AbbVie, Inc. v. Info Nextfloors
Claim Number: FA2302002032484
Complainant is AbbVie, Inc. (“Complainant”), USA, represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Info Nextfloors (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbvi-e.com>, registered with Wild West Domains, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 17, 2023; Forum received payment on February 17, 2023.
On February 20, 2023, Wild West Domains, LLC confirmed by e-mail to Forum that the <abbvi-e.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 February 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2023 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@abbvi-e.com. Also on February 20, 2023, 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 March 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a specialty-focused research-based biopharmaceutical company that employs approximately 48,000 persons worldwide in over 70 countries. Complainant has rights in the ABBVIE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered May 21, 2013). The disputed domain name is identical or confusingly similar to Complainant’s mark because it includes the ABBVIE trademark in its entirety, merely adding a hyphen between the “i” and the “e” as well as adding the most common generic top-level domain (“gTLD”) “.com”.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Respondent is conducting a phishing scheme. Also, the disputed domain name does not resolve to an active webpage.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent is engaging in a phishing scheme. Additionally, Respondent fails to actively use the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on December 14, 2022.
2. Complainant has established rights in the ABBVIE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered May 21, 2013).
3. The disputed domain name remains inactive.
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 claims rights in the ABBVIE mark (e.g., Reg. No. 4,340,091, registered May 21, 2013) based upon registration with the USPTO. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy 4(a)(i). Since Complainant provides evidence of the trademark registration, the Panel finds that Complainant has established rights in the ABBVIE mark per Policy ¶ 4(a)(i)
Complainant asserts the disputed domain name <abbvi-e.com> is identical or confusingly similar to Complainant’s ABBVIE mark because the disputed domain incorporates the ABBVIE trademark in its entirety, merely adding a hyphen between the “i” and the “e” as well as adding the “.com” gTLD. The addition of a hyphen as well as a gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends Respondent is not commonly known by the disputed domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The registrant of the disputed domain name is listed as “Info Nextfloors.” The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because Respondent is not actively using the disputed domain name for any legitimate purpose and the disputed domain name does not resolve to an active webpage. Failure to make an active use of a website does not represent a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides screenshot evidence of the resolving website. The Panel therefore finds Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant asserts Respondent registered and uses the disputed domain name in bad faith. Respondent fails to make an active use of the disputed domain name. As previously noted, Complainant provides screenshot evidence of the disputed domain name’s resolving website. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is 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. Due to extensive use, promotion, and commercial success, the ABBVIE mark has become famous and is well-known to consumers. Prior ICANN panelists have found that the ABBVIE mark is well-known and famous;
ii) Respondent has set up an MX record to send and receive emails in association with the disputed domain name, which could be used for phishing; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abbvi-e.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 21, 2023
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