Panel will treat them all as a single entity in this proceeding.
A. Complainant
Complainant is a specialty-focused research-based biopharmaceutical company. Complainant has rights in the PHARMACYCLICS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,887,716, registered Apr. 4, 1995). See Compl. Ex. D. Respondent’s <pharmacyclicsllc.com> domain name is confusingly similar to Complainant’s PHARMACYCLICS mark as Respondent incorporates the mark in its entirety while adding the generic/descriptive term “llc” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <pharmacyclicsllc.com> domain name. Respondent is not authorized or otherwise permitted to use Complainant’s PHARMACYCLICS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses an email address associated with the disputed domain name to impersonate an executive of Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <pharmacyclicsllc.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it passes off as Complainant through emails in furtherance of a phishing scheme. Further, Respondent had actual knowledge of Complainant’s rights in the PHARMACYCLICS mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on November 18, 2018.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent lacks any rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name, <pharmacyclicsllc.com>, is confusingly similar to Complainant’s valid and subsisting trademark PHARMACYCLICS. Complainant has adequately plead its rights and interests in and to the disputed domain name. Respondent arrives at the disputed domain name by merely adding the generic appellation “llc” and the g TLD “.com” to the mark in its entirety. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent also fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent appears to use an email address associated with the disputed domain name to impersonate an executive of Complainant in furtherance of a phishing scheme.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent’s apparent impersonation of an executive of Complainant in emails designed to fraudulently solicit customers’ personal information evinces Respondent’s bad faith. Such use of a domain name here is bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). In the record, there is evidence of emails sent from an email address hosted at the disputed domain name. See Compl. Ex. F.
Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
The Panel further finds that, in light of the fame and notoriety of Complainant's PHARMACYCLICS mark, it is inconceivable that Respondent could have registered the <pharmacyclicsllc.com> domain name without actual knowledge of Complainant's rights in the mark. As such, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to the trademark PHARMACYCLICS.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <pharmacyclicsllc.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 18, 2019
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