AbbVie Inc. v. Yang Ke / GMG International Limited
Claim Number: FA1702001717945
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Yang Ke / GMG International Limited (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vicodin.top> and <vicodin.site>, registered with West263 International Limited.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2017; the Forum received payment on February 17, 2017.
On February 20, 2017, West263 International Limited confirmed by e-mail to the Forum that the <vicodin.top> and <vicodin.site> domain names are registered with West263 International Limited and that Respondent is the current registrant of the names. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 February 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@vicodin.top, postmaster@vicodin.site. Also on February 21, 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 March 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
1. Complainant is a worldwide specialty research-based biopharmaceutical company. While Complainant uses the ABBVIE mark in conjunction with its medical and pharmaceutical services, Complainant owns the rights to the VICODIN mark. Complainant registered the VICODIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,107,737, registered Dec. 5, 1978). Additionally, Complainant has registered the VICODIN mark with government trademark agencies in Spain and Australia. See Compl., at Attached Ex. E. Respondent’s <vicodin.top> and <vicodin.site> are identical to Complainant’s VICODIN mark because each incorporates the mark in its entirety, merely adding either the “.top” or “.site” generic top level domains (“gTLDs”).
2. Respondent lacks rights and legitimate interests in <vicodin.top> and <vicodin.site>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the VICODIN mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, nor a legitimate non-commercial or fair use of the domains. Respondent’s <vicodin.top> and <vicodin.site> domain names resolve to almost identical websites displaying Complainant’s VICODIN mark and offering for sale goods associated with Complainant—which may or may not be counterfeit—products in direct competition with Complainant’s business; and products unrelated to Complainant business. See Compl., at Attached Exs. G & H. Moreover, Complainant notes that it is illegal to sell or distribute pharmaceuticals without a prescription, further evincing a lack of rights and legitimate interests. See Compl., at Attached Ex. I.
3. Respondent registered and is using <vicodin.top> and <vicodin.site> in bad faith. The disputed domain names attract internet users to Respondent’s websites for commercial gain. Respondent’s <vicodin.top> and <vicodin.site> domain names disrupt Complainant’s business by selling products that may be Complainant’s or counterfeits thereof, in addition to products competing with or unrelated to Complainant’s business. Respondent registered <vicodin.top> and <vicodin.site> with actual knowledge of Complainant and its rights to the VICODIN mark.
1. Respondent did not submit a Response in this proceeding.
PANEL NOTE
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. Complainant contends that Respondent is capable of understanding English, based on the fact that both of the disputed domain names point to landing pages that are fully in English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Therefore, the Panel, after reviewing the applicable rules regarding the proceedings of the UDRP, determines that pursuant to UDRP Rule 11(a), persuasive evidence has been adduced by Complainant to suggest the likely probability that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
1. Respondent’s <vicodin.top> and <vicodin.site> domain names are confusingly similar to Complainant’s VICODIN mark.
2. Respondent does not have any rights or legitimate interests in the <vicodin.top> and <vicodin.site> domain names.
3. Respondent registered or used the <vicodin.top> and <vicodin.site> domain names 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the “parties that control the disputed domain names are effectively the same person or entity” because both domains were registered on the same date, the registrants’ emails are the same, and the content of each domain is nearly identical. See Compl., at 3 ¶ 7. Therefore, the Panel finds that GMG International Unlimited is the owner of both <vicodin.top> and <vicodin.site>.
Complainant is a worldwide specialty research-based biopharmaceutical company. While Complainant uses the ABBVIE mark in conjunction with its medical and pharmaceutical services, Complainant states it owns the rights to the VICODIN mark. Complainant claims it registered the VICODIN mark with the USPTO (e.g., Reg. No. 1,107,737, registered Dec. 5, 1978). Additionally, Complainant states it has registered the VICODIN mark with government trademark agencies in Spain and Australia. See Compl., at Attached Ex. E. The general consensus among panels is that registrations with USPTO and other government trademark agencies is sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel determines that Complainant’s USPTO and other government registrations are sufficient to show rights in the VICODIN mark.
Complainant contends that Respondent’s <vicodin.top> and <vicodin.site> are confusingly similar to Complainant’s VICODIN mark because they incorporate the mark in its entirety, merely adding either the “.top” or “.site” gTLDs. Generally, panels have found that such changes do not remove a disputed domain name from the realm of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Hence, the Panel agrees and concludes that the addition of a gTLD is insufficient to distinguish Respondent’s <vicodin.top> and <vicodin.site> from Complainant’s VICODIN mark, thereby establishing a confusing similarity between the disputed domain names and the original 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant asserts that Respondent lacks rights and legitimate interests in <vicodin.top> and <vicodin.site>. Complainant maintains that Respondent is not commonly known by the disputed domain names. WHOIS information associated with the disputed domain names identify Respondent as “Yang Ke” of “GMG International Limited.” See Compl., at Attached Exs. A–B. Generally, a panel will determine that a respondent is not commonly known by a disputed domain name based on the WHOIS information and other available information. The Panel recalls that Respondent failed to submit a response in this proceeding. As such, given the lack of information to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names).
Complainant contends that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain names. To support its argument, Complainant illustrates that Respondent’s <vicodin.top> and <vicodin.site> domain names resolve to identical websites displaying Complainant’s VICODIN mark, offering for sale goods associated with Complainant, which may or may not be counterfeit, and those products in direct competition with and unrelated to Complainant’s business. See Compl., at Attached Exs. G–H. Panels have found that no bona fide offering of goods and services or legitimate noncommercial or fair use existed where respondent used the resolving website to sell products branded with complainant’s mark, and were either counterfeit products or legitimate products of complainant being resold without authorization. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Therefore, the Panel determines that Respondent does not have rights or legitimate interests in <vicodin.top> and <vicodin.site> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant maintains that Respondent registered and is using <vicodin.top> and <vicodin.site> in bad faith. Respondent’s <vicodin.top> and <vicodin.site> resolve to websites displaying the VICODIN mark, offering Complainant’s products that may or may not be legitimate, along with products in competition with or unrelated to Complainant’s business. See Compl., at Attached Exs. G–H. Complainant contends that the disputed domain names attract internet users to Respondent’s websites for commercial gain and also disrupt Complainant’s business evidencing bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv). Generally, panels have agreed with such arguments. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Consequently, this Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Finally, Complainant maintains that Respondent registered <vicodin.top> and <vicodin.site> with actual knowledge of Complainant and its rights to the VICODIN mark. Complainant contends that its mark is so famous and well known, Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the VICODIN mark when registering the disputed domain names. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vicodin.top> and <vicodin.site> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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