DECISION

 

AbbVie Inc. and AbbVie AB v. fa cai

Claim Number: FA2310002064665

PARTIES

Complainant is AbbVie Inc. and AbbVie AB ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is fa cai ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <duopapaa.com>, registered with Key-Systems GmbH.

 

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 October 3, 2023; Forum received payment on October 3, 2023.

 

On October 5, 2023, Key-Systems GmbH confirmed by e-mail to Forum that the <duopapaa.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@duopapaa.com. Also on October 5, 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 26, 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.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In this proceeding there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

Complainant AbbVie AB is a subsidiary of Complainant AbbVie, Inc. and is the owner of the DUOPA trademark. Together they offer an array of pharmaceutical related products. Additionally, there is no objection by Respondent to the two named Complainants proceeding together as if one. The Panel therefore finds that the two nominal complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they can be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, AbbVie Inc. 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. AbbVie AB is a subsidiary of Complainant AbbVie, Inc. and is the owner of the DUOPA trademark

 

Complainant has rights in the DUOPA mark through its registration with the USPTO.

 

Respondent's <duopapaa.com> domain name is confusingly to the DUOPA mark, differing only through the addition of the letters "paa" and the ".com" generic top-level domain.

 

Respondent lacks rights or legitimate interests in the <duopapaa.com> domain name. Respondent is not commonly known by the at-issue domain name, nor did Complainant authorize or license Respondent's use of the DUOPA 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 address a website depicting pornography and displaying links to pornographic websites.

 

Respondent registered and was aware of Complainant's trademark when it registered the at-issue domain name and uses the <duopapaa.com> domain name in bad faith by having it address a website depicting pornography and displaying links to pornographic websites for Respondent's commercial benefit.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in DUOPA.

 

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 DUOPA.

 

Respondent uses the at-issue domain name to address a website that depicts pornography and contains links to pornographic websites.

 

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 DUOPA with the USPTO as Complainant's registration of DUOPA with any national trademark registrar demonstrates such rights per Policy ¶ 4(a)(i). See 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 <duopapaa.com>domain name contains Complainant's DUOPA trademark followed by the letters "paa" with all followed by the ".com" top-level domain name. The differences 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 <duopapaa.com> domain name is confusingly similar to Complainant's DUOPA trademark. See 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 DUOPA ultimately reveals that "fa cai" is the domain name's registrant and there is no evidence indicating that Respondent is known by <duopapaa.com>. 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 employs the at-issue domain name to address a website that displays pornography and links to pornographic websites. Respondent's use of <duopapaa.com> in such manner 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 Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that "[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.").

 

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.

 

First, Respondent uses the confusingly similar <duopapaa.com> domain to attract internet users to <duopapaa.com>and its associated website and links for commercial gain by creating confusion between the domain name and Complainant's trademark. Respondent's use of the <duopapaa.com> domain name to falsely imply an affiliation with Complainant and then offer pornographic content via Respondent's <duopapaa.com> website and links demonstrates Respondent's bad faith registration and use of the <duopapaa.com> domain name. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also, Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent's use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Toshiba v. ran jiangfei (NAF FA1797650) (holding respondent's registration and use of the domain names <toshiba-gulf.com> and <driversoftoshiba.com> for pornographic websites constitutes bad faith under UDRP 4(b)(iv)).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the DUOPA mark when Respondent registered <duopapaa.com> as a domain name. Respondent's actual knowledge is evident given the mark's notoriety and further shows Respondent's bad faith registration and use of its <duopapaa.com> domain name.  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 <duopapaa.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Paul M. DeCicco, Panelist

Dated: October 26, 2023