AbbVie Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2303002036506
Complainant is AbbVie Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbviespeakerprogram.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on March 20, 2023; Forum received payment on March 20, 2023.
On March 21, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <abbviespeakerprogram.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@abbviespeakerprogram.com. Also on March 21, 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.
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
Complainant, AbbVie, Inc., is a specialty-focused research-based biopharmaceutical company. Complainant asserts rights to the ABBVIE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered on May 21, 2013) and other trademark registration agencies worldwide. Respondent’s <abbviespeakerprogram.com> domain name is confusingly similar to Complainant’s ABBVIE mark as it contains the mark in its entirety, merely adding the generic terms “speaker” and “program”, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <abbviespeakerprogram.com> domain name. Respondent is not licensed or authorized to use Complainant’s ABBVIE mark and is not commonly known by the disputed domain name. Additionally, Respondent is offering the disputed domain name for sale. Furthermore, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent makes no demonstrable preparations to use the disputed domain name as it resolves to an inactive website.
Respondent registered and uses the <abbviespeakerprogram.com> domain name in bad faith. Respondent registered the disputed domain name with the intent to sell. Additionally, Respondent has shown a pattern of bad faith through prior UDRP cases. Furthermore, Respondent’s inactive holding of the disputed domain name shows bad faith registration and use. Finally, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the ABBVIE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <abbviespeakerprogram.com> domain name.
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 asserts rights to the ABBVIE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,340,091, registered on May 21, 2013) and other trademark registration agencies worldwide. Registration of a mark with multiple trademark agencies is considered a valid showing of rights under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); 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.”). Complainant has provided evidence of registration of the ABBVIE mark with the USPTO and other agencies around the world. The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <abbviespeakerprogram.com> domain name is confusingly similar to Complainant’s ABBVIE mark. The addition of a generic term and a gTLD does not sufficiently differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The disputed domain name contains the mark in its entirety, merely adding the generic terms “speaker” and “program”, and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the ABBVIE mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent does not have rights or legitimate interests in the <abbviespeakerprogram.com> domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico”. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s ABBVIE mark. The Panel finds that find Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is offering the <abbviespeakerprogram.com> domain name for sale. The use of a disputed domain name to offer that domain name for sale is indicative of a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)); see also Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant offers screenshots of the disputed domain name being offered for sale. This is evidence that Respondent lacks rights or legitimate interests in respect of the domain name.
Complainant claims that Respondent does not use the <abbviespeakerprogram.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent makes no demonstrable preparations to use the disputed domain name as it resolves to an inactive website. The failure to make demonstrable preparations to use a disputed domain name is evidence of a lack of 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)). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Complainant offers a screenshot of the disputed domain name’s resolving website, showing that it does not resolve to an active website The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends Respondent registered and uses the <abbviespeakerprogram.com> domain name in bad faith as Respondent registered the disputed domain name with the intent to sell. A general offer to sell a disputed domain name can be evidence that a respondent intended to make such an offer at the time it registered the name which supports a finding of bad faith pursuant to Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant offers screenshots of the disputed domain name being offered for sale. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant asserts Respondent has shown a pattern of bad faith through prior UDRP cases. A respondent’s past conduct as a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names establishes a pattern of bad faith, which is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant.” A search of Forum’s decisions at http://www.adrforum.com/SearchDecisions, for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer (one was denied and one was withdrawn). Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(ii)”); see also Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant asserts that Respondent is a named respondent in over 200 domain name disputes. See e.g. Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico FA 2026276 (Forum Feb. 26, 2023 This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant claims Respondent’s inactive holding of the <abbviespeakerprogram.com> domain name shows bad faith registration and use. The registration and use of a disputed domain name, where the domain resolves to an inactive website indicates bad faith registration and use under Policy ¶ 4(a)(iii). Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”); see also CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). As support, Complainant offers a screenshot of the disputed domain name’s resolving website which shows that it does not resolve to an active website. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <abbviespeakerprogram.com> domain name with actual knowledge of Complainant’s rights in the ABBVIE mark. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). In support, Complainant points to the confusing similarity between Complainant’s mark and the disputed domain name, and the use of Complainant’s ABBVIE mark in the disputed domain name. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <abbviespeakerprogram.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
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