Abbott Diabetes Care Inc. v. Polyakov Andrey
Claim Number: FA2209002011179
Complainant is Abbott Diabetes Care Inc. (“Complainant”), represented by Kim Boyle of Richard Law Group, Inc., Texas, USA. Respondent is Polyakov Andrey (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freestylelibre2free.com> and <freestyle-libre-2.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on September 7, 2022; Forum received payment on September 7, 2022.
On September 7, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <freestylelibre2free.com> and <freestyle-libre-2.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 8, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@freestylelibre2free.com, postmaster@freestyle-libre-2.com. Also on September 8, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 7, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant contends as follows:
Complainant, Abbott Diabetes Care Inc., offers diabetes management products and services.
Complainant has rights in the FREESTYLE LIBRE mark through its registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <freestylelibre2free.com> and <freestyle-libre-2.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the entire mark while adding the generic term “free”, along with the number “2”, hyphens, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <freestylelibre2free.com> and <freestyle-libre-2.com> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its FREESTYLE LIBRE mark in the at-issue domain names. Respondent does not use the domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead attracts users to its website in order to promote competing services.
Respondent registered and uses the <freestylelibre2free.com> and <freestyle-libre-2.com> domain names in bad faith. Respondent uses the domain names to disrupt Complainant’s business. Respondent had knowledge of Complainant’s trademark at the time it registered the at-issue domain name. Additionally, Respondent creates confusion among users for commercial gain. Finally, Respondent used of a privacy shield to hide its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FREESTYLE LIBRE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the FREESTYLE LIBRE trademark.
Respondent used the at-issue domain name to address a website dressed to appear as being sponsored by Complainant where it promoted goods that compete with Complainant’s product offering.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for FREESTYLE LIBRE, as well as any of its other national trademark registration for such mark, establishes Complainant’s rights in FREESTYLE LIBRE for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also, Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
The at-issue domain names each contain Complainant’s FREESTYLE LIBRE trademark less its domain name impermissible space, followed by the term “2free” or “-2.” In one domain name the mark’s space is replaced by an insignificant hyphen. Both domain names conclude with the “.com” top level domain name. The differences between the domain names and Complainant’s trademark are insufficient to distinguish either domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <freestylelibre2free.com> and <freestyle-libre-2.com> domain name are each confusingly similar to Complainant’s FREESTYLE LIBRE trademark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “Polyakov Andrey” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either of the domain names or by Complainant’s FREESTYLE LIBRE trademark. The Panel therefore concludes that Respondent is not commonly known by either at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent used the confusingly similar domain names to address a website(s) that pretended to be sponsored by Complainant. Such websites were adorned with a FREESTYLE LIBRE name and logo that is identical or very similar to the official FREESTYLE LIBRE name and logo. The sites contained what appear to be FREESTYLE LIBRE products, purported but apparently inactive links to the FREESTYLE LIBRE app, images that are identical or very similar to those shown on the official FREESTYLE LIBRE site and feigned being fan sites. The websites appeared to offer the products of Complainant’s competition. Respondent’s use of the confusingly similar domain names in this manner indicates 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). See 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s at-issue domain names domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each of the domain names.
First, Respondent used its confusingly similar domain names to address webpages designed to appear as if they were sponsored by Complainant while actually promoting Complainant’s competitors. Doing so shows Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(b)(iii) and (b)(iv). See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also, Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in FREESTYLE LIBRE. Respondent’s prior knowledge is shown by the notoriety of Complainant’s FREESTYLE LIBRE mark and by Respondent’s incorporation of such mark into multiple domain names as well as by Respondent’s use of the domain names to pass itself off as Complainant as discussed herein. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freestylelibre2free.com> and<freestyle-libre-2.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 10, 2022
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