DECISION

 

AbbVie Inc. v. Douglas Okun

Claim Number: FA2403002088402

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Kim Boyle of Richard Law Group, Inc., Texas, USA. Respondent is Douglas Okun ("Respondent"), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbwie.com>, registered with Wild West Domains, LLC.

 

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

 

On March 14, 2024, Wild West Domains, LLC confirmed by e-mail to Forum that the <abbwie.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@abbwie.com. Also on March 15, 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 April 5, 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 name be transferred from Respondent to Complainant.

 

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 ABBVIE mark through its registration with the United States Patent and Trademark Office ("USPTO").

 

Respondent's <abbwie.com> domain name is confusingly similar to Complainant's ABBVIE mark, differing only through the substitution of the letter "w" for the letter "v" in Complainant's trademark and the addition the ".com" top-level.

 

Respondent lacks rights or legitimate interests in the <abbwie.com> domain name. Respondent is not commonly known by the at-issue domain name and 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 email hosted by the <abbwie.com> domain name to pose as an Accounts Receivable Administrator employed by Complainant so that Respondent might obtain funds from third-parties. Additionally, the domain name is parked at an inactive website.

 

Respondent registered and uses the <abbwie.com> domain name in bad faith. Respondent uses the domain to disrupt Complainant's business by impersonating an employee of Complainant so it might defraud third-parties. Furthermore, the domain is merely parked.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Respondent has rights in the ABBVIE mark.

 

Respondent is not affiliated with Complainant and is not authorized to use the ABBVIE mark in any capacity.

 

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

 

Respondent uses the at-issue domain name to impersonate an employee of Complainant in furtherance of fraud.

 

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's registration of the ABBVIE mark with the USPTO sufficiently demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). 

 

Respondent's <abbwie.com> domain name incorporates a recognizable misspelling of Complainant's ABBVIE mark and the generic top-level domain ".com" to form the at-issue domain name. Under the Policy these differences do nothing to distinguish the <abbwie.com> domain name from Complainant's trademark. Therefore, the Panel concludes that Respondent's <abbwie.com> domain name is confusingly similar to Complainant's ABBVIE trademark pursuant to Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating: "Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.").

 

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, 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. 

 

The WHOIS information for the at-issue domain name identifies the domain name's registrant as "Douglas Okun" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <abbwie.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <abbwie.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).

 

Respondent uses an email account associated with the <abbwie.com> domain name in an attempt to pass itself off as one of Complainant's employees so that Respondent might swindle funds from third parties. Respondent's use of the at-issue domain name in this manner indicates neither a bona fide  offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent's use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also, AbbVie Inc. v. Earl Vought FA 2012504 (Forum Oct. 17, 2022) (finding the use of the disputed domain name to impersonate an employee was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). 

 

Further, Respondent's <abbwie.com> domain name fails to address an active website. Passively holding an at-issue domain name is also neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i) nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) ("Respondent's domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name under the Policy.

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

As mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain name to host email impersonating one of Complainant's employees to facilitate fraud on third-parties. Respondent's use of its <abbwie.com> domain name to identify of one of Complainant's employees and then trick third-parties into giving up funds to Respondent disrupts Complainant's business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See AbbVie, Inc. v. Patricia Gunter FA 1789114 (Forum June 28, 2018) (finding use of the disputed domain to impersonate an executive of Complainant disrupted Complainant's business and constituted bad faith under the Policy); see also, Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent's use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the ABBVIE mark when Respondent registered <abbwie.com> as a domain name. Respondent's actual knowledge is evident from the notoriety of Complainant's trademark as well as from the fact that Respondent's scam <abbwie.com> email pretends to be from one of Complainant's employees. Respondent's registration and use of a confusingly similar domain name with knowledge of Complainant's rights in ABBVIE further shows Respondent's bad faith 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 <abbwie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: April 7, 2024