AbbVie, Inc. v. jie yin / yinjie
Claim Number: FA2107001954608
Complainant is AbbVie Inc. (‘Complainant”), represented by Kim Boyle of Richard Law Group, Inc., Texas, USA. Respondent is jie yin / yinjie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abvie-vip.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2021; the Forum received payment on July 11, 2021.
On July 21, 2021, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <abvie-vip.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 July 21, 2021, the Forum served the Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of August 10, 2021, 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@abvie-vip.com. Also, on July 21, 2021, the Japanese language 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 August 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Japanese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(a) the disputed domain name contains a single-letter misspelling of the name of Complainant, a U.S. based company;
(b) the domain name also contains the English language generic term “vip” (for “very important person”);
(c) the domain name resolves to a website that is rendered exclusively in the English language; and
(d) these facts demonstrate Respondent’s proficiency in English.
Respondent does not contest any of these assertions. For that reason, and because translating the documents required to prosecute this proceeding in Japanese would put Complainant to a substantial financial burden and unnecessarily delay this proceeding, as well as because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant is a specialty-focused and research-based biopharmaceutical company marketing its products in over seventy countries around the world.
Complainant holds a registration for the ABBVIE trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,358,949, registered June 25, 2013.
Respondent registered the domain name <abvie-vip.com> on June 14, 2021.
The domain name is confusingly similar to Complainant’s ABBVIE mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise permitted by Complainant to use the ABBVIE mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent does not have rights to or legitimate interests in the domain name.
The domain name constitutes an instance of typo-squatting.
Respondent knew of Complainant’s rights in the ABBVIE mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the ABBVIE trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a UDRP complainant had established rights in its mark where the mark was registered with a national trademark authority).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <abvie-vip.com> domain name is confusingly similar to Complainant’s ABBVIE trademark. The domain name incorporates the mark in its entirety, with only the deletion of the single letter “b” and the addition of the generic term “vip” (the English abbreviation for “very important person”), with a hyphen (-) separating those terms, plus the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term to the mark of another in creating a domain name was insufficient to distinguish one from the other under Policy ¶ 4(a)(i)).
See also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum November 15, 2006) (finding that a respondent’s <hacrs.com> domain name was confusingly similar to a UDRP complainant’s HACRES mark because it merely omitted the letter “e” from the mark and added the gTLD “.com”).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, as to Respondent’s addition of a hyphen to Complainant’s mark in forming its domain name, this alteration of the mark adds anything to nor subtracts anything from the meaning of the result.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <abvie-vip.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <abvie-vip.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the ABBVIE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “jie yin / yinjie,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent,
that Respondent, for its commercial gain, employs the <abvie-vip.com> domain name to resolve to a website that imitates Complainant’s official website and that offers products for sale in the same commercial field as does Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is … attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Forum December 5, 2003) (finding that a respondent was not using contested domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use where that respondent used the domain names to divert Internet users to a website that offered services in competition with those offered by a UDRP complainant under its marks).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <abvie-vip.com> domain name, which we find to be confusingly similar to Complainant’s ABBVIE mark, is an effort by Respondent to profit from the confusion thus caused among internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this is proof of Respondent’s bad faith in registering and using the domain name. See, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017), finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where:
Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse [Internet] users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.
We are also convinced by the evidence that Respondent’s use of the disputed domain name, as detailed in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this too demonstrates Respondent’s bad faith in registering and using it. See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
Respondent is appropriating Complainant’s mark [in a confusingly similar domain name] to divert Complainant’s customers to Respondent’s competing [online] business. The Panel finds this diversion is evidence of bad faith registration and use [of the domain name] pursuant to Policy ¶ 4(b)(iii).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the ABBVIE mark when it registered the <abvie-vip.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, G.D. Searle & Co. v. Pelham, FA 117911 (Forum September 19, 2002):
[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the … mark [when Respondent registered a confusingly similar domain name] because Respondent is using the … mark [in the domain name] as a means to sell prescription drugs, including Complainant’s … [trademarked] … drug.
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <abvie-vip.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2021
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