DECISION

 

Abbott Laboratories v. James Smith

Claim Number: FA2402002083890

 

PARTIES

Complainant is Abbott Laboratories ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is James Smith ("Respondent"), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbottnutritions.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.com.

 

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 February 14, 2024; Forum received payment on February 14, 2024.

 

On February 15, 2024, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <abbottnutritions.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.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 February 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@abbottnutritions.com. Also on February 16, 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 March 8, 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, Abbott Laboratories, is a diversified global healthcare company, founded in 1886 by physician Wallace Calvin Abbott. Abbott serves people and sells products in more than 160 countries and has more than 114,000 employees worldwide. Complainant has rights in the ABBOTT mark, inter alia, through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,724,557, registered December 15, 2009). The disputed domain name  is confusingly similar to Complainant's ABBOTT mark as it incorporates the mark in its entirety while adding a generic or descriptive term "nutritions" and the ".com" gTLD.

         

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant's ABBOTT mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent is using the disputed domain name to fraudulently misrepresent itself as a named person, Director of Business Development and Order Management for Abbott Laboratories Limited in the UK.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent was not only familiar with Complainant's ABBOTT trademark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating Complainant's trademark in order to create an association with Complainant and its products and services. By using the disputed domain name in email messages and fake letters to impersonate an executive of Complainant, Respondent is attempting to commit a fraud and is disrupting Complainant's business.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on January 25, 2024.

        

2. Complainant has established rights in the ABBOTT mark, inter alia, through its registration of the mark with the USPTO (e.g., Reg. No. 3,724,557, registered December 15, 2009).

        

3. Respondent has used the disputed domain name to impersonate an executive of Complainant. 

 

4. Respondent has used the disputed domain name to contact vendors in an effort to fraudulently obtain equipment.

 

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 ABBOTT 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 ABBOTT mark (e.g., Reg. No. 3,724,557, registered December 15, 2009).  Therefore, the Panel finds that Complainant has established rights in the ABBOTT mark under Policy ¶ 4(a)(i).

         

Next, Complainant argues the disputed domain name <abbottnutritions.com> is confusingly similar to Complainant's ABBOTT mark as it incorporates the mark in its entirety and is differentiated only by the addition of a generic or descriptive term "nutritions" and the ".com" gTLD. An addition to a complainant's mark such as a generic and/or descriptive term, and a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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 Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum  July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant's registered mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to the ABBOTT 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 asserts that Respondent is not commonly known by Complainant's ABBOTT mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). The Panel notes that the WHOIS information identifies "James Smith" as the registrant.  Complainant asserts that nothing in the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ABBOTT mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Respondent has used the disputed domain name to fraudulently misrepresent himself as a named person, Director of Business Development and Order Management for Abbott Laboratories Limited in the UK. No such person is employed at Abbott. Respondent has used the disputed domain name to contact vendors in an effort to fraudulently obtain equipment. Complainant provides a copy of a vendor's mail checking with Complainant before sending any such equipment to the named person associated with the disputed domain.

 

The Panel finds that using the disputed domain name to impersonate an employee of Complainant for the purpose of fraudulently obtaining Complainant's equipment does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See FirstEnergy Corp. v. kelly Rowland, FA 2062582 (Forum Oct. 18, 2023) ("Complainant provides copies of emails showing that Respondent has used the disputed domain name in connection with an email address to impersonate an employee of Complainant soliciting Complainant's potential customers for money. Using a disputed domain name to pass off as a complainant's employee for the purpose of furthering a phishing campaign may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 by using the disputed domain name in email messages and fake letters to impersonate an executive of Complainant, Respondent is attempting to commit a fraud and is disrupting Complainant's business. Respondent has used the disputed domain name to contact vendors in an effort to fraudulently obtain equipment. The Panel recalls that Complainant provides a copy of a vendor's mail checking with Complainant before sending any such equipment to the named person associated with the disputed domain.

 

Registration of a confusingly similar domain name with the intent to disrupt business by furthering a fraudulent email campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv). See FirstEnergy Corp. v. kelly Rowland, FA 2062582 (Forum Oct. 18, 2023) ("Registration of a confusingly similar domain name with the intent to disrupt business by furthering an email phishing campaign can evince bad faith registration and use per Policy ¶ 4(b)(iv).  Respondent has used the disputed domain name in connection with an email address to impersonate a member of Complainant's staff for purposes of soliciting Complainant's potential customers for money. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv)."). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

Next, Complainant argues Respondent was not only familiar with Complainant's ABBOTT trademark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating Complainant's trademark in order to create an association with Complainant and its products and services. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant's rights in the mark given the circumstances that (i) Complainant's ABBOTT trademark was already famous and familiar to countless consumers worldwide; and (ii) the manner of use of the disputed domain name to impersonate an employee of Complaint. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the ABBOTT 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 <abbottnutritions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 8, 2024