AbbVie, Inc. v. Super Privacy Service LTD c/o Dynadot.
Claim Number: FA2004001890909
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kaletracoronavirus.com>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2020; the Forum received payment on April 3, 2020.
On April 3, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <kaletracoronavirus.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@kaletracoronavirus.com. Also on April 6, 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 30, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the KALETRA trademark established by its ownership of the trademark registrations described below and its use of the mark in connection with its anti-viral prescription drug that is used along with other antiretroviral medications to treat human immunodeficiency virus-1 (HIV-1). Complainant submits that it employs approximately 30,000 persons worldwide in over 70 countries, and the company has in excess of $32 billion in annual revenues.
Complainant submits that the disputed domain name <kaletracoronavirus.com> is confusingly similar to Complainant’s KALETRA trademark as it includes the KALETRA trademark in its entirety, merely adding the generic or descriptive term “coronavirus” followed by the most common generic Top-Level Domain extension <.com>.
Complainant submits that the mere addition of a generic or descriptive term is not sufficient to distinguish the disputed domain name from the KALETRA trademark. See AbbVie,Inc. v. Patricia Gunter, FA 1789114 (Forum June 28, 2018) (finding <abbviepharmceutical.com> confusingly similar to the ABBVIE trademark).
Complainant further submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by Complainant’s KALETRA mark and while according to the WHOIS, Respondent’s identity is shielded by a privacy shield, Complainant is confident that Respondent is not commonly known by Complainant’s KALETRA mark or affiliated with Complainant in any way. Complainant asserts that Respondent is not licensed by Complainant to use Complainant’s KALETRA mark, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name).
Complainant adds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use arguing that Respondent is using the disputed domain name to direct to a website that appears to be preparing to offer KALETRA brand pharmaceuticals for sale online to battle coronavirus. Complainant states that its KALETRA branded pharmaceutical is currently being tested in global clinical trials to treat COVID-19/coronavirus patients, and a number of domain names have been registered with the KALETRA trademark by unrelated third parties, so Complainant believes that Respondent is using the disputed domain name to take advantage of an already nervous world that is in the midst of “shelter in place” orders due to COVID-19/coronavirus. Complainant asserts that any such offer its KALETRA branded pharmaceutical online would be unlawful as a physician’s prescription is required to obtain this drug. See, Eli Lilly and Company v. Bahodir Ubajdullaev FA 1739590 (Forum Aug. 24, 2017) (finding the use of <cialis.casa> to sell generic versions of Complainant’s product was not a bona fide offering of a good or service per Policy ¶ 4(c)(i), or any legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Since Complainant is not affiliated in any way with Respondent, Complainant is unable to determine if the any products Respondent might sell at this site in the future are genuine or counterfeit. Any such use of the disputed domain name to sell counterfeit products would constitute bad faith registration and use. See Eli Lilly and Company v. John Does 1-100, FA 1692617 (Forum Oct. 13, 2016) (finding the attempted sale of counterfeit pharmaceutical products does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use). Due to the fact that Complainant does not sell KALETRA online, there is no use that Respondent could make of the disputed domain name that would be lawful or authorized.
Complainant alleges that the disputed domain name was registered in bad faith arguing that it is clear from the disputed domain name and Respondent’s use (along with the timing of the registration with the testing associated with coronavirus) that Respondent registered the disputed domain name with knowledge of Complainant’s rights in the KALETRA trademark and intended to create an association with Complainant and its products. Complainant adds that Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Complainant further alleges that the disputed domain name is being used in bad faith to potentially unlawfully sell KALETRA branded pharmaceutical online or generic versions which are not made by Complainant. Complainant argues that Respondent is thereby attempting to commit a fraud and is disrupting Complainant’s business. AbbVie Inc. v. Vladimir Talko FA 1717946 (Forum Apr. 3, 2017) (“By using the disputed domain name in connection with what appears to be an online pharmacy for Vicodin and other controlled pharmaceutical substances, unsuspecting consumers who may purchase unlawfully sold pharmaceutical products may find that their health is potentially harmed which in turn is disruptive to Complainant and its business.”)
In conclusion, Complainant submits that by using Complainant’s KALETRA trademark to attract traffic to its own website to potentially sell drugs online, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See V Secret Catalogue, Inc. v. Little, FA 301728 (Forum Sept. 2, 2004)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a biopharmaceutical company and is the owner of a portfolio of trademark registrations for the KALETRA trademark, which is used by Complainant as the trademark for an antiviral pharmaceutical preparation. Complainant’s international portfolio of registrations for the mark include
United States Registered Trademark KALETRA, registration number 2,451,327, registered on the Principal Register on May 15, 2001 for goods in international class 5.
The disputed domain name was registered on March 6, 2020 and resolves to a website that purport to offer “kaletra” for sale. The content of the sparsely-worded website includes the statements “Order kaletra”, “ KALETRA COST”, “40% - Price Saving”, “20%- Discount”, “60% - Generic”,” 80% -Cost Per Pill” and has a form that appears to invite visitors to the website to contact the website owner by entering their name, email address, subject line and a message.
There is no information available about Respondent except for that provided in the Complaint and its annexes, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for details of the registration of the disputed domain name in the course of this proceeding.
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”).
Complainant has adduced uncontested evidence of its rights in the KALETRA mark established through its ownership of the above-described trademark registrations and its use of the KALETRA trademark in connection with sales of antiretroviral medications.
The disputed domain name <kaletracoronavirus.com> is composed of Complainant’s KALETRA trademark in its entirety in combination with the descriptive term “coronavirus” and the generic Top-Level Domain extension <.com>.
Complainant’s KALETRA trademark is the initial and only distinctive element of the disputed domain name. The word “coronavirus” does not add any distinctive characteristic to the disputed domain name, and for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context of this Complaint.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by Complainant’s KALETRA mark; that according to WHOIS, Respondent’s identity is shielded by a privacy shield; that Complainant is confident that Respondent is not commonly known by Complainant’s KALETRA mark or affiliated with Complainant in any way; that Respondent is not licensed by Complainant to use Complainant’s KALETRA mark; that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services; that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use; that Respondent is using the disputed domain name to direct to a website that appears to be preparing to unlawfully offer both Complainant’s KALETRA brand pharmaceuticals or counterfeits products along with generic pharmaceuticals for sale online which is not a bona fide or good faith use.
It is well established in decisions made under the Policy, that if a complainant makes out a prima facie case, the burden of production shifts to the respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name consists of Complainant’s trademark and the name of a classification of virus which is presently causing a pandemic. Complainant uses its KALETRA trademark in connection with an anti-retroviral pharmaceutical. It is therefore implausible that the registrant of the disputed domain name was unaware of Complainant’s mark and the goodwill and reputation that it has acquired in the mark when the disputed domain name was registered. On the balance of probabilities, the disputed domain name was registered in bad faith to target and take predatory advantage of Complainant’s mark and reputation.
The disputed domain name resolves to a website that purports to offer not only KALETRA branded products but also generic competing products for sale. Such use of the disputed domain name is clearly intended to attract and divert Internet traffic seeking Complainant and its products.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site to which the disputed domain name resolves by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and the products that it purports to offer for online sale on the website and is therefore using the disputed domain name in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kaletracoronavirus.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________
James Bridgeman SC
Panelist
Dated: April 30, 2020
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