DECISION

 

AbbVie Inc. v. Season Advertising, S.L.

Claim Number: FA1704001727071

PARTIES

Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Season Advertising, S.L. (“Respondent”), Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <abbvie-hcv.com>, <humira-vs.com>, registered with 10Dencehispahard, S.L.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 14, 2017; the Forum received payment on April 14, 2017.

 

On April 24 and 28, 2017, 10Dencehispahard, S.L. confirmed by e-mail to the Forum that the <abbvie-hcv.com> and <humira-vs.com> domain names are registered with 10Dencehispahard, S.L. and that Respondent is the current registrant of the names.  10Dencehispahard, S.L. has verified that Respondent is bound by the 10Dencehispahard, S.L. 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 April 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@abbvie-hcv.com, and postmaster@humira-vs.com.  Also on April 28, 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 May 30, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant contends it registered its ABBVIE and HUMIRA marks with the United States Patent and Trademark Office (“USTPO”) (Reg. 4,340,091, registered May 21, 2013) and (Reg. 3,784,305, registered May 4, 2010), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Exs. D, F. Respondent’s <abbvie-hcv.com> and <humira-vs.com> domain names are confusingly similar to Complainant’s mark. The disputed domain names incorporate Complainant’s marks and merely append a hyphen, a string of additional letters and the generic top-level domain (“gTLD”) “.com”.

2.    Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. A (WHOIS information). The disputed domain names’ resolving webpages are designed to imitate Complainant’s business for the purpose of furthering a phishing scheme. Specifically, Respondent is using the disputed domain names in connection with sites that display the AbbVie Logo and the Humira Logo and invite the user to insert a username and password.  If it is not accurate, the user is asked to provide their email address.  See Compl., at Attached Exs. H–I. Such use is not a bona fide offering of goods or services or any legitimate noncommercial or fair use.

3.    Respondent has registered and is using the <abbvie-hcv.com> and <humira-vs.com> domain names in bad faith. Respondent attempted to use Complainant’s logos to pass itself off as Complainant and by displaying information that resembled Complainant’s own webpages. Respondent clearly had actual knowledge of Complainant’s rights at the time of registration and registered the domains in connection with a phishing scheme.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <abbvie-hcv.com>, <humira-vs.com> domain names are confusingly similar to Complainant’s ABBVIE and HUMIRA marks.

2.    Respondent does not have any rights or legitimate interests in the <abbvie-hcv.com>, <humira-vs.com> domain names.

3.    Respondent registered or used the <abbvie-hcv.com>, <humira-vs.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant contends it registered its ABBVIE and HUMIRA marks with the USTPO (Reg. No.  4,340,091, registered May 21, 2013) and (Reg. No. 3,784,305, registered May 4, 2010), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Exs. D, F. A USPTO registration confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the ABBVIE and HUMIRA marks under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent’s <abbvie-hcv.com> and <humira-vs.com> are identical or confusingly similar to Complainant’s mark. The marks simply append a hyphen, followed by two or three additional letters and the gTLD “.com”. Such alterations are not sufficiently distinguishing. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel may note that Respondent’s <abbvie-hcv.com> differs from Complainant’s ABBVIE mark by the appendage of a hyphen and the letters “H”, “C”, and “V” and the addition of the gTLD “.com” to the fully incorporated mark. Respondent’s <humira-vs.com> differs from Complainant’s HUMIRA mark by appending a hyphen and the letters “V” and “S” to as well as the gTLD “.com” to the fully incorporated mark. Therefore, the Panel holds that Respondent’s <abbvie-hcv.com> and <humira-vs.com> are identical or confusingly similar to Complainant’s marks.

 

Rights or Legitimate Interests

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 has no rights or legitimate interests in the disputed domain name. Complainant contends it has not licensed or otherwise authorized Respondent to use its marks in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a 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). The Panel notes that the WHOIS information lists a privacy service “Season Advertising, S.L.” as the registrant for the domain names. As such, the Panel holds that Respondent is not commonly known by <abbvie-hcv.com> or <humira-vs.com>.

 

Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the resolving websites to pass itself off as Complainant. Such use cannot be construed as bona fide offering of goods or services or legitimate noncommercial or fair use of a domain. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Here, Complainant has provided screenshot evidence of the resolving webpages for <abbvie-hcv.com> and <humira-vs.com> which displays Complainant’s marks and a color scheme and layout similar to Complainant’s webpage. See Compl., at Attached Exs. H–I. Based on this evidence, the Panel holds that Respondent failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).

 

Complainant alleges that Respondent is operating these webpages in furtherance of a phishing scheme. Phishing for Internet users’ personal information is not bona fide or legitimate under Policy ¶ 4(c)(i) or 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010)

(“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screenshot evidence of the disputed domain names’ resolving webpages which contain a phony log in page that lures Internet users to enter personal information. The Panel holds this evidence amounts to phishing and may hold that Respondent has not made a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and is using the <abbvie-hcv.com> and <humira-vs.com> domain names in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the ABBVIE and HUMIRA marks. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant has provided screenshots of Respondent’s webpages which prominently display Complainant’s marks and information related to Complainant’s business. See Compl., at Attached Exs. H–I. As such, the Panel holds that Respondent acted in bad faith under Policy ¶ 4(b)(iv).

 

Complainant also contends that in light of the fame and notoriety of Complainant’s marks, it is inconceivable that Respondent could have registered the <abbvie-hcv.com> and <humira-vs.com> domain names without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). 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 has 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).”). Here, Complainant’s marks have created significant good will and consumer recognition around the world and have been in use by Complainant for over four years. See Compl., at Attached Exs. D, F. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <abbvie-hcv.com> and <humira-vs.com> were registered and subsequently used.

 

Finally, Complainant alleges that Respondent’s conduct amounts to phishing because the resolving websites for the disputed domain names attempt to lure personal information from Internet users. Phishing is evidence of bad faith under Policy ¶ 4(a)(iii). See McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name). Complainant has provided screenshot evidence of the disputed domain names’ resolving webpages which display a phony login page to entice Internet users to provide personal information. On this evidence, the Panel holds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

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-hcv.com> and <humira-vs.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 12, 2017