DECISION

 

AbbVie Inc. v. Lei Shi

Claim Number: FA2312002075552

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Lei Shi ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com>, registered with Cloud Yuqu LLC and Chengdu West Dimension Digital Technology Co., Ltd..

 

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 December 16, 2023; Forum received payment on December 16, 2023.

 

On December 21, 2023, Cloud Yuqu LLC and Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names are registered with Cloud Yuqu LLC and Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Cloud Yuqu LLC and Chengdu West Dimension Digital Technology Co., Ltd. have verified that Respondent is bound by the Cloud Yuqu LLC and Chengdu West Dimension Digital Technology Co., Ltd. registration agreements 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 December 21, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of January 10, 2024 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@abbvieeyecar.com, postmaster@abbvieyecare.com, postmaster@abvieeyecare.com. Also on December 21, 2023, the Chinese and English 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 January 11, 2024, 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 names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The relevant Registration Agreement for the at-issue domain is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant while conducting the proceeding in English would not unfairly burden Respondent.  

 

Respondent targeted a U.S.-based company by incorporating Complainant's ABBVIE trademark into the at-issue domain names. Doing so constitutes evidence that Respondent will not be prejudiced if the proceedings were to be conducted in English. See Morgan Stanley v. Peng Bi / Bi Peng, FA1709188 (Forum Feb. 16, 2017) (choosing to conduct the proceedings in English in part because "the disputed domain names contain a famous English language mark). Moreover, the domain names each have the top-level ".com" which primarily targets English speaking internet users, and each domain name contains an English based word or misspelling thereof in its second-level namely "eyecare". Notably, webpages addressed by the at-issue domain names are likewise English centric.

 

Since it appears that Respondent has command of the English language requiring Complainant to translate all the documents of the proceeding into Chinese would result in Complainant having to incur unnecessary additional costs and might well delay the proceeding without any net benefit to Respondent. Moreover, Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore, in light of all the foregoing, the Panel finds this proceeding should continue in English. 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, AbbVie, Inc., is a Chicago-based biopharmaceutical company that conducts research in multiple countries.

 

Complainant has rights in the well-known ABBVIE mark through its registration in countries around the world.

 

Respondent's<abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names are each confusingly similar or identical to the ABBVIE mark, differing only through the addition of a generic term and/or the misspelling of Complainant's ABBVIE mark and the ".com" generic top-level domain.

 

Respondent lacks rights or legitimate interests in the <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names. Respondent is not commonly known by any at-issue domain name, nor did Complainant authorize or license Respondent's use of the ABBVIE mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the at-issue domain names. Instead, the domain names address parked webpages.

 

Respondent registered and uses the <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names in bad faith. There is no possible use of the at-issue domain names that would not be in bad faith. Respondent holds the domain names passively to host parked webpages and the domain names have been enabled to host email which might be used for phishing as the domain names are associated with an MX record.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in ABBVIE.

 

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

 

Respondent registered the at‑issue domain names after Complainant acquired rights in ABBVIE.

 

Respondent uses the at-issue domain names address webpages that display links to third-parties.

 

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 names are each confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has rights in a mark by its registration of ABBVIE with multiple national registrars. Complainant's registration of ABBVIE with any legitimate trademark registrar demonstrates its 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 <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names each contains Complainant's ABBVIE trademark or a recognizable misspelling of thereof, followed by the term "eyecar," yecare," or "eyecare", with all followed by the ".com" top-level domain name. The differences between Complainant's trademark and the at-issue domain names does not distinguish any of the at-issue domain names from Complainant's mark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names are each confusingly similar to Complainant's ABBVIE trademark. 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 each 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 any 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 <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> reveals that "Lei Shi" is the domain names' registrant and there is no evidence in the record indicating that Respondent is otherwise known by either <abbvieeyecar.com>, <abbvieyecare.com> or <abvieeyecare.com>. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain names 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 each at-issue domain name to address webpages that display links to third parties. On browsing to the at-issue domain names, a parking page is displayed with no substantive content other than links to third-parties. Respondent's use of the at-issue domain names to host hyperlinks 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 Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

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 names.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names in bad faith pursuant to the Policy.

 

First, as mentioned above regarding rights and legitimate interests, Respondent's at-issue domain names each address a webpage displaying hyperlinks to third-parties. Using the domain names in this manner indicates Respondent's bad faith. See Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).

 

The Panel also recognizes that Respondent's domain names are setup to host email and that fraudulent email may be used as part of a future phishing scheme by Respondent.

 

Moreover, Respondent had actual knowledge of Complainant's rights in the ABBVIE mark when it registered <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> as domain names. Respondent's actual knowledge of Complainant's rights in ABBVIE is evident given the notoriety of Complainant's unique trademark and given that Respondent registered multiple domain names that are confusingly similar to Complainant trademark. Respondent's registration of <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> with knowledge of Complainant's trademark rights in ABBVIE further shows Respondent's bad faith registration and use of each at-issue domain name pursuant to the Policy. 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); see also, 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).

 

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 <abbvieeyecar.com>, <abbvieyecare.com> and <abvieeyecare.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco,  Panelist

Dated: January 11, 2024