DECISION

 

AbbVie Inc. v. UDRP Account / PDR Ltd Compliance Team

Claim Number: FA2309002064230

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is UDRP Account / PDR Ltd Compliance Team ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <djsatnibodies.com> ("Domain Name"), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

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.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 30, 2023; Forum received payment on September 30, 2023.

 

On Oct 02, 2023; Oct 06, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <djsatnibodies.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@djsatnibodies.com. Also on October 9, 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 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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, AbbVie Inc. is a research-based biopharmaceutical company that in 2022 acquired DJS Antibodies, Ltd., a United Kingdom biotechnology company that has since 2015 been developing antibody medicines targeting specific proteins. Complainant claims common law rights in the DJS ANTIBODIES mark arising through its use for such research services since 2015 including on Complainant's website at www.djsantibodies.com. Respondent's <djsatnibodies.com> domain name is identical or confusingly similar to Complainant's DJS ANTIBODIES mark as it consists of a minor misspelling of the mark, reversing the order of the "n" and the "t" and adding the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <djsatnibodies.com> Domain Name. Respondent engages in typo squatting. Additionally, Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its DJS ANTIBODIES mark in any way. Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent has failed to make an active use of the Domain Name.

 

Respondent registered and uses the <djsatnibodies.com>domain name in bad faith. Respondent inactively holds the Domain Name. Additionally, Respondent registered the Domain Name with knowledge of Complainant's rights in the DJS ANTIBODIES mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.  

 

For the purpose of clarification, the Domain Name, at the commencement of the proceeding, was registered to an individual known as Hendrix Pluto, however the Domain Name was shortly to expire. The Complainant paid a fee for renewal of the Domain Name in order for it to be active while this proceeding was ongoing, and as an administrative measure, the Domain Name was transferred to an account maintained by the Registrar, being the current Respondent. For the purposes of this proceeding the Panel is treating the named Respondent as, in essence, holding the Domain Name on trust for Hendrix Pluto and all findings of bad faith and lack of rights and legitimate interests are made against Hendrix Pluto and not the Registrar itself.

 

FINDINGS

Complainant holds trademark rights for the DJS ANTIBODIES mark.  The Domain Name is identical to Complainant's DJS ANTIBODIES mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

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

As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the DJS ANTIBODIES mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark.  See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017).  To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning.  See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of "long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning."). 

 

Complainant and its predecessors in title have operated a business under the DJS ANTIBODIES mark since 2015 in connection with research and development of antibody-based medicines.  The Panel is satisfied from Complainant's evidence (including evidence of Complainant's website, length of use, third party reputation and awards and use as a company name) that Complainant's use of the DJS ANTIBODIES mark for its medical research business is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the DJS ANTIBODIES mark for the purposes of Policy ¶ 4(a)(i).

 

The Panel finds that the <djsatnibodies.com> domain name is confusingly similar to Complainant's DJS ANTIBODIES mark as it consists of a minor misspelling of the DJS ANTIBODIES mark (inverting the order of the letters "t" and "n") and adding the ".com" gTLD.  These changes are insufficient to distinguish the Domain Name from the DJS ANTIBODIES mark under Policy ¶ 4(a)(i).  See  Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, "Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate."); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) ("The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the DJS ANTIBODIES mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (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)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "UDRP Account / PDR Ltd Compliance Team" as registrant of record and previously listed "Hendrix Pluto" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is inactive and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(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).").  

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, September 26, 2022, Respondent had actual knowledge of Complainant's DJS ANTIBODIES mark. There is no obvious explanation, nor has one been provided, for an entity to register a domain name that incorporates a minor misspelling of the DJS ANTIBODIES mark other than to take advantage of Complainant's reputation in the DJS ANTIBODIES Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel notes that the actions of Respondent in this matter do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith.  See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent's bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances).  It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis.  See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a "[r]espondent's passive holding amounts to bad faith."); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website."). 

 

Respondent has, without alternative explanation (or active use), registered a domain name that is confusingly similar to the DJS ANTIBODIES mark and failed to actively use the Domain Name. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the DJS ANTIBODIES mark) and in the absence of any Response or other explanation for such inactivity by Respondent (or any possible good faith use of the Domain Name by Respondent), the Panel finds on the balance of probabilities that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <djsatnibodies.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: October 31, 2023