DECISION
AbbVie Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2406002104240
PARTIES
Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allergandirect3.com>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 27, 2024; Forum received payment on June 27, 2024.
On June 28, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <allergandirect3.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@allergandirect3.com.
Also on July 1, 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 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant claims rights in the ALLERGAN trademark as the parent corporation of the registrant of the portfolio of trademark and service mark registrations described below, and extensive international use of the mark in its research-based biopharmaceutical business that employs approximately 50,000 persons worldwide in over 70 countries with annual revenues in excess of $58 billion.
In June of 2019, Complainant announced that it had reached an agreement to acquire Allergan Inc, the owner of the ALLERGAN registered trademark and service mark, for $63 billion and in May of 2020 Allergan Inc became a wholly owned subsidiary of Complainant.
Complainant submits that its said subsidiary corporation Allergan Inc was formed in 1948 as a pharmaceutical company and currently markets its products including but not limited to Botox, in around 100 countries worldwide.
Complainant further submits that its group of corporations owns and maintains websites at <www.allerganaesthetics.com> and <www.allergandirect.com> on which markets its products as shown in screen captures annexed to the Complaint.
Complainant argues that the disputed domain name is confusingly similar to the ALLERGAN trademark as it contains the mark in its entirety, adding only the element "direct3" together with the most common generic Top Level Extension ("gTLD") extension <.com>.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that
· Respondent is not commonly known by Complainant's ALLERGAN mark;
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use;
· the WHOIS information for the disputed domain name does not disclose Respondent's identity, however the Registrar has verified that Respondent is known as "Carolina Rodrigues/ Fundacion Comercio Electronico."
· Respondent is therefore not commonly known by the ALLERGAN mark, see Broadcom Corp. v. Ibecom PLC, FA0411000361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that respondent was commonly known by the domain name);
· Respondent is not affiliated with Complainant in any way;
· Respondent is not licensed by Complainant to use the ALLERGAN mark nor is Respondent an authorized vendor, supplier, or distributor of Complainant's goods and services;
· screen captures exhibited in an annex to the Complaint shows that the disputed domain is used to redirect to various sites when accessed, and Respondent's failure to develop a website to which the disputed domain name resolves demonstrates a lack of genuine interest in the disputed domain name, see Microsoft Corporation v. Lang Qing, FA 1447828 (Forum, July 8, 2012) (finding that the failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use);
· additionally, the evidence adduced in an annex to the Complaint shows that there are MX records associated with the disputed domain name such that emails can be sent from the disputed domain name as an address, which can result in phishing; and because of the fame of the ALLERGAN mark Complainant is concerned that the disputed domain name will be used for nefarious purposes.
· such conduct has been found not to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), see Enterprise Holdings, Inc. v. umit bozdag, FA2212002022834 (Forum, Jan. 9, 2023) (finding that Respondent used the domain to set up an MX record which allows Respondent to set up an email account that could be used for purposes of phishing);
Complainant adds that there is no possible legitimate business that Respondent could have that would include the well-known ALLERGAN trademark. See e.g., AbbVie, Inc. v. Austin Podowski FA2079659 (Forum Feb. 9, 2024) (finding the ALLERGAN mark to be "well known" and finding "It is difficult to envisage any use of the disputed domain name that would not violate the Policy").
Complainant concludes that the above factors show that Respondent has not used the disputed domain name for bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant next alleges that the disputed domain name was registered in bad faith arguing that it is clear from the composition of the disputed domain name that it was registered with knowledge of Complainant's rights in the ALLERGAN trademark and the intention to create an association with Complainant and its products and services.
Respondent's registration of the disputed domain name with knowledge of Complainant's rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Digi Int'l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (holding that "there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively").
Complainant repeats that as noted previously, there is no possible use that Respondent could make of the disputed domain name that would not be in bad faith.
Complainant adds that Respondent's failure to use the disputed domain name is also indicative of bad faith.
Furthermore, Respondent's nonuse of the confusingly similar domain name suggests its bad faith under Policy ¶ 4(a)(iii). See AbbVie, Inc. v. AbbVie, FA 1773787 (Forum Mar. 28, 2018) (finding the Respondent's passive holding of <abbvie-jp.com> constituted bad faith under the Policy);
As shown in an exhibit annexed to the Complaint, Respondent has used the disputed domain name to set up an MX record to send and receive emails which could be used for phishing which Complainant submits is evidence of bad faith. See AbbVie, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico FA2309002060171 (Forum Oct. 5, 2023) (finding bad faith where the domain name was associated with an MX record);
Prior Panels established under the Policy have found the association of MX records with a disputed domain name to be evidence of use in bad faith. See for example Stripe, Inc. v. Julien Bouef / Stripe FA2109001966753 (Forum, Nov. 4, 2021) ("Further, when viewed against all of the circumstances of a given case, the configuration of MX records for a disputed domain name may indicate a probability that it will be used in connection with spam, phishing, or other activity that would be considered bad faith use under Policy ¶ 4(a)(iii)).
Additionally, Complainant argues that a screen capture exhibited in an annex to the Complaint illustrates that Respondent is offering the disputed domain name for sale.
Finally, Complainant submits that Respondent has engaged in a pattern of conduct showing bad faith registration of domain names. The record shows that Respondent is a named respondent in over 200 domain name disputes, showing a pattern of conduct of bad faith. As found in Securian Financial Group, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico FA 2026276 (Forum Feb. 26, 2023) where the panel observed that past UDRP actions against a respondent which resulted in the transfer of the respondent's registered domain names are evidence of bad faith under Policy ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a biopharmaceutical company and is parent corporation of Allergan Inc which owns a portfolio of trademark and service mark registrations for the ALLERGAN including the following
United States registered trademark and mark ALLERGAN, registration number 3,596,709, registered on the Principal Register on March 24, 2009 for goods and services in international classes 5, 10, 41 and 44;
Complainant has an established Internet presence and its group of corporations owns and uses the domain name <allergandirect.com> and <allerganaesthetics.com> to market their goods and services.
The disputed domain name <allergandirect3.com> was registered on January 26, 2024 and does not resolve to any active website, but has been used to establish an MX record and is offered to the public for sale.
There is no information available about Respondent except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum to provide the registration details of the disputed domain name for the purposes of this proceeding.
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 has provided uncontested convincing evidence of its rights in the ALLERGAN trademark and service mark established by its use of the mark and the ownership of the portfolio of registrations for the mark by its wholly owned subsidiary Allergan Inc.
The disputed domain name <allergandirect3.com> consists of Complainant's mark in combination with the element "direct3" and the gTLD extension <.com>.
Complainant's ALLERGAN mark is the initial, dominant and only distinctive element of the disputed domain name.
The disputed domain name contains the ALLERGAN mark in its entirety, which is sufficient to establish confusing similarity for the purposes of the Policy.
Neither the additional element "direct3" nor the gTLD extension within the disputed domain name prevent a finding of confusing similarity with Complainant's mark.
This Panel finds therefore that in each case the disputed domain name is confusingly similar to the ALLERGAN mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In its Complaint, Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed and uncontested submissions above.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant's rights in the ALLERGAN mark through its predecessor in title, date back to at least March 24, 2009 when the United States trademark and service mark was registered. The disputed domain name was not registered until January 26, 2024. Complainant's rights therefore long predate the registration of the disputed domain name.
On the balance of probabilities, the registrant of the disputed domain name was actually aware of Complainant and its ALLERGAN mark when the disputed domain name was chosen and registered.
Complainant has a long-established goodwill and reputation for the ALLERGAN mark through use on its products and in the provision of its support services for its products and the strength of Complainant's goodwill and reputation in the mark is reflected by the fact that Complainant purchased its wholly owned subsidiary that registered and uses the ALLERGAN mark in 2020 for $63 billion.
Furthermore, it is most improbable that the choice of the disputed domain name <allergandirect3.com> and its similarity with Complainant's own domain name <allergandirect.com> was a mere coincidence.
On the balance of probabilities therefore the disputed domain name was chosen and registered in bad faith with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's substantial goodwill and reputation in the mark and create an impression of a connection with Complainant and its website at <www.allergan.com>
The evidence shows that Respondent has used the disputed domain name to create an MX record which indicates that Respondent has some intention of using the disputed domain name to create an email account.
Additionally, the evidence shows that Respondent is purporting to offer the disputed domain name for sale to the public for USD $1,509.99.
These factors taken together allow this Panel to find that Respondent is using the disputed domain name in bad faith.
Furthermore Complainant has shown that Respondent has engaged in a pattern of conduct showing bad faith registration of domain names and has been the unsuccessful respondent in over 200 domain name disputes under the Policy.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith, and Complainant has therefore succeeded in the third element of the test in 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 <allergandirect3.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________________________
James Bridgeman SC
Panelist
Dated: July 24, 2024
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