AbbVie, Inc. v. Carolina Rodrigues
Claim Number: FA2305002046377
Complainant is AbbVie, Inc. (“Complainant”), represented by Kim Boyle of Richard Law Group, Inc., Texas, USA. Respondent is Carolina Rodrigues (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allerganadantage.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on May 29, 2023; Forum received payment on May 29, 2023.
On May 30, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <allerganadantage.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 June 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@allerganadantage.com. Also on June 7, 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 July 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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
The Complainant is the parent company of Allergan which is a pharmaceutical company that markets products including but not limited to Botox. Complainant asserts rights to the ALLERGAN trademarks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,596,709 registered on March 24, 2009). Respondent’s <allerganadantage.com> domain name is confusingly similar to Complainant’s ALLERGAN trademark as it misspells the trademark, removing the “v” from “advantage”, and adds the generic top-level domain “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <allerganadantage.com> domain name. Respondent is not licensed or authorized to use Complainant’s ALLERGAN trademark 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. Instead, Respondent uses the disputed domain name to host pay-per-click hyperlinks to third party websites. Moreover, Respondent makes no demonstrable preparations to use the disputed domain name as it resolves to an inactive website.
Respondent registered and uses the <allerganadantage.com> domain name in bad faith. Respondent registered and uses the disputed domain name to host pay-per-click hyperlinks to third party websites. Additionally, Respondent’s use of a privacy shield in registering the disputed domain name shows bad faith registration and use. Furthermore, Respondent’s inactive holding of the disputed domain name shows bad faith registration and use. Moreover, Respondent’s registration and use of the disputed domain name constitutes typosquatting. Finally, Respondent registered and uses the disputed domain name with actual knowledge of Complainant’s rights in the ALLERGAN trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant’s Additional Submission
On July 13, 2023, the Panelist, referring to paragraph 3(b)(viii) and 10 (d) of the Rules, ordered Additional Submissions from the Complainant, to clarify the connection between the Complainant and the referred trademarks, noting that the said trademarks are officially registered in the name of another company (Allergan Inc). On July 13, 2023, the Complainant filed an Additional Submission, namely the Complainant’s 2020 Annual Report showing that the registered trademark owner Allergan Inc is a subsidiary to the Complainant. Based on this supplemental documentation, the Panelist will accept, and generally refer to, the referred trademarks as duly connected to and owned by the Complainant.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,596,709 ALLERGAN (word), registered March 24, 2009 for goods and services in Intl Classes 5, 10, 41 and 44; and
No. 6,639,822 ALLERGAN ADVANTAGE (word), registered February 8, 2022 for services in Intl Classes 35, 41 and 44.
The disputed domain name <allerganadantage.com> was registered on May 13, 2022.
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 ALLERGAN trademarks based upon the Complainant’s subsidiary’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,596,709 registered on March 24, 2009). Registration of a trademark with the USPTO is generally sufficient in demonstrating rights in the trademark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant has registered its trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <allerganadantage.com> domain name is confusingly similar to Complainant’s ALLERGAN trademark. The misspelling of a trademark and the addition of a gTLD is insufficient to distinguish a disputed domain name from a complainant’s trademark under Policy ¶ 4(a)(i). See also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The disputed domain name misspells the trademark, removing the “v” from “advantage”, and adds the generic top-level domain “.com” to form the disputed domain name. Therefore, the Panel find that the disputed domain name is confusingly similar to the ALLERGAN trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent does not have rights or legitimate interests in the <allerganadantage.com> domain name as Respondent is not licensed or authorized to use Complainant’s ALLERGAN trademark and is not commonly known by the disputed 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 trademark 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”. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent is offering the <allerganadantage.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)). Here, Complainant provides a screenshot of the WHOIS record for the disputed domain name which shows that the domain name is for sale. See Compl. Thus, the Panel find that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).
Furthermore, Complainant asserts that Respondent does not use the <allerganadantage.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, instead, Respondent uses the disputed domain name to host pay-per-click hyperlinks to third party websites. The use of a disputed domain name to host unrelated hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). In support, Complainant offers a printout of the disputed domain name’s resolving website from May 29, 2023 which resolves to a parked page displaying links to unrelated third party sites. The Panel agrees with the Complainant’s conclusion, and find 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).
Moreover, Complainant contends that Respondent makes no demonstrable preparations to use the <allerganadantage.com> 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). Here, Complainant offers a screenshot of the disputed domain name’s resolving website as of June 6, 2023 which does not resolve to an active webpage. Thus, the Panel find 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).
Complainant argues Respondent registered and uses the <allerganadantage.com> domain name in bad faith as Respondent registered and uses the disputed domain name to host pay-per-click hyperlinks to third party websites. The use of a disputed domain name to host pay-per-click hyperlinks unrelated to a complainant’s business suggests bad faith registration and use under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). As support, Complainant provides a printout of the disputed domain name’s resolving website from May 29, 2023 which resolves to a parked page displaying links to unrelated third party sites. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant claims that Respondent’s use of a privacy shield in registering the <allerganadantage.com> domain name shows bad faith registration and use. The use of a privacy service when registering a disputed domain name raises a rebuttable presumption of bad faith registration and use. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant points to the disputed domain name’s WHOIS Information which lists the registrant as ”REACTIVATION PERIOD/Withheld for Privacy Purposes”. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Furthermore, Complainant contends that Respondent’s inactive holding of the <allerganadantage.com> domain name shows bad faith registration and use. Using a domain name to resolve to an inactive website may indicate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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.”). In support, Complainant offers a screenshot of the disputed domain name’s resolving website as of June 6, 2023 which does not resolve to an active webpage. Based on that, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Moreover, Complainant asserts that Respondent’s registration and use of the <allerganadantage.com> domain name constitutes typosquatting. The act of typosquatting is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Complainant points to the misspelled version of its trademark in the disputed domain name. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered and uses the <allerganadantage.com> domain name with actual knowledge of Complainant’s rights in the ALLERGAN trademark. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as 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).”) In support, Complainant points to the confusing similarity between Complainant’s trademark and the disputed domain name, and the use of Complainant’s ALLERGAN trademark in the disputed domain name. Based on the said evidence, the Panel find it löikely that the Respondent did have actual knowledge of Complainant’s right in its trademark, which further support finding of bad faith under 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 <allerganadantage.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 18, 2023
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