AbbVie, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation
Claim Number: FA1901001826564
Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emailabbvie.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2019; the Forum received payment on January 23, 2019.
On January 24, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <emailabbvie.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the domain 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 January 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@emailabbvie.com. Also on January 24, 2019, 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 February 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions:
Complainant, AbbVie, Inc., is a specialty-focused research-based biopharmaceutical company that employs approximately 29,000 persons worldwide in over 70 countries, and the company has well over $25 billion in annual revenues. Complainant uses their mark ABBVIE in connection with biopharmaceuticals. Complainant has rights in the ABBVIE mark based on registration with several government authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g. ABBVIE - Reg. No. 4,340,091, registered May 21, 2013). See Compl. Ex. D. Respondent’s <emailabbvie.com> domain name is confusingly similar to Complainant’s ABBVIE mark, as it includes the ABBVIE trademark in its entirety, merely adding the generic or descriptive term “email” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <emailabbvie.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ABBVIE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent has offered the disputed domain name for sale. Further, Respondent uses the disputed domain name to gain click-through revenue from links to third-party websites.
Respondent registered and is using the <emailabbvie.com> domain name in bad faith. Respondent attempts to sell the disputed domain name for more than out-of-pocket costs. Respondent also intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent is using the disputed domain name to advertise unrelated business using the ABBVIE mark in order to generate click-through revenue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a specialty-focused research-based biopharmaceutical company.
2. Complainant has established its trademark rights in the ABBVIE mark based on its registration with several government authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g. ABBVIE - Reg. No. 4,340,091, registered May 21, 2013).
3. Respondent registered the disputed domain name on November 20, 2014.
4. Respondent has offered the disputed domain name for sale and uses the disputed domain name to gain click-through revenue from links to third-party websites.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the ABBVIE mark based upon registration of the mark with the multiple government authorities, including the USPTO (e.g. ABBVIE - Reg. No. 4,340,091, registered May 21, 2013). See Compl. Ex. D. Registration of a mark with a government authority is sufficient to establish rights in that mark. Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel notes that Complainant provides a list of its trademark registrations around the world and provides copies of its USPTO registrations. The Panel therefore holds that Complainant’s registration of the ABBVIE mark with multiple government authorities is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ABBVIE mark. Complainant argues that Respondent’s <emailabbvie.com> domain name is confusingly similar to the ABBVIE mark, as it includes the ABBVIE trademark in its entirety, merely adding the generic or descriptive term “email” and the gTLD “.com.” Addition of generic terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Respondent added the generic/descriptive term “email” and gTLD “.com” to Complainant’s mark when registering the disputed domain name. The Panel therefore agrees that the disputed domain name is confusingly similar to Complainant’s ABBVIE mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ABBVIE trademark and to use it in its domain name, merely adding the generic or descriptive term “email” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain name on November 20, 2014;
(c) Respondent has offered the disputed domain name for sale and uses the disputed domain name to gain click-through revenue from links to third-party websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <emailabbvie.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ABBVIE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM DOMAIN ADMIN / WHOIS FOUNDATION” and no information on the record indicates that Respondent was authorized to register a domain name with Complainant’s mark. See Compl. Ex. A. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <emailabbvie.com> domain name;
(f) Complainant argues that Respondent’s lack of rights and legitimate interests in the <emailabbvie.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a parked website which is being used to gain click-through revenue from links to third-party websites. Use of a domain name to gain financially by hosting links to unrelated websites is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the web page associated with the disputed domain name to support this contention. See Compl Ex. I. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <emailabbvie.com> domain name per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant contends that Respondent’s lack of rights and legitimate interests in the disputed domain name is demonstrated by its offer to sell the disputed domain name. An offer to sell a disputed domain name is not a use indicative of rights or legitimate interests per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots of the WHOIS data for the disputed domain name which purports to offer the domain name for sale for $799. See Compl. Ex. E. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <emailabbvie.com> domain name per Policy ¶ 4(a)(ii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent’s bad faith is demonstrated by its offer to sell the <emailabbvie.com> domain name. An offer to sell a disputed domain name may demonstrate bad faith per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel recalls that Complainant provides screenshots of the WHOIS data for the disputed domain name, which show that the disputed domain name is for sale for $799. See Compl. Ex. E. The Panel therefore finds that Respondent’s offer to sell the disputed domain name indicates bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent’s bad faith is further indicated by its use of the <emailabbvie.com> domain name to advertise unrelated business using Complainant’s ABBVIE mark. Use of a confusingly similar domain name to advertise unrelated businesses may demonstrate bad faith per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). Complainant provides screenshots of the web page associated with the disputed domain name to support this contention. See Compl Ex. I. The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ABBVIE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emailabbvie.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 19, 2019
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