DECISION

 

AbbVie Inc. v. Redacted for Privacy

Claim Number: FA2406002103177

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Redacted for Privacy ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbviebiotech.com> ('the Domain Name'), registered with HOSTINGER operations, UAB.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 21, 2024; Forum received payment on June 21, 2024.

 

On June 24, 2024, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <abbviebiotech.com> Domain Name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 June 24, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@abbviebiotech.com. Also on June 24, 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 July 16, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

PRELIMINARY ISSUE: IDENTITY THEFT – REQUEST FOR REDACTION

Respondent is identified as the name of an officer for the Complainant, using the corporate address for the Complainant, but using the email address "roydean1957@gmail.com" which is not that Officer's email address. Pursuant to Supplemental Rule 15(b), Complainant requests that the name of the Respondent be redacted from the decision as clearly false.

 

According to Policy ¶ 4(j), all UDRP decisions "will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision." In Rigaku Americas Holding Company, Inc. v. John Doe as Holder of domain name <rigakv.com>, FA 1966562 (Forum Dec. 6, 2021), Brooks Sports, Inc. v. Redacted for Privacy, FA 1929564 (Forum Feb. 15, 2021), and EMVCo, LLC c/o Visa Holdings v. [Unknown Holder], FA 1926986 (Forum Feb. 9, 2021) the panels omitted the respondents' personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming associated with acts the actual registrants appeared to have sought to impute to the respondents. The Panel determines that the name of the Respondent will be redacted from this decision as the Respondent has falsely used the name of one of the Complainant's officers in the registration details of the Domain Name, making that officer a victim of identity theft, and this case an appropriate exceptional case for redaction.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the ABBVIE trade mark, registered, inter alia in the USA for medical related products and services with first use recorded as 2013.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's trade mark containing it in its entirety and merely adding the generic term 'biotech' and the gTLD .com which do not prevent said confusing similarity between the Domain Name and the Complainant's mark.

 

Respondent has no rights or legitimate interests in the Domain Name and is not authorised by the Complainant.

 

The Respondent has falsely used the name of one of the Complainant's officers for the WhoIS details of the Domain Name and is not commonly known by the Domain Name. The Domain Name pointed to the Complainant's own web site and has been used for a Microsoft Teams invite sent to an employee of the Complainant re supposed procurement of IT equipment which is not a bona fide offering of goods or services or a legitimate non commercial fair use. It is registration and use in deceptive opportunistic bad faith impersonating the Complainant and its personnel and disrupting the Complainant's business in full knowledge of the Complainant and its rights for fraudulent reasons.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the ABBVIE trade mark, registered, inter alia in the USA for medical related products and services with first use recorded as 2013.

 

The Domain Name registered in 2024 pointed to the Complainant's own web site. The Respondent has falsely used the name of one of the Complainant's officers for the WhoIS details of the Domain Name.

 

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 Domain Name consists of the Complainant's ABBVIE mark (which is registered in USA for medical related products and services with first use recorded as 2013), the generic term 'biotech' and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term 'biotech' does not prevent confusing similarity between the Domain Name and the Complainant's registered trade mark.

 

The gTLD .com does not serve to prevent confusing similarity between the Domain Name and the Complainant's mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark.

 

The Panel notes that the Complainant alleges that the Domain Name has been used for a fraudulent Microsoft Teams invite, however the evidence presented did not prove that the Domain Name was used for this.

 

The Domain Name was pointed to the site of the Complainant itself. The Panel finds this use does not give rise to rights or a legitimate interest. See Direct Line Ins. Plc v Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (pointing to Complainant's own site is not a bona fide offering of goods or services or a legitimate non commercial fair use). The finding in this case above that the Respondent has falsely used the name of one of the Complainant's officers for the WhoIs details is also an indication of a lack of legitimate interests in the Domain Name.

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out above.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The Respondent has falsely used the name of one of the Complainant's officers in the WhoIs database details. Providing false information at the time of a domain name's registration may be evidence of respondent's bad faith registration and use under Policy 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name).

 

The Domain Name was pointed to the Complainant's own web site. Redirecting a domain name containing a complainant's trade mark to the complainant's own web site can be bad faith registration and use, especially in impersonation cases, and shows actual knowledge on the Respondent's part of the Complainant and its business, rights and goods. See MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant's own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.") See also McKinsey Holdings Inc. v Mgr. Jakob Bystron, FA 1330650 (Forum July 23, 2010).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraph 4(b)(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 <abbviebiotech.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: July 16, 2024