DECISION

 

AbbVie, Inc. v. MALAY PATHAK / ABBVIE INDUSTRIES

Claim Number: FA2309002063048

 

PARTIES

Complainant is AbbVie, Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is MALAY PATHAK / ABBVIE INDUSTRIES ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <abbvieindustries.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Lars Karnøe as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 23, 2023; Forum received payment on September 23, 2023.

 

On September 25, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <abbvieindustries.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 September 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@abbvieindustries.com. Also on September 26, 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.

 

A timely Response was received and determined to be complete on October 16, 2023.

 

On October 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lars Karnøe 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

I.        IDENTICAL OR CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶ 4(a)(i)):

 

The disputed domain name is confusingly similar to Complainant's ABBVIE trademark. It includes the ABBVIE trademark in its entirety, merely adding the generic or descriptive term "industries" along with the most common gTLD, ".com." 

 

This is not sufficient to distinguish the domain name from the ABBVIE trademark. Robert Half International Inc. v. Jayce Burns.RobertHalf FA 2057227 (Forum Sept. 13, 2023) (finding the addition of the generic word "industries" to the Robert Half trademark added no distinguishing characteristics and was confusingly similar to the trademark); See Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico FA 2026276 (Forum Feb. 26, 2023) (finding the addition of the generic term "service" to the disputed domain name did not distinguish the domain name from the trademark); Snap, Inc. v. Mohamed Med FA 2051139) (Forum July 31, 2023) (finding the addition of the generic term "now" to the disputed domain name did not distinguish it from the trademark); See also AbbVie, Inc. v. See PrivacyGuardian.org FA 1991351 (Forum Apr. 28, 2022) (finding <abbvie.cloud> identical to the ABBVIE trademark); AbbVie Inc. v. Season Advertising, S.L. FA 1727071 (Forum June 12, 2017) (finding the addition of the letters "hcv" to ABBVIE was not sufficient to distinguish the disputed domain name from the ABBVIE trademark); AM General LLC v. Amer Habib / atlanta best used cars FA 2031821 (Forum March 22, 2023)(finding <evhumvee.com> confusingly similar to the HUMVEE mark, noting: "Indeed, when a disputed domain name wholly incorporates another's mark, past Panels have found that additional terms or additional letters are insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds "the letters 'btc' and the gTLD .com which do not distinguish the Domain Name from Complainant's mark."); and Abbott Labs v. Whois Svc., FA 1254682 (Forum May 14, 2009) ("the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark").

 

Respondent's domain name is confusingly similar to Complainant's ABBVIE trademark.

 

II.        NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii)):

 

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant's ABBVIE mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

 

According to WHOIS, Respondent' identity is privacy protected. Respondent is not commonly known by Complainant's ABBVIE mark or 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. 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); and Tercent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).

 

Even if Respondent adopted the name AbbVie Industries, due to the fame of the ABBVIE mark, such adoption would be in bad faith as there is no possible legitimate rights Respondent could have in this name. Microsoft Corp. v. Microsoft Corp., FA1105001390322 (Forum June 17, 2011) ("While the WHOIS information states that the domain name registrant is 'Microsoft Corporation,' the Panel is not required to find that Respondent is commonly known by the domain name absent further supporting evidence"); Yoga Works, Inc. v. Arpita, FA0304000155461 (Forum June 17, 2003) (respondent was not commonly known by the disputed domain name for purposes of Policy 4(c)(ii) where respondent presented no "affirmative evidence" that it was commonly known by the disputed name prior to its registration of the domain); and Giant Eagle, Inc. v Giant Eagle / Giant Eagle Inc, FA1410001586562 (Forum Dec. 6, 2014) (declining to find that respondent was commonly known as Giant Eagle where "there is no evidence of any outside association between Respondent and the 'Giant Eagle Inc' name beyond Respondent's own self-serving association").

 

The disputed domain resolves to a site that prominently displays the ABBVIE mark to advertise and promote Respondent's own business of agrochemicals and fertilizers, animal feed micronutrients, oil and gas chemicals and industrial chemicals.

 

Respondent has taken the ABBVIE trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site. The use of a domain name that is confusingly similar to Complainant's famous trademark to attract consumers to Respondent's own website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). AbbVie Inc. v. Domain Registrar/Proxy Name Services LLC FA 2049338 (Forum July 12, 2023) (finding the use of the domain name <abbvieperkspot.com> to attract Internet business to Respondent's website where it conducts business wholly unrelated to Complainant was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)); Greyhound Lines, Inc. v. Ambiance Transportation, FA 1354319 (Forum November 6, 2010)(finding use of the domain name <greyhoundflorida.com> to attract consumers to Respondent's own commercial website was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)); Microsoft Corporation v. OzGrid Business Applications, FA 314308 (Forum, October 6, 2004). See also Nike, Inc. v. Dias, FA 135016 (Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant's mark without authorization to attract Internet users to its website).

 

Attempting to pass oneself off as a trademark holder is also not a legitimate use. See Greyhound Lines, Inc. v. Ambiance Transportation, FA 1354319 (Forum November 6, 2010)(finding the use of the GREYHOUND Mark and Greyhound Logo was an attempt to pass itself off as Complainant which indicated that Respondent lacked rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii); and Crow v. LOVEARTH.net, FA203208 (Forum Nov. 28, 2003) ("It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant ...").

 

Respondent's use cannot be viewed as a bona fide offering of goods or services since Respondent has taken the ABBVIE mark without authorization in order to misleadingly and deceptively divert Internet users to its own website.

 

It should be noted that other companies manufacture and market both healthcare products as well as agricultural products. See, for instance, Bayer, attached as Exhibit E. Consumers seeing Respondent's website would naturally assume that it is either sponsored by or affiliated with Complainant due to the fame of the ABBVIE trademark.

 

For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.

 

III.        REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN         Policy 4(a)(iii)):

 

Respondent registered the disputed domain name in bad faith. As noted previously, there is no possible use that Respondent could make of this domain name that would not be in bad faith.

 

At the time that the disputed domain name was registered, the ABBVIE mark was already well known or famous, and certainly familiar to countless consumers. It is clear from the website which prominently uses the ABBVIE mark as well as the fame of the ABBVIE mark that Respondent was not only familiar with the ABBVIE mark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the ABBVIE mark in order to create an association with Complainant and its services. Respondent's registration, maintenance, and use of the disputed domain name with knowledge of Complainant's rights in its well-known ABBVIE Mark is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Greyhound Lines, Inc. v. Ambiance Transportation, FA 1354319 (Forum November 6, 2010)(finding a reasonable inference that Respondent intended to either disrupt or create confusion in bad faith); Digi Int'l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (holding that "there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively"); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent's registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant's EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).

 

Respondent's purposeful selection, maintenance, and use of a domain name incorporating the ABBVIE Mark in connection with a site that prominently uses Complainant's ABBVIE mark shows intent to mislead or confuse consumers as to the source or affiliation of its website. See Greyhound Lines, Inc. v. Ambiance Transportation, FA 1354319 (Forum November 6, 2010)(finding that misappropriation of Complainant's mark and logo designed to create confusion among Internet users for Respondent's own financial benefit demonstrates that Respondent registered and is using the disputed domain name in bad faith for the purposes of Policy ¶ 4(b)(iv); Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); and MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant's website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

As noted by the panel in AbbVie Inc. v. Domain Registrar/Proxy Name Services LLC FA 2049338 (Forum July 12, 2023):

 

"It is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. Complainant's mark is unique and whimsical in nature, it is a coined term which has no meaning except for its association with Complainant. It would not normally be chosen by another person for inclusion in a domain name for any purpose other than to target Complainant. This may not fit within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Next, although not argued in so many words by Complainant, Respondent registered and is using the Domain Name, which incorporates and is confusingly similar to the ABBVIE mark, but Respondent has no legitimate connection with that mark or its owner, the Complainant. In light of the nonexclusive nature of Policy ¶ 4(b), the use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) ("[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue."), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum March 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith."). "

 

Finally, WHOIS information for the disputed domain is privacy shielded. The use of a privacy shield also reflects bad faith. Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Forum May 6, 2013) ("Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith.").

 

Based on the foregoing, Respondent has registered the disputed domain name in bad faith.

 

B. Respondent

 

Respondent has thoroughly reviewed the documents and understands the gravity of the concerns raised by Complainant. In response to the issues presented, the Respondent has removed data from the disputed domain name. The website at the disputed domain name has been made currently inactive.

 

FINDINGS

AbbVie Inc. ("AbbVie") is the result of a separation from Abbott Laboratories ("Abbott") into two independent companies, Abbott and AbbVie. Complainant is a specialty-focused research-based biopharmaceutical company that employs approximately 50,000 persons worldwide in over 70 countries, and the company has well over $45 billion in annual revenues.

 

Complainant is the owner of the ABBVIE trademark, which is registered in many countries around the world for a variety of medical services, research and development, as well as a variety of pharmaceutical preparations and substances. The ABBVIE mark is also registered in India where Respondent resides.

 

Complainant's registrations for the ABBVIE mark were applied for and issued well before the registration date for the disputed domain name on June 14, 2022.

 

Due to extensive use, promotion, and commercial success, the ABBVIE mark has become famous and is well-known. Prior ICANN panelists have found that the ABBVIE mark is well-known and famous. See AbbVie Inc. v. Domain Administrator/Fundacion Privacy Services LTD FA 2048599 (Forum July 16, 2023) (referring to the ABBVIE trademark as famous); AbbVie Inc. v. Oliver Scott FA 2047328 (Forum July 10, 2023) referring to the ABBVIE trademark as famous); AbbVie Inc. v. Dacquan Reid FA 2033861 (Forum March 30, 2023 (referring to the ABBVIE trademark as famous); AbbVie Inc. v. Info Nextfloors FA 2032494 (Forum March 21, 2023) ("Due to extensive use, promotion and commercial success, the ABBVIE mark has become famous and is well-known to consumers."); AbbVie Inc. v. Hua De Wang FA 2014459 (Nov. 3, 2022) (referencing the ABBVIE mark as famous); AbbVie Inc. v. Super Dynadot FA 2005792 (Aug. 12, 2022) (finding the ABBVIE mark was famous); AbbVie Inc. v. Martin Devos / Cable Interactive Technologies FA 1966949 (Forum, Oct. 28, 2021 (finding the ABBVIE mark to be famous); AbbVie, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico FA 1837944 (Forum May 6, 2019) (the Panel agreed that the AbbVie mark is unique and well-known); AbbVie, Inc. v. AbbVie, FA 1773787 (Forum Mar. 28, 2018) ("the Panel finds that Complainant's ABBVIE mark is famous"); AbbVie Inc. v. Season Adver. S.L., FA 1727071 (Forum June 12, 2017) (recognizing "the fame of Complainant's [ABBVIE] mark" after finding that "Complainant's marks have created significant good will and consumer recognition around the world").

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

 

It is well established that the specific top level of a domain name such as ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Neither does the mere addition of generic terms like in this case "industries". Therefore, the Domain Names are confusingly similar to the Complainant's trademark ABBVIE.

 

Rights or Legitimate Interests

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Names (within the meaning of paragraph 4(a)(ii) of the Policy).

 

The Complainant contends that the Respondent is not affiliated with him nor authorized by him in any way to use his trademarks in a domain name or on a website. The Complainant does not carry out any activity for, nor has any business with the Respondent.

 

Registration and Use in Bad Faith

The Complainant has, to the satisfaction of the Panel, shown the Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

 

Given the circumstances of the case, including the provided information of the use and reputation of the Complainant's trademark ABBVIE and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the Domain Name without prior knowledge of the Complainant and the Complainant's mark.

 

The Panel therefore finds that the Domain Name was registered in bad faith.

 

The Domain Name at the time of the Complaint resolved to an active website promoting goods similar to goods provided by Complainant. Notwithstanding whether the contents of the website have been fully or temporarily removed by Respondent, the Panel finds it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law. The Panel finds that the mere registration of a domain name that is identical or confusingly similar to a well-known or widely known trademark by an unaffiliated entity is sufficient to create a presumption of bad faith. The Panel finds that the Respondent has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with Complainant's mark as to Complainant as a source, sponsor, affiliate or endorser of Respondent's website.

 

Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <abbvieindustries.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Lars Karnøe, Panelist

Dated: October 30, 2023