Abbott Diabetes Care Inc. v. nam jong Gang
Claim Number: FA1906001846944
Complainant is Abbott Diabetes Care Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is nam jong Gang (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freeestylelibre.us>, <freedstylelibre.us>, <freesdtylelibre.us>, <freesrylelibre.us>, <freesstylelibre.us>, <freestrylelibre.us>, <freestuylelibre.us>, <freestylelibere.us>, <freestylelibree.us>, <freestylelibrer.us>, <freestylelibrew.us>, <freestylelibrwe.us>, <freestyleliobre.us>, <freestylerlibre.us>, <freestyulelibre.us>, and <fresstylelibre.us> 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2019; the Forum received payment on June 7, 2019.
On Jun 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <freeestylelibre.us>, <freedstylelibre.us>, <freesdtylelibre.us>, <freesrylelibre.us>, <freesstylelibre.us>, <freestrylelibre.us>, <freestuylelibre.us>, <freestylelibere.us>, <freestylelibree.us>, <freestylelibrer.us>, <freestylelibrew.us>, <freestylelibrwe.us>, <freestyleliobre.us>, <freestylerlibre.us>, <freestyulelibre.us>, and <fresstylelibre.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@freeestylelibre.us, postmaster@freedstylelibre.us, postmaster@freesdtylelibre.us, postmaster@freesrylelibre.us, postmaster@freesstylelibre.us, postmaster@freestrylelibre.us, postmaster@freestuylelibre.us, postmaster@freestylelibere.us, postmaster@freestylelibree.us, postmaster@freestylelibrer.us, postmaster@freestylelibrew.us, postmaster@freestylelibrwe.us, postmaster@freestyleliobre.us, postmaster@freestylerlibre.us, postmaster@freestyulelibre.us, postmaster@fresstylelibre.us. Also on June 13, 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 July 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
A. Complainant
Complainant, Abbott Diabetes Care Inc., is at the forefront of diabetes care, focusing on the design, development and manufacture of diabetes management products as well as educating people with diabetes on living active, healthy lives. Complainant has rights in the FREESTYLE LIBRE marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,500,523, registered June 26, 2018). See Compl. Ex. C. Respondent’s disputed domain names are confusingly similar to Complainant’s mark as each disputed domain name contains slight misspellings of the FREESTYLE LIBRE mark, such as the addition of an extra “e” or “d” and adds the generic top-level domain (gTLD) “.us.”
Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, Respondent is not licensed to use Complainant’s mark, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s products. Respondent also fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to parked pages with links that appear to be related to Complainant’s business, but instead direct users to Complainant’s competitors. Additionally, two of the disputed domain names are listed for sale. See Compl. Ex. E.
Respondent registered and used the disputed domain names in bad faith as Respondent has offered to sell two of the disputed domain names. Respondent also attempts to commercially benefit from the goodwill associated with Complainant’s FREESTYLE LIBRE mark. Respondent uses the disputed domain names to disrupt Complainant’s business by causing consumers looking for Complainant’s legitimate domain name to find Respondent’s instead. Respondent had knowledge of Complainant’s rights in FREESTYLE LIBRE mark at the time of registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on May 9, 2019.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the dispute domain names; and that Respondent has engaged in bad faith use and registration of the dispute domain names.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 Panel finds that the 16 dispute domain names are each confusingly similar to Complainant’s valid and subsisting trademark. Complainant has adequately established its rights and interests in and to its trademark, FREESTYLE LIBRE. The disputed domain names are confusingly similar to Complainant’s mark as each disputed domain name contains slight misspellings of the FREESTYLE LIBRE mark, such as the addition of an extra “e” or “d” and adds the generic top-level domain (gTLD) “.us.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are each confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no right, permission or license to register the disputed domain names. Respondent is not commonly known by the disputed domain names. Respondent also fails to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to parked pages with links that appear to be related to Complainant’s business, but instead direct users to Complainant’s competitors. Additionally, two of the disputed domain names are listed for sale. See Compl. Ex. E.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent has apparently offered to sell two of the disputed domain names. Offers to sell a disputed domain name may be evidence that respondent registered the domain names in bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant has provided the Panel with screenshots that show Respondent is offering to sell the <freesrylelibre.us> and <freestylelibrer.us> domain names for $1,999.00. See Compl. Ex. E. Therefore, the Panel finds that Respondent registered and uses the <freesrylelibre.us> and <freestylelibrer.us> domain names in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent uses the disputed domain names to disrupt Complainant’s business by causing consumers looking for Complainant’s legitimate domain name to find the disputed domain names containing links to products from Complainant’s competitors. Using a disputed domain name to host hyperlinks to the competitors of a complainant can demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Complainant provides the Panel with screenshots of the resolving webpage of Respondent’s disputed domain names, each of which displays links to products related to Complainant like glucose monitors or links unrelated to Complainant. See Compl. Ex. D. Therefore, the Panel finds that Respondent engaged in bad faith registration and use of the disputed domain names per Policy ¶ 4(b)(iii).
Complainant further argues that Respondent registered and uses the disputed domain names in bad faith by registering domain names containing purposeful misspellings of Complainant’s mark in an attempt to commercially benefit from the goodwill associated with Complainant’s FREESTYLE LIBRE mark. Use of a disputed domain name for respondent’s own commercial gain constitutes bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Additionally, diverting Internet users to a disputed domain name and likely profiting can demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant argues that Respondent purposeful misspelling of the FREESTYLE LIBRE mark shows intent to mislead and confuse consumers into thinking they are dealing with Complainant. Therefore, the Panel finds that Respondent engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent registered the disputed domain names with knowledge of Complainant’s rights in the FREESTYLE LIBRE mark at the time of registration of the disputed domain names. Complainant argues that based on the registration of the mark in many countries around the world and Respondent’s use of the mark in the domain names and on the resolving webpage, Respondent had knowledge of Complainant’s rights in the mark at the time of registration. Complainant provides copies of registrations of the FREESTYLE LIBRE mark in support of Complainant’s contention that the mark is famous. See Compl. Ex. C. Complainant provides screenshots of the resolving webpages of the disputed domain names each mentioning the FREESTYLE LIBRE mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the FREESTLYE LIBRE mark at the time of registration of the disputed domain names, thus constituting bad faith registration per Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <freeestylelibre.us>, <freedstylelibre.us>, <freesdtylelibre.us>, <freesrylelibre.us>, <freesstylelibre.us>, <freestrylelibre.us>, <freestuylelibre.us>, <freestylelibere.us>, <freestylelibree.us>, <freestylelibrer.us>, <freestylelibrew.us>, <freestylelibrwe.us>, <freestyleliobre.us>, <freestylerlibre.us>, <freestyulelibre.us>, and <fresstylelibre.us> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 11, 2019
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