AbbVie, Inc. v. Sara Kendall
Claim Number: FA1905001845420
Complainant is AbbVie, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, US. Respondent is Sara Kendall (“Respondent”), Maryland, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbvieus.com>, registered with GoDaddy.com, LLC..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <abbvieus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@abbvieus.com. Also on May 31, 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 June 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a specialty-focused research-based biopharmaceutical company that employs approximately 29,000 people worldwide in over 70 countries and has well over $32 billion in annual revenues.
Complainant has rights in the ABBVIE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <abbvieus.com> domain name is confusingly similar to Complainant’s ABBVIE mark as the domain name includes the mark in its entirety adding the geographic abbreviation “us” and the generic top-level domain name (gTLD) “.com.”
Respondent has no rights or legitimate interests in the <abbvieus.com> as Respondent is not commonly known by the at-issue domain name, nor affiliated with Complainant in any way. Respondent fails to make a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the at-issue domain name does not resolve to a webpage when typed into a browser’s address bar. Additionally, Respondent has used the domain name to impersonate an human resource employee of Complainant’s business in furtherance of a phishing scheme.
Respondent registered and used the disputed domain name in bad faith. Respondent disrupts Complainant’s business by using an email address associated with the disputed domain name to impersonate an employee of Complainant in furtherance of a phishing scheme. Lastly, Respondent had actual knowledge of Complainant’s rights in the ABBVIE mark as shown by Respondent’s use of the domain name to impersonate Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ABBVIE mark through its registration of such trademark with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its ABBVIE trademark.
Respondent uses the domain to impersonate Complainant’s human resource department and thereby to facilitate a phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the ABBVIE mark through its registration of such mark with the United States Patent and Trademark Office. See BGK Trademark Holdings, LLC& Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).).
Respondent’s <abbvieus.com> domain name contains Complainant ABBVIE trademark suffixed with the term “us” all followed by the top-level domain name “.com.” The term “us” may, inter alia, be characterized as a geographical indicator for the United States of America. The small differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s ABBVIE trademark under Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Sara Kendall” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <abbvieus.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Although Respondent’s domain name fails to address a website, Respondent uses the confusingly similar domain name to pose as Complainant’s human resource department via sham email from @abbvieus.com to third parties. Respondent thereby facilitates its attempt to obtain confidential information by fraud. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <abbvieus.com> domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent uses the <abbvieus.com> domain name to host email appearing to be from Complainant’s human resource department. Respondent’s domain is thus used to further a phishing scheme aimed at defrauding both Complainant and third parties that Respondent tricks into believing they are dealing with Complainant, when they are not. Respondent’s use of the at-issue domain name in this manner is unquestionably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”); see also, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)).
Additionally, Respondent registered the <abbvieus.com> domain name knowing that Complainant had trademark rights in the ABBVIE trademark. Respondent’s prior knowledge is evident because of the notoriety of Complainant’s trademark and from Respondent’s use of the confusingly similar domain name to poses as Complainant’s human resource department. Given the forgoing, it is clear that Respondent intentionally registered <abbvieus.com> to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's ABBVIE trademark further indicates that Respondent registered and used the <abbvieus.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights 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 <abbvieus.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 25, 2019
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