Abbott Laboratories v. Kumar Patel
Claim Number: FA0606000740337
PARTIES
Complainant is Abbott Laboratories (“Complainant”), represented by Mark V.B. Partridge, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Kumar Patel (“Respondent”), 5 Stanborough House, Wisbech, Cambs PE14 9QB, UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbott-laboratories.com>,
registered with Totalregistrations of
Cheshire, England.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 27, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 29, 2006.
On June 28, 2006, Totalregistrations confirmed by e-mail to the
National Arbitration Forum that the <abbott-laboratories.com>
domain name is registered with Totalregistrations and that the Respondent is
the current registrant of the name. Totalregistrations
has verified that Respondent is bound by the Totalregistrations registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On July 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 24, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@abbott-laboratories.com by e-mail.
A Response was received on July 24, 2006 but determined to be deficient
because the National Arbitration Forum did not receive the Response in hard
copy form pursuant to ICANN Supplemental Rule #5(a).
Although Respondent has not complied with the letter of the rules in
filing its Response, the Panel has determined, in the interests of justice, to
consider the entire content of the deficient Response in rendering this
Decision.
Complainant timely filed an Additional Submission under date of July
31, 2006. That Additional Submission
was filed in compliance with Supplemental Rule 7, and will therefore be
considered by the Panel in the ordinary course.
On August 1, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is a global healthcare company with sales in 2005 totaling
more than USD 22 billion.
Since at least as early as 1888, Complainant and its predecessors have
used the trademarks ABBOTT and ABBOTT LABORATORIES in connection with their
marketing of a wide variety of goods and services in the healthcare industry.
Complainant has longstanding common law rights to the ABBOTT
LABORATORIES mark and has registered its ABBOTT mark with the pertinent
authorities in the United States, the United Kingdom and the European Union.
Complainant’s marks have become famous worldwide and represent valuable
goodwill.
Respondent registered the disputed domain name on June 1, 2005, long
after Complainant had acquired both its common law and statutory rights in its
marks.
The web site located at the contested domain name displays
Complainant’s marks, as well as its registered logo.
The same web site purports to be a complaint site featuring articles
critical of Complainant and its products and services.
Respondent is a cyber-squatter who has been involved in numerous UDRP proceedings,
including those brought by Eastman Chemical Co., Endo Pharmaceuticals Inc. and
Auxilium Pharmaceuticals, Inc.
The subject domain name is confusingly similar to Complainant’s ABBOTT
mark and identical to its ABBOTT LABORATORIES mark.
Respondent is not commonly known by either of Complainant’s marks, and
has not acquired any trademark, service mark or other rights in either of them.
Complainant has not licensed or otherwise authorized Respondent to use
its marks in any domain names.
The contested domain name falsely implies an association between
Complainant and Respondent’s web site, which Respondent exploits to lure
unsuspecting Internet users to that site.
Respondent registered and uses the offending domain name in bad faith.
B. Respondent
Respondent contends, among other things, that:
Respondent’s use of Complainant’s marks in its domain name is not done
in connection with any aspect of trade or commerce.
Complainant is the rightful owner of both its ABBOTT and ABBOTT
LABORATORIES trademarks.
Respondent’s web site is devoted entirely to criticism of Complainant.
The web site to which Respondent’s
domain name resolves contains a prominent disclaimer of any affiliation with
Complainant.
This proceeding is no more than an attempt by Complainant to shield
itself from criticism by Respondent or members of the public.
There is no dispute that the subject domain name is confusingly similar
to Complainant’s trademarks.
Respondent has the right to use Complainant’s marks in non-commercial activity
consisting entirely of criticism of Complainant and its goods and services,
which is a permitted fair use under the Policy.
There is no dispute that Respondent has never been commonly known by
the subject domain name.
In bringing this proceeding, Complainant is guilty of reverse domain
name hijacking.
Respondent is not a commercial competitor of Complainant, and
Respondent’s web site does not disrupt Complainant’s business.
Complainant’s Complaint makes clear that this proceeding represents a
misuse of the Policy to pursue what is at base a trademark infringement dispute
that ought properly to be left to the appropriate national courts.
C. Additional Submissions
Complainant, in its Additional Submission, contends, among other
things, that:
Respondent is not a customer or former employee of Complainant, and so
cannot legitimately claim the right to use its domain name in fair use
criticism of Complainant.
Respondent’s true purpose in registering and using its domain name is
to harass Complainant and to interfere with its business.
Complainant does not contest Respondent’s right of free speech, but
only its illicit use of Complainant’s marks in pursuing its objectives.
FINDINGS
(1)
the domain name
registered by Respondent is identical and confusingly similar to trademarks in
which Complainant has rights;
(2)
Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the same domain
name was registered and is being used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
i. the domain name registered by the Respondent
is identical or confusingly similar to a
trademark or service mark in which the
Complainant has rights;
ii. the
Respondent has no rights or legitimate interests in respect of the domain
name;
and
iii. the
domain name has been registered and is being used in bad faith.
Preliminary Issue: The
Panel’s Jurisdiction Under the Policy
Before addressing the substantive questions posed by the parties’
contentions, we first note that Respondent contends that Complainant’s
contentions consist of what is essentially a complaint for trademark
infringement which ought to be decided in the appropriate national courts. It is of course true that the Policy’s
dispute resolution procedure is intended solely to address a narrow class of
abusive domain name registrations, and necessarily relegates all other disputes
between the parties to the courts. See,
e.g., AutoNation Holding Corp. v.
Rabea Alawneh, D2002-0581 (WIPO May 2, 2002):
[A]ssertions [of trademark infringement] are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else.
It is also true that some of the language used by Complainant in its
submissions in this proceeding is reminiscent of that commonly found in
trademark infringement cases. The Panel
will, however, limit its consideration of the allegations of the Complaint to
those directly pertinent to issues properly considered under the Policy.
To satisfy the requirements of ¶ 4(a)(i) of the Policy, Complainant must first demonstrate that it has rights in the mark(s) on which it bases its Complaint. One of Complainant’s marks is registered with the pertinent national authorities. The other is not. Registration of a mark satisfies the terms of the Policy perforce. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). It is also true, however, that the Policy recognizes rights in a mark that are not so registered, provided that a complainant’s use of a mark meets the standards of the common law. In this instance, Complainant alleges that its unregistered mark has been in longstanding and widespread use in commerce within the healthcare industry and has thus become famous and acquired valuable good will. This is sufficient to establish Complainant’s common law rights in the mark for purposes of the Policy. See Sydney Markets Ltd. v. Rakis, D2001-0932 (WIPO Oct. 8, 2001).
For these reasons, and because Respondent does not dispute that Complainant has rights in its marks, we may turn to the companion question under Policy ¶ 4(a)(i), which is whether Respondent’s domain name is identical or confusingly similar to Complainant’s marks, or either of them. In this regard, Complainant argues that the contested domain name is confusingly similar to its registered ABBOTT mark and substantively identical to its unregistered ABBOTT LABORATORIES mark. We consider these claims separately.
As to the registered ABBOTT mark, it is well established that the addition to a mark of a generic term (here “laboratories”), which is descriptive of Complainant and its business, does not distinguish a domain name from the mark sufficiently to avoid condemnation under the Policy. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000). As to the unregistered ABBOTT LABORATORIES mark, the domain name is indeed substantively identical to that mark, differing from it only by the addition of a hyphen between the two terms. Such a superficial difference cannot save the domain name from the reach of the Policy. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005). Likewise, the presence of the required top level domain name to Complainant’s marks in each instance does not change this outcome. See Eastman, supra.
Accordingly, and because Respondent does not
contest Complainant’s contentions under this heading, the Panel finds that the
requirements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the subject domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has such rights or interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent upon that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, an assertion by a complainant that a respondent has no rights or legitimate interests in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In its defense,
Respondent relies entirely upon the provisions of Policy ¶ 4(c)(iii) in
asserting that its use of Complainant’s marks constitutes a “legitimate
non-commercial or fair use” aimed at fair criticism of Complainant and its
products and services, which use the Policy does not condemn. Respondent also asserts that the web site to
which its domain name resolves contains a prominent disclaimer of any
affiliation with Complainant. The contentions of the parties thus frame
what has come to be called a “trademark-plus-top-level-domain” or “TM.TLD”
criticism case.
It appears from its submission that
Respondent takes the view that, so long as it exercises free speech rights at
its web site, it may employ Complainant’s entire ABBOTT LABORATORIES mark in
its domain name to attract Internet users to that site, and that the posting of
a non-affiliation disclaimer on the site answers all related questions. In this Respondent is mistaken. See Prem Rawat Found. v. Leason, FA 231883 (Nat. Arb. Forum Mar. 27,
2004):
[W]hile the content of Respondent’s website
may enjoy First Amendment protection, such protection does not spawn rights or
legitimate interests with respect to a domain name which is confusingly similar
to another’s trademark.
The error of Respondent’s thesis arises from
the fact that the use of Complainant’s entire protected mark as the sole core
of the disputed domain name impermissibly lures unsuspecting Internet users to
the offending site in the belief that they are visiting a site sponsored by
Complainant. See Covance, Inc. v. The Covance Campaign,
D2004-0206 (WIPO Apr. 30, 2004):
[T]he Policy does not
countenance any type of ‘initial confusion’ of the sort which occurs when a
member of the public sees the disputed domain name and thinks that it may lead
to a website associated with the Complainant.
Even where there is a very clear disclaimer on the website which
disabuses any notion that the website is endorsed by the Complainant, the
consensus view is that the requirement of the Policy that the Respondent makes
a “legitimate noncommercial or fair use of the domain name” prohibits any type
of initial confusion from being created.
This being so, and notwithstanding that Respondent’s web site contains
materials which would qualify as fair criticism of Complainant of the kind
contemplated by Policy ¶ 4(c)(iii),
Respondent’s creation of a domain name which consists entirely of Complainant’s
mark yields the result that Respondent cannot enjoy cover under that proviso.
The Panel therefore finds that Complainant has satisfied the
requirements of Policy ¶ 4(a)(ii).
In assessing the question whether Respondent has registered and is using the disputed domain name in bad faith, it is customary to resort to the provisions of Policy ¶ 4(b), which recites a list of circumstances which, if found present in a particular case, may be deemed evidence of bad faith. However, where, as here, none of the situations described in Policy ¶ 4(b) is fairly found in the facts of the proceeding, we are permitted to search outside of that proviso for such evidence as may exist on the issue of bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO Jun. 19, 2000).
In this connection, Respondent’s
foreknowledge of Complainant’s rights in its marks, and particularly of its
registered mark, is pertinent to our inquiry.
This is so because it is evident that Respondent registered the
contested domain name with actual or constructive knowledge of Complainant’s
rights in its ABBOTT mark by virtue of Complainant’s prior registration of that
mark with the pertinent national authorities in the United States and
Europe. Registration of a confusingly
similar domain name despite such actual or constructive knowledge, without
more, evidences bad faith registration and use of a domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002).
Moreover, we are persuaded that, in the circumstances here presented,
Respondent’s use of Complainant’s entire mark as the sole substantive element
of its domain name, so as to create initial confusion among Internet users in
luring them to its web site, constitutes further evidence of Respondent’s bad
faith.
Finally, it is likewise significant in this connection that Respondent
has been involved in numerous UDRP proceedings of a similar sort and that his
many supposed criticism web sites similarly appropriate famous marks. See CASRO v. Consumer Information Org. LLC, D2002-0377 (WIPO Jul. 19,
2002).
For all of these reasons, the Panel concludes that Complainant has
satisfied the requirements of Policy ¶ 4(a)(iii).
Collateral Issue: Reverse Domain Name
Hijacking
Respondent accuses Complainant of attempted “reverse domain name hijacking” in filing its Complaint in this proceeding. “Reverse domain name hijacking” is an effort aimed at using the Policy in bad faith to deprive a domain name holder of a name to which it is entitled. Suffice to say that, the Complaint having been upheld, Respondent cannot hope to succeed on this argument. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Macesic, D2000-1698 (WIPO Jan. 25, 2001).
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <abbott-laboratories.com>
domain name be TRANSFERRED forthwith
from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 15, 2006
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