URS DEFAULT DETERMINATION


AbbVie Inc. v. Super Dynadot
Claim Number: FA2207002005792


DOMAIN NAME

<abbviechat.xyz>


PARTIES


   Complainant: AbbVie Inc. of Chicago, IL, United States of America
  
Complainant Representative: Richard Law Group, Inc. Kim Boyle of Dallas, TX, USA

   Respondent: Super Privacy Service LTD c/o Dynadot of San Mateo, CA, US
  

REGISTRIES and REGISTRARS


   Registries: XYZ.COM LLC
   Registrars: DYNADOT LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: July 26, 2022
   Commencement: July 27, 2022
   Default Date: August 11, 2022
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <abbviechat.xyz>. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain <abbviechat.xyz>. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: AbbVie is a specialty-focused research-based biopharmaceutical company that employs approximately 48,000 persons worldwide in over 70 countries, and the company has well over $45 billion in annual revenues. AbbVie owns the ABBVIE trademark, which is registered in many countries around the world for a variety of medical services, research and development, and pharmaceutical preparations and substances. Complainant’s registrations for the ABBVIE mark were applied for and issued before the registration date for the disputed domain name on July 13, 2022. Due to extensive use, promotion, and commercial success, the ABBVIE mark has become well-known to consumers, and the ABBVIE brand is ranked as No. 8 on the Pharmaceutical Executive “Top 50 Companies 2020”. The disputed domain name contains the name of Complainant / the ABBVIE trademark, with the additional English language generic or descriptive term “chat.” Adding generic or descriptive terms like “chat” to ABBVIE does not avoid confusing similarity. Registrant's domain name is confusingly similar to Complainant’s ABBVIE trademark. Registrant has no rights or legitimate interests in the disputed domain name. Registrant is not commonly known by Complainant’s ABBVIE trademark, nor has Registrant used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. WHOIS does not identify Registrant, and Registrant's email is identified as "REDACTED FOR PRIVACY". Registrant is not affiliated with Complainant in any way. Registrant is not licensed by Complainant to use the ABBVIE trademark, nor is Registrant an authorized vendor, supplier, or distributor of Complainant’s goods and services. The website for begins with a landing page that contains a replication of the ABBVIE logo and the ABBVIE logo is used throughout the site, which appears to be for a messaging/chat platform, ostensibly related to medical advice, given the references to a "COVID-19 chat room" and imagery of what appear to be medical professionals. There is also a login page with the ABBVIE logo. Registrant’s imitation of an official website of Complainant, use of the ABBVIE logo and offering services in the same medical category in which Complainant operates and uses its ABBVIE trademark, is calculated and likely to confuse and mislead the public as to the source of Registrant's site and constitutes passing off. This is not a fair, nominative or otherwise legitimate use. Registrant registered the disputed domain name in bad faith. At the time Registrant registered the disputed domain name, Complainant’s ABBVIE mark was registered and famous. Given that Registrant’s website displays Complainant’s logo and offers products for sale in the medical services category thereby imitating an official website of Complainant, it is clear that Registrant registered the disputed domain name with knowledge of Complainant’s rights. Registrant’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use. By using Complainant’s logo and imitating an official website of Complainant Registrant creates the false impression of a site that originates with or is sponsored by Complainant.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant has proved by documentary evidence that they are the registered owner of trademark “ABBVIE". As noted, the disputed domain name <abbviechat.xyz> composes “ABBVIE”, “CHAT”, and “.XYZ”. The word “ABBVIE” in disputed domain name is identical to Complainant’s registered mark “ABBVIE”. The ‘CHAT” and “.XYZ” in disputed domain name, being a generic code Top-Level Domain name (gTLD), is suffix which are non-distinctive and are incapable of differentiating the disputed domain name from the Complainant’s registered trademark. Merely adding a suffix to a popular trademark cannot be the basis of a new trademark. Based on the “ABBVIE” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns registered mark “ABBVIE”. The Complainant’s adoption and first use of the registered trademark is for quite some time. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest over the disputed domain name. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


It is the specific case of the Complainant that the Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating “ABBVIE”. According to the Complainant, the website for begins with a landing page that contains a replication of the ABBVIE logo and the ABBVIE logo is used throughout the site, which appears to be for a messaging/chat platform, ostensibly related to medical advice, given the references to a "COVID-19 chat room" and imagery of what appear to be medical professionals; there is also a login page with the ABBVIE logo; and Registrant’s imitation of an official website of Complainant, use of the ABBVIE logo and offering services in the same medical category in which Complainant operates and uses its ABBVIE trademark, is calculated and likely to confuse and mislead the public as to the source of Registrant's site and constitutes passing off. Thus, the Panel Examiner is of the firm view that Registrant registered the disputed domain name in bad faith. It is well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant’s prior rights in the “ABBVIE” registered mark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant’s “ABBVIE” pre-existing trademark rights; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark and (v) the Registrant registered the disputed domain name in bad faith. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus, the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and are being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. abbviechat.xyz

 

Saravanan Dhandapani
Examiner
Dated: August 12, 2022

 

 

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