AbbVie Inc. v. Zeddicus Zedd
Claim Number: FA2207002005023
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Zeddicus Zedd (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbivve.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 July 20, 2022; the Forum received payment on July 20, 2022.
On July 21, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <abbivve.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2022 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@abbivve.com. Also on July 22, 2022, 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 August 13, 2022, 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 claims rights in the ABBVIE, trademark, established by its ownership of its international portfolio of trademark and service mark registrations described below and its extensive use of the mark in its business as a specialty-focused research-based biopharmaceutical company, created as result separation of Abbott Laboratories into two independent companies.
Complainant claims a substantial reputation and goodwill in the ABBVIE mark as it employs approximately 48,000 persons worldwide in over 70 countries, has in excess of $45 billion in annual revenues and maintains its principal website at <www.abbvie.com>.
Complainant alleges that the disputed domain name <abbivve.com> is confusingly similar to its ABBVIE mark as it consists of a misspelled version of the mark in combination with the most common generic Top Level Domain (“gTLD”) extension <.com>.
Complainant submits that the misspelling of its trademark is it is not sufficient to distinguish the disputed domain name from Complainant’s mark. See 3M Co. v. Domain Registries Foundation c/o Domain Admin, FA1504001614321 (Forum June 7, 2015) (finding the disputed domain <littmanstethascope.com> confusingly similar to complainant’s LITTMANN mark where the respondent had removed the final letter “n” from the mark and added a misspelled version of the term “stethoscope,” which was descriptive of the complainant’s goods).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by Complainant’s ABBVIE mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
According to WHOIS, Respondent is known as “Zeddicus Zedd” and so is not commonly known by Complainant’s ABBVIE mark or affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s ABBVIE mark. Respondent is not 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); and Tercent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain does not resolve to an active website but instead goes to a generic parked page.
However, Respondent has used the disputed domain name in email messages impersonating an employee of Complainant (name supplied but redacted by the Panel) who is a Supply Chain Specialist as well as other employees of the company, trying to obtain funds from a third party. The exhibited email messages are in the Russian language but some of the translations are provided in the exhibit.
Complainant submits that such conduct has been found not to be 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). See AbbVie, Inc. v. Hannah Buege FA 1977248 (Forum Jan. 10, 2022) (finding Respondent’s use of <abbviecareer.com> to impersonate an executive of Complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues additionally, that Respondent is not actively using the disputed domain name for any legitimate purpose and the domain does not resolve to an active website as shown in the screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint. Complainant submits that one does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Fang Wei et al., FA 1272458
Complainant adds that failure to develop a website demonstrates a lack of genuine interest in the domain name. Flor-Jon Films, Inc. v. Larson, FA 94974
Additionally, Complainant submits that Respondent’s failure to use the disputed domain name is also indicative of bad faith. Respondent’s nonuse of the confusingly similar domain name suggests its bad faith under Policy ¶ 4(a)(iii). See AbbVie, Inc. v. AbbVie, FA 1773787 (Forum Mar. 28, 2018) (finding the Respondent’s passive holding of <abbvie-jp.com> constituted bad faith under the Policy); Microsoft Corporation v. zaberis, FA 1631367 (Forum Sept. 2, 2015) (finding that the passive holding of the domain name combined with Microsoft’s good reputation showed Respondent’s bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on business as a business as a specialty-focused research-based biopharmaceutical company a substantial international portfolio of trademark and service mark registrations for the ABBVIE mark and has provided copy certificates of registration for the following:
· United States registered trademark ABBVIE, registration number 4,344,288, registered on the Principal register on May 28, 2013 for services in international class 42;
· United States registered trademark ABBVIE, REGISTRATION NUMBER 4,358,949, registered on the Principal register on June 25, 2013 for goods in international class 5;
Complainant has an established Internet presence and maintains its principal website <www.abbvie.com>. Complainant’s domain name <abbvie.com> was registered on February 28, 2012.
The disputed domain name <abbivve.com> was registered on June 20, 2022. It does not resolve to any active website, but to a web page which purports to provide links to third party websites. Furthermore, the disputed domain name has been used to establish an email account from which Respondent is sending phishing emails to third parties, impersonating Complainant and its employees.
There is no information available about Respondent, except for that provided in the Complainant and the identification and contact details on the registrar’s WhoIs.
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 provided uncontested evidence to prove that it has rights in the ABBVIE mark, established by its ownership of its portfolio of trademark- and service mark- registrations described above and extensive use of the mark in its business specialty-focused research-based biopharmaceutical company. The disputed domain name <abbivve.com> is a misspelling of Complainant’s mark in its entirety, in combination with the generic Top Level Domain (“gTLD”) extension <.com>.
While the term “abbivve” in the disputed domain name is a misspelling of Complainant’s mark, nonetheless the disputed domain name contains the same letters as the ABBVIE mark and the initial syllable “abb” is identical in each case. Because of the similarity of the mark and the disputed domain name, the misspelling does not prevent a finding that the disputed domain name is confusingly similar to the ABBVIE mark.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s ABBVIE mark.
This Panel finds therefore that the disputed domain name <abbivve.com> is confusingly similar to the ABBVIE mark in which Complainant has rights.
Complainant has therefore 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 legitimate interests in the disputed domain name arguing that
· Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use;
· according to WHOIS, Respondent is known as “Zeddicus Zedd” and so Respondent is not commonly known by Complainant’s ABBVIE mark or the disputed domain name;
· Respondent is not affiliated with Complainant in any way;
· Respondent is not licensed by Complainant to use Complainant’s ABBVIE mark;
· Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services;
· the disputed domain does not resolve to an active website but instead goes to a generic parked page;
· however, copies of email messages in Russian which have been furnished in an annex to the Complaint, with translations into the English language show that Respondent has used the disputed domain name in email messages impersonating a named employee of Complainant, who is a supply chain specialist and other employees within Complainant’s company, in an attempt to obtain funds from a third party;
· Complainant submits that such conduct has been found not to be 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)
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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 Complainant has adduced uncontested evidence that it has acquired a substantial reputation and goodwill in the ABBVIE mark, which appears to be a coined term and has no English language meaning other than as Complainant’s trademark and service mark.
Similarly the disputed domain name <abbivve.com> has no English language meaning and given the circumstances where Respondent has not offered any explanation as to why a domain name that is so similar to Complainant’s mark was chosen and registered, on the balance of probabilities, it is an intentional misspelling of Complainant’s trademark and domain name.
Complainant’s United States registered trademark and service mark described above were both registered in 2013, and Complainant’s domain name <abbvie.com> was registered on February 28, 2012, so the goodwill and reputation of Complainant’s mark and business long pre-existed the registration of the disputed domain name on June 20, 2022.
This Panel finds therefore the disputed domain name was chosen and registered in bad faith to intentionally target and take predatory advantage of Complainant’s goodwill and reputation by confusing Internet users with a domain name which is a misspelling of Complainant’s own domain name which it uses as its website address.
The uncontested evidence which has been adduced in the annexes to the Complaint show that Respondent has used the disputed domain name to impersonate Complainant by sending emails to a third party purportedly coming from one of Complainant’s named employees requesting payment on an overdue account. Complainant denies that the emails were sent by its named employee. Impersonating Complainant for such a purpose constitutes use of the disputed domain name in bad faith.
In making this finding this Panel is fortified by the fact that the disputed domain resolves to a webpage, the only content of which is the wording “related links” and what appear to be links to unrelated fields of activity such as “Property Mgmt Software”, “Lease Management Program”, “Rental Management Properties”, “Company Travel Management”, and “Homeowners Management” and a copyright legend “Copyright 2021 Privacy Policy”.
Such unauthorized use of Complainant’s mark in the disputed domain name, which is confusingly similar to Complainant’s mark, as the address of an inactive website as alleged by Complainant, or to a web page with active links to third party websites, also constitutes use in bad faith for the purposes of the Policy because, on the balance of probabilities Respondent is using Complainant’s reputation and goodwill to attract, confuse and lure Internet traffic away from Complainant’s website.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbivve.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 15, 2022
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