DECISION

 

AbbVie, Inc. v. Jonathan Littlewood

Claim Number: FA2309002064206

 

PARTIES

Complainant is AbbVie, Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Jonathan Littlewood ("Respondent"), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <juvedermofficial.co>, registered with NameCheap, Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 29, 2023; Forum received payment on September 29, 2023.

 

On September 29, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <juvedermofficial.co> 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 October 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@juvedermofficial.co. Also on October 2, 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 October 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, AbbVie 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 $58 billion in annual revenues.

 

Complainant has rights in the JUVÉDERM mark through its registration in countries around the world.

 

Respondent's <juvedermofficial.co> domain name is confusingly similar or identical to the JUVÉDERM mark, differing only through the addition of the generic term "official" and the ".co" generic top-level domain.

 

Respondent lacks rights or legitimate interests in the <juvedermofficial.co> domain name. Respondent is not commonly known by the at-issue domain name, nor did Complainant authorize or license Respondent's use of the JUVÉDERM mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the at-issue domain name. Instead, Respondent uses the domain name to mimic Complainant's genuine website.

 

Respondent registered and uses the <juvedermofficial.co> domain name in bad faith. Respondent uses the domain name to pass off as Complainant and mimic Complainant genuine website. Respondent employed a privacy shield in registering the at-issue domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in JUVÉDERM.

 

Respondent is not affiliated with Complainant and is not authorized to use Complainant's trademarks in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in JUVÉDERM.

 

Respondent uses the at-issue domain name to address a website that falsely appears to be the official JUVÉDERM site.

 

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.

 

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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has rights in a mark by its registration of JUVÉDERM with multiple national registrars as Complainant's registration of JUVÉDERM with any legitimate trademark registrar demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i)."); see also, Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, [here] the United States Patent and Trademark Office ("USPTO").").

 

Respondent's <juvedermofficial.co> domain name contains Complainant's JUVÉDERM trademark followed by the generic term "official" with all followed by the ".co" top-level domain name. The difference between Complainant's trademark and the at-issue domain name does not distinguish the domain name from Complainant's mark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's <juvedermofficial.co> domain name is confusingly similar to Complainant's JUVÉDERM trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable 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.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <juvedermofficial.co> shows that "Johnathan Littlewood" is the domain name's registrant and there is no evidence in the record indicating that Respondent is otherwise known by <juvedermofficial.co>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the at-issue domain name to address a website that gives the appearance of being Complainant's genuine JUVÉDERM website. Respondent's use of <juvedermofficial.co> to poses as Complainant is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business).

 

Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.

 

Respondent's at-issue domain name addresses Respondent's <juvedermofficial.co> website. The website, calling itself the Official Juvederm site, mimics Complainant's genuine website and is used to assist Complainant in passing off as Complainant to deceive internet users into falsely believing that the domain name and its referenced website are sponsored by Complainant. Respondent's use <juvedermofficial.co> is disruptive to Complainant's business and designed to attract internet users so that Respondent may capitalize on the confusion Respondent created between its <juvedermofficial.co> domain name and Complainant's JUVÉDERM trademark. Respondent's use of the <juvedermofficial.co> domain name and its addressed website demonstrates Respondent's bad faith registration and use of <juvedermofficial.co> under Policy ¶ 4(b)(iii) and  Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent's registration and use of the at-issue domain name, which displayed a website virtually identical to the complainant's website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the JUVÉDERM mark when Respondent registered <juvedermofficial.co> as a domain name. Respondent's actual knowledge is evident given the mark's notoriety and given Respondent's use of the domain name to pass itself off as Complainant via a website pretending to be Complainant's genuine JUVÉDERM website. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name);

 

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 <juvedermofficial.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 25, 2023