AbbVie Inc. v. Earl Voght
Claim Number: FA2209002012504
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Earl Voght (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aibbvie.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 Forum electronically on September 19, 2022; Forum received payment on September 19, 2022.
On September 20, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <aibbvie.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 September 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@aibbvie.com.
Also on September 20, 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 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgman SC 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.
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s ABBVIE trademark as it is composed of a misspelled version of the trademark in combination with the most common generic Top-Level Domain (“gTLD”) extension <.com>. See AbbVie Inc. v. Zeddicus Zedd FA2207002005023 (FORUM Aug. 15, 2022) (finding <abbivve.com> to be a misspelling of the ABBVIE mark and confusingly similar thereto).
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 as according to the registration information on the WHOIS for the disputed domain name identifies him as “Earl Voght”.
Complainant asserts that Respondent is not affiliated with Complainant in any way, nor is Respondent licensed by Complainant to use Complainant’s ABBVIE mark and adds that 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).
Referring to a screen capture exhibited as evidence in an annex to the Complaint, which shows that the disputed domain name does not resolve to an active website, but generates a message which states that “[t]his site cannot be reached”, Complainant argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. See Microsoft Corporation v. Lang Qing, FA 1447828 (FORUM, July 8, 2012) (finding that the failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant however further refers to copies of redacted email correspondence which is exhibited in an annex to the Complaint. The exhibit shows that emails have been sent from an account which has been established using the disputed domain name, to a third party, purporting to be sent from named employee of Complainant who is engaged as an accounts receivable admin analyst, and it is clear that Respondent is using the disputed domain name in the email address, impersonating Complainant, in order to fraudulently obtain funds from the unsuspecting third party by creating the impression that the emails were sent by Complainant. The identity of the addressee of the emails has been appropriately redacted by Complainant in the exhibited copies.
Complainant submits that such conduct has been found neither to constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See AbbVie Inc. v. Zeddicus Zedd FA2207002005023 (FORUM Aug. 15, 2022) (finding use of the disputed domain name to impersonate an employee of Complainant in an attempt to obtain funds from a third party was not 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 concludes that therefore has Respondent not used the confusingly similar disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Complainant next alleges that Respondent registered the disputed domain name in bad faith as there is no possible use that Respondent could make of this confusingly similar domain name that would not be in bad faith.
The exhibited email correspondence in which Respondent purported to impersonate Complainant’s employee illustrates that Respondent’s actions are disruptive of Complainant’s business. Complainant contends that such conduct has been found to meet the requisite degree of disruption to competition required by Policy ¶ 4(b)(iii) because it is an attempt to compete by invading and expropriating company assets. See AbbVie, Inc. v. Hannah Buege FA 1977248 (FORUM, Jan. 10, 2022) (“Respondent’s use of its <abbviecareer.com> domain name to steal Complainant’s identity and convey fraudulent messages to third parties disrupts Complainant’s business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)”)
Furthermore, Complainant argues that Respondent’s failure to use the disputed domain name is also indicative of bad faith under Policy ¶ 4(a)(iii). See 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 is a specialty-focused research-based biopharmaceutical company and is the owner of a portfolio of trademark registrations including the following:
· United States registered service mark ABBVIE, registration number 4,340,091, registered on the Principal Register on May 21, 2013, for services in international class 44;
· United States registered service mark ABBVIE, registration number 4,344,288, registered on the Principal Register on. May 28, 2013, for goods 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 a website to which its own domain name <abbvie.com>, which was created on February 28, 2012, resolves, on which the ABBVIE mark is used to identify Complainant’s products.
The disputed domain name was registered on September 9, 2022 and does not resolve to an active website but has been used to create an email account from which emails have been sent impersonating Complainant, to an unsuspecting third party purporting have been sent by one of Complainant’s named employees.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs, which states that Respondent is the registrant of the disputed domain name, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name. The Registrar has confirmed that the disputed domain name is registered in the name of Respondent.
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 convincingly 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 by Complainant in its business as an international biopharmaceutical company.
The disputed domain name <aibbvie.com> is composed of a misspelled version of the ABBVIE trademark, with the addition of the letter ‘i” after the first letter in the mark, in combination with the gTLD extension <.com>.
The addition of the letter “i” does not prevent a finding that the disputed domain name is confusingly similar to Complainant’s ABBVIE mark, because the mark is clearly recognizable within the disputed domain name.
In the circumstances of this case, 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 <<aibbvie.com> is confusingly similar to the ABBVIE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by Complainant’s ABBVIE mark;
· according to the registration information on the WHOIS for the disputed domain name, Respondent is known as “Earl Voght” and so is not commonly known by Complainant’s ABBVIE mark;
· 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 screen capture exhibited with the Complaint shows tht the disputed domain name does not resolve to an active website but generates a notice which states that “[t]his site cannot be reached”;
· Respondent does not put the disputed domain name to any active use;
· Respondent has not made any demonstrable preparations to use the disputed domain name 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).”
· the copies of redacted email correspondence which have been exhibited with the Complaint, show that Respondent is using the disputed domain name to impersonate a named employee of Complainant who is employed as an accounts receivable admin analyst. in an effort to fraudulently obtain funds from third parties, which does not constitute either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii);
· the evidence shows 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.
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).
Complainant has adduced uncontested evidence that it has a strong international reputation in the use of the ABBVIE mark established by its ownership and use of its portfolio of trademark and service mark registrations in its biopharmaceutical business including on its website.
The ABBVIE mark is distinctive and, given the extent of Complainant’s prior rights and reputation, it is implausible that the registrant chose and registered the disputed domain name without knowledge of Complainant and its rights, reputation and goodwill in the mark.
The similarity of the disputed domain name and Complainant’s mark also shows that it is most probable that the disputed domain name was chosen and registered to take predatory advantage of Complainant’s mark and goodwill in the ABBVIE mark. by registering a misspelling of the mark in an act of typosquatting.
This Panel finds therefore the disputed domain name was registered in bad faith.
The uncontested evidence is that the disputed domain name does not resolve to an active website but has been used to establish an email account from which Respondent is sending emails, purporting to impersonate an employee of Complainant in an attempt to defraud a third party by requesting payments.
This Panel finds that there is sufficient evidence to prove that on the balance of probabilities Respondent is using the disputed domain name in bad faith given the distinctiveness of the ABBVIE mark to which the disputed domain name is almost identical, the strength of Complaint’s established prior rights in the mark, the probability that the disputed domain name was chosen and registered with Complainant’s mark in mind, that the disputed domain name is intentionally a misspelling of Complainant’s mark, that the registration of the disputed domain name is an exercise in typosquatting, and that Respondent has adduced no evidence whatsoever that it has any rights in the disputed domain name,
However, Complainant has also adduced convincing, uncontested, evidence that the disputed domain name has been fraudulently used to send emails purporting to come from Complainant’s employee in an act of spear phishing, to fraudulently confuse the unsuspecting third-party recipient so that it would make payments to Respondent. This activity is also, in itself, sufficient to establish that the disputed domain name is being used in bad faith and this Panel finds accordingly.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore 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 <aibbvie.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________
James Bridgeman SC
Panelist
Dated: October 17, 2022
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