DECISION

 

AbbVie Inc. v. Domain Administrator / Sugarcane Internet Nigeria Limited

Claim Number: FA2407002104538

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Administrator / Sugarcane Internet Nigeria Limited ("Respondent"), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myabbivie.com>, registered with Porkbun LLC.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 1, 2024; Forum received payment on July 1, 2024.

 

On July 1, 2024, Porkbun LLC confirmed by e-mail to Forum that the <myabbivie.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 2, 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@myabbivie.com. Also on July 2, 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 Sandra J. Franklin 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

1.       Respondent's <myabbivie.com> domain name is confusingly similar to Complainant's ABBVIE mark.

 

2.       Respondent does not have any rights or legitimate interests in the <myabbivie.com> domain name.

 

3.       Respondent registered and uses the <myabbivie.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant, AbbVie, Inc., is a well-known biopharmaceutical company. Complainant holds a registration for the ABBVIE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,340,091 registered May 21, 2013).

 

Respondent registered the <myabbivie.com> domain name on May 28, 2024, and uses it for pay-per-click links and to offer it for sale.

 

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 Panel finds that Complainant has rights in the ABBVIE mark based on the registration of the mark with the USPTO. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant's registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i)).

 

Respondent's <myabbivie.com> domain name uses Complainant's ABBVIE mark and simply adds the word "my", an extra "i" and a gTLD. These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds "the letters 'btc' and the gTLD .com which do not distinguish the Domain Name from Complainant's mark").  Therefore, the Panel finds that Respondent's <myabbivie.com> domain name is confusingly similar to Complainant's ABBVIE mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 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.").

 

Complainant contends that Respondent has no rights or legitimate interests in the <myabbivie.com> domain name, as Respondent is not commonly known by the domain name. Complainant has not given Respondent permission to use its ABBVIE mark. The WHOIS identifies "Domain Administrator / Sugarcane Internet Nigeria Limited" as the registrant.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and thus has no rights under 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). 

 

Complainant demonstrates that Respondent does not make an active use of the <myabbivie.com> domain name and thus cannot establish a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore finds that Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) ("Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain."). 

 

Respondent's lack of rights in the <myabbivie.com> domain name is further established by using the domain name to resolve to pay-per-click links. Using a disputed domain name to provide links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides evidence showing that the disputed domain name resolves to links such as "Prescription Coupons". The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and uses the <myabbivie.com> domain name in bad faith as Respondent fails to make an active use of the disputed domain name. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website."). 

 

Complainant also shows that Respondent registered and uses the <myabbivie.com> domain name in bad faith by using it for pay-per-click links. The Panel therefore finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  See CFA Properties, Inc. v. El Mariache/ Mariache Corp, FA 1660175 (Forum Mar. 8, 2016) (finding bad faith registration and use because "Respondent used the <chickfilafoundation.org> domain name to attract Internet users for commercial gain because the resolving website contains links to third party businesses, from which Respondent presumably receives pay-per-click fees.").

 

The Panel notes Respondent's general offer to sell the disputed domain name for $1,000, more than out-of-pocket costs, and finds further evidence of bad faith under Policy ¶ 4(b)(i).  See Caterpillar Inc. v. Holding Account, FA 1835712 (Forum Apr. 21, 2019) ("Respondent's apparent offer to sell the domain name for an amount which is in excess of its out-of-pocket costs indicates Respondent's bad faith registration and use of the domain name per Policy ¶ 4(b)(i).").

 

Complainant contends that Respondent registered the <myabbivie.com> domain name with actual knowledge of Complainant's rights in the ABBVIE mark. The Panel agrees, noting the fame of the ABBVIE mark and Respondent's intentional misspelling of the mark in the disputed domain name, and finds bad faith under Policy ¶ 4(a)(iii). 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").

 

The Panel finds that Complainant has satisfied 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 <myabbivie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: July 25, 2024