DECISION

 

AbbVie Inc. v. zhoucao

Claim Number: FA2401002078003

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is zhoucao ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbvieabbvie.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

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.

 

Ho-Hyun Nahm, Esq.  as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 5, 2024; Forum received payment on January 5, 2024.

 

On January 8, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <abbvieabbvie.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 January 10, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@abbvieabbvie.com. Also on January 10, 2024, 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 January 31, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant, AbbVie Inc. is the result of a separation from Abbott Laboratories ("Abbott") into two independent companies, Abbott and AbbVie Inc. Complainant is a specialty-focused research-based biopharmaceutical company. Complainant has rights in the ABBVIE mark in many countries around the world, inter alia, through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,344,288, registered on May 28, 2013). The ABBVIE mark has become famous and is well-known to countless consumers. The disputed domain name  is confusingly similar to Complainant's ABBVIE mark as it incorporates the mark in its entirety twice while adding  the ".com" gTLD.

         

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its ABBVIE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent has previously used the disputed domain name to host content using AbbVie-related brands and images designed to promote a financial investment platform. The disputed domain currently does not resolve to an active website.

         

iii) Respondent registered and uses the disputed domain 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. WHOIS information for the disputed domain is privacy shielded, which reflects bad faith. Respondent's failure to use the domain name is also indicative of bad faith. 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.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on December 20, 2023.

        

2. Complainant has established rights in the ABBVIE mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,344,288, registered on May 28, 2013).

 

3. Respondent previously used the disputed domain name to host content using AbbVie-related brands and images designed to promote a financial investment platform.

 

4. The disputed domain name currently resolves to an error page.

 

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

Complainant claims rights in the ABBVIE mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). Complainant provides a copy of its USPTO registration for the ABBVIE mark (e.g., Reg. No. 4,344,288, registered on May 28, 2013).

 

Next, Complainant argues the disputed domain name <abbvieabbvie.com> is confusingly similar to Complainant's ABBVIE mark as it incorporates the mark in its entirety twice and is differentiated only by the addition of the ".com" gTLD. The Panel agrees and finds that the disputed domain name is confusingly similar to the ABBVIE mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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 at-issue domain names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant argues Respondent does not have any rights or legitimate interests in the disputed domain name. Where a respondent does not provide evidence to the contrary, evidence that a respondent is not commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where the identifying WHOIS information is unrelated to a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The unmasked WHOIS information shows "zhoucao" as the registrant of the disputed domain name. Furthermore, Complainant asserts Respondent is not authorized or licensed to use Complainant's ABBVIE mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. Complainant submits that (i) Respondent previously used the disputed domain name to host content using AbbVie-related brands and images designed to promote a financial investment platform; and (ii) the disputed domain name currently resolves to an inactive website. Complainant provides a copy of advertisements for the domain on Facebook on the same day as the domain name's registration as well as a screenshot of the currently resolving webpage. The Panel finds that Respondent's use of the disputed domain name is deceptive and confusing and amounts to passing off. As such it cannot amount to a bona fide offering of goods and services or a non-commercial legitimate or fair use. See JUUL Labs, Inc. v. Harry L. Werner, FA 1880938 (Forum Mar. 10, 2020) ("Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant's business by diverting internet users to a scam website where it sells unauthorized products. Use of a domain name to disrupt complainant's business in order to sell unauthorized products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii).").

 

The Panel also agrees and finds that under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the disputed domain name's resolving website that is blank and lacks content. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that 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. As noted above, Respondent previously used the disputed domain name to host content using AbbVie-related brands and images designed to promote a financial investment platform. The Panel finds that Respondent uses the disputed domain name to attempt to redirect Internet users by passing itself off as Complainant for commercial gain, and thus Respondent registered and used the disputed domain name in bad faith. See Spotify AB v. Haji Pacman, FA 1713362 (Forum Feb. 21, 2017) ("Respondent uses the disputed domain name to attempt to intercept Internet users by passing itself off as Complainant for commercial gain. . . The Panel finds that Respondent attempted to commercially benefit off Complainant's mark in bad faith.").

 

Next, Complainant argues 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. The Panel infers, from the website which prominently uses the ABBVIE mark as well as the fame of the ABBVIE mark that Respondent had knowledge of Complainant's rights in the ABBVIE mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <abbvieabbvie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 4, 2024