AbbVie Inc. v. Vladimir Orehov
Claim Number: FA2003001890004
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Vladimir Orehov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kaletra-cureforcoronavirus.com> and <kaletra-treatmentforcoronavirus.com> (‘the Domain Names’), registered with GKG.NET, INC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2020; the Forum received payment on March 26, 2020.
On March 27, 2020, GKG.NET, INC. confirmed by e-mail to the Forum that the <kaletra-cureforcoronavirus.com> and <kaletra-treatmentforcoronavirus.com> domain names are registered with GKG.NET, INC. and that Respondent is the current registrant of the names. GKG.NET, INC. has verified that Respondent is bound by the GKG.NET, INC. 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 March 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2020 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@kaletra-cureforcoronavirus.com, postmaster@kaletra-treatmentforcoronavirus.com. Also on March 31, 2020, 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 April 24, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark KALETRA, registered, inter alia, in the USA for pharmaceuticals with first use recorded as 2000.
The Domain Names registered in 2020 are confusingly similar to Complainant’s KALETRA trademark including the KALETRA trademark in its entirety, merely adding a hyphen and the generic or descriptive terms “cure for coronavirus” or “treatment for coronavirus” and the gTLD “.com”.
The Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.
The Domain Names have been used for a site offering drugs not manufactured by the Complainant which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith misleading Internet users for commercial gain with actual knowledge of the Complainant and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark KALETRA, registered, inter alia, in the USA for pharmaceuticals with first use recorded as 2000.
The Domain Names registered in 2020 have been connected to a site offering drugs not of the Complainant’s manufacture.
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”).
Identical and/or Confusingly Similar
The Domain Names consist of the Complainant’s KALETRA mark (registered, inter alia, in the USA for pharmaceuticals and used since 2000, a hyphen, the generic terms “cure for coronavirus” or “treatment for coronavirus” and the gTLD “.com”.
The addition of generic terms does not prevent confusing similarity between the Domain Names and the Complainant’s mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i)). Nor does the addition of a hyphen. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003) (“The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The site is commercial so cannot be legitimate noncommercial fair use.
The Respondent has used the sites attached to the Domain Names for a competing retail site not connected with the Complainant but using the Complainant’s mark and offering drugs not manufactured by the Complainant. The Respondent does not make it clear that there is no commercial connection between the sites and the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why he should be allowed to register domain names containing the Complainant’s mark and use them for sites offering competing drugs to those of the Complainant.
In the opinion of the panelist the use made of the Domain Names in relation to the sites is confusing and disruptive in that visitors to the sites attached to the Domain Names might reasonably believe those sites are connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites and products or services offered on them likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to point to competing dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use). See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (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).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kaletra-cureforcoronavirus.com> and <kaletra-treatmentforcoronavirus.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 24, 2020
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