NATIONAL ARBITRATION FORUM

DECISION

AbbVie Inc. v. sandy paar / Revees

Claim Number: FA2403002087525

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is sandy paar / Revees ("Respondent"), Texas, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <albbvie.com>, registered with Realtime Register B.V..

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.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 7, 2024; Forum received payment on March 7, 2024.

On March 8, 2024, Realtime Register B.V. confirmed by e-mail to Forum that the <albbvie.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 March 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@albbvie.com. Also on March 8, 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 29, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.

1. Complainant is a United States company that is a prominent research-based biopharmaceutical provider of goods and services.

2. Complainant provides those goods and services under trademarks for ABBVIE. In particular, the evidence will establish that Complainant has acquired registered trademark rights in the ABBVIE trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,340,091, registered on May 21, 2013 and other national and international registrations with trademark registration authorities for ABBVIE and derivatives (collectively "the ABBVIE trademark"). The Complainant had used the ABBVIE trademark for many years to offer its goods and services.

3. The ABBVIE trademark is famous, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4. As well as its trademark, Complainant has registered the domain name <abbvie.com> that it uses in its business and in particular for its website at www.abbvie.com.

5. Respondent registered the <albbvie.com> disputed domain name on March 4, 2024.

6. The disputed domain name embodies the ABBVIE trademark without the consent of the Complainant.

7. The disputed domain name is confusingly similar to the ABBVIE trademark as it includes a misspelling of the trademark by adding the letter "l" between the "a" and the first "b" in the domain name and has also added the generic TLD ".com".

8. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a) the Respondent is not commonly known by the ABBVIE trademark;

(b) the Respondent is not affiliated with or licensed by the Complainant to use the ABBVIE trademark;

(d) the domain name is not being actively used and resolves to a parking webpage that indicates its propensity to be used for a phishing scheme;

(e) there are MX records that show emails can be sent from the domain name that can be used for phishing;

(f) the domain name is confusingly similar to the famous ABBVIE trademark, showing that it has not been used by the Respondent for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i); and

(g) the Respondent has engaged in conduct that has infringed the Complainant's ABBVIE trademark.

9. The Respondent has registered and used the domain name in bad faith. That is so because:

(a) there is no use that could be made of the domain name that would not be in bad faith;

(b) because of its renown, the Respondent must have had actual knowledge of the Complainant and its trademark when the domain name was registered;

(c) the Respondent clearly chose a confusingly similar domain name with the intention of misleading and confusing internet users and parking it until it would be used for phishing;

(d) the WHOIS information was privacy shielded at the time of the filing of this Complainant;

(e) the Respondent has not made any active use of the domain name; and

(f) the Respondent has set up an MX record to send and receive emails.

The Complainant cites numerous prior UDRP decisions to support its contentions.

It is therefore submitted by the Complainant that it will show all of the elements that it must establish under the UDRP and that the domain name should therefore be transferred from the Respondent to the Complainant.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a United States company that is a prominent research-based biopharmaceutical provider of goods and services.

2. Complainant provides those goods and services under trademarks for ABBVIE. In particular, the evidence establishes that Complainant has acquired registered trademark rights in the ABBVIE trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,340,091, registered on May 21, 2013 and other national and international registrations with trademark registration authorities for ABBVIE and derivatives (collectively "the ABBVIE trademark"). The Complainant had used the ABBVIE trademark for many years to offer its goods and services.

3. Respondent registered the <albbvie.com> domain name on March 4, 2024 ("the disputed domain name").

4. The disputed domain name embodies the ABBVIE trademark without the consent of the Complainant.

5. Respondent has parked the domain name with the intention of using it for a phishing scheme.

6. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's ABBVIE trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.

7. Accordingly, the disputed domain name should be transferred to the Complainant.

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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. Complainant provides its goods and services under trademarks for ABBVIE. In particular, the Complainant has established by evidence that it acquired registered trademark rights in the ABBVIE trademark by virtue of its registration of that trademark with the United States Patent and Trademark Office, registration Number 4,340,091, registered on May 21, 2013 and other national and international registrations with trademark registration authorities for ABBVIE and derivatives (collectively "the ABBVIE trademark"). The Complainant has used the ABBVIE trademark for many years to offer its goods and services.

The next question that arises is whether the disputed <albbvie.com> domain name is identical or confusingly similar to the Complainant's ABBVIE trademark. The Panel finds that the disputed domain name is confusingly similar to the ABBVIE trademark. In formulating the domain name, the Respondent has included a misspelling of the trademark by adding the letter "l" between the "a" and the first "b" of "abbvie" in the domain name and it has also included the generic TLD ".com". It has routinely been held by UDRP panels that such a spelling alteration, particularly where it is so minor, cannot negate a finding of confusing similarity that is otherwise present, as it is in the present case. That is because, in the present case, internet users would read the domain name as invoking the ABBVIE trademark, even with the misspelling, and would conclude that it was intended to be so read. In other words, internet users would see the domain name as consisting of the ABBVIE trademark, despite the fact that it includes a spelling mistake. Thus, the domain name is similar to the trademark and confusingly so.

The generic Top Level Domain ".com" is routinely not taken into account by panels for the purposes of the comparison being made, as all domain names must have such an extension.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's ABBVIE trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:

(a) the Respondent is not commonly known by the ABBVIE trademark; that is clearly made out by the evidence that the domain name is registered in the name of sandy paar / Revees, making it impossible to contend that that person was commonly or to any other degree known by the domain name;

(b) the evidence is that the Respondent is not affiliated with the Complainant;

(d) the evidence is that the Respondent is not an authorized vendor, supplier or distributor of the Complainant;

(e) it is apparent from the evidence in the Complainant's Exhibit D that the domain name is not being actively used and that it resolves to a webpage that indicates its propensity to be used for a phishing scheme; that has been shown as the page to which the domain name resolves results in warnings that "This site is blocked due to a phishing format" and "Phishing is a fraudulent attempt to get you to provide information under false pretences". Such a use cannot in any way give rise to a right or legitimate interest in the domain name;

(f) there are MX records that show emails can be sent from the domain name that can be used for phishing; that also has been shown by the evidence, and further enhances the notion that the Respondent intended to use the domain name for an illegitimate purpose and that as such its use cannot give rise to a right or legitimate interest on the part of the Respondent in the domain name;

(g) the domain name is confusingly similar to the famous ABBVIE trademark, showing that it has not been used by the Respondent for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i); the only inference that can be drawn from the evidence is that the Respondent carefully chose and framed its domain name and that in doing so it chose a construction that would confuse internet users as to whether the domain name was a domain name of the Complainant or not; as its actions in that regard were based on a wish to mislead and confuse internet users, it obviously cannot be said that there was anything bona fide about them; therefore the Panel finds that the domain name has not been used by the Respondent for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i);

(h) the evidence is that the domain name has not been actively used for any legitimate purpose, as it is merely parked; it is the mark of illegitimacy that a domain name has not been used for the valid purpose for which it exists, but has been put to one side by parking it, which is what the Respondent has done; thus, again, it must be said that there is nothing legitimate about the Respondent's use of the domain name;

(i) the Respondent has engaged in conduct that has infringed the Complainant's ABBVIE trademark. This ground speaks for itself and has been made out. The Respondent has simply copied the trademark and made an alteration to confuse people which is a clear infringement of the trademark;

(j) the only conclusion that can be reached on the evidence is that the Respondent is brazenly using the Complainant's trademark and name potentially to make money by deceiving innocent parties, the public and the Complainant through a phishing scheme;

(k) the evidence also shows that the domain name is not being used for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii);

(l) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the <albbvie.com>, disputed domain name.

The Complainant has therefore made out all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

All of these matters make out the prima facie case against Respondent.

The Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds set out above. It is not necessary to repeat them here. In view of the evidence also discussed above, it is clear that the Complainant has made out all of the grounds relied on, as the entire modus operandi of the Respondent has clearly been motivated by bad faith in both the registration and the use of the domain name. In particular, it is clear from the evidence that the Respondent has:

(a) registered the confusingly similar disputed domain name with actual knowledge of the Complainant and its trademark, which the Complainant had been using at least since 2013 and in any case before the Respondent registered the domain name on March 4, 2024;

(b) done this by deliberately misspelling the trademark;

(c) taken the first step of parking the domain name, with the clear intention of using it for an illegal phishing scheme;

(d) not used the domain name for any active legitimate use;

(e) engaged in infringement of the Complainant's ABBVIE trademark;

(f) set about engaging in conduct that showed it was intending to disrupt the Complainant's business within the Policy ¶ 4(b)(iii);

(g) intentionally attempted to attract, for commercial gain, internet users to the resolving website by creating confusion with the ABBVIE trademark within the meaning of Policy ¶ 4(b)(iv);

(h) set up an MX record to send and receive emails; and

(i) has, by virtue of all of the known facts, shown that it registered and used the disputed domain name in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the ABBVIE trademark and in view of the conduct that the Respondent has engaged in when using it, the Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has correctly cited several prior UDRP decisions that support its contentions on all of the elements required to be proved.

The Complainant has established all of the elements that it must show under the Policy and it is therefore entitled to the relief it seeks.

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

The Honorable Neil Anthony Brown KC

Panelist

Dated: April 2, 2024