DECISION

 

AbbVie Inc. v. ZHOU BILI / SHANLAN ASDWW

Claim Number: FA2407002107910

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ZHOU BILI / SHANLAN ASDWW ("Respondent"), Unknown.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbvieisu-tpst.xyz>, registered with Gname.Com Pte. Ltd.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 24, 2024; Forum received payment on July 24, 2024.

 

On July 29, 2024, Gname.Com Pte. Ltd. confirmed by e-mail to Forum that the <abbvieisu-tpst.xyz> domain name is registered with Gname.Com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.Com Pte. Ltd. has verified that Respondent is bound by the Gname.Com Pte. Ltd. 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 30, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@abbvieisu-tpst.xyz. Also on July 30, 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 August 20, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant is a specialty-focused research-based biopharmaceutical company. Complainant has rights in the ABBVIE mark in many countries around the world, inter alia, through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,344,288, registered on May 28, 2013). The ABBVIE mark has become famous and is well-known to countless consumers. The disputed domain name is confusingly similar to Complainant's ABBVIE mark because it fully incorporates Complainant's mark, with only the addition of generic or descriptive terms and the ".xyz" gTLD.

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its ABBVIE mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent uses the disputed domain name to impersonate and create a false connection with Complainant, in an attempt to phish for personal information and defraud consumers.

         

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to impersonate Complainant, in connection with phishing. Respondent's registration with knowledge of Complainant's rights in its well-known ABBVIE mark is evidence of bad faith registration and use.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on July 9, 2024.

        

2. Complainant has established rights in the ABBVIE mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,344,288, registered on May 28, 2013).

 

3. The disputed domain name resolved to a website, which displays Complainant's mark and contains a page where users were asked to insert username and password information, in an attempt to phish for personal or confidential information of Internet users.

 

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 claims rights in the ABBVIE mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark per Policy ¶ 4(a)(i). Complainant provides a copy of its USPTO registration for the ABBVIE mark (e.g., Reg. No. 4,344,288, registered on May 28, 2013).

 

Complainant contends that the disputed domain name <abbvieisu-tpst.xyz> is confusingly similar to Complainant's mark because the addition of generic or descriptive terms and gTLDs to its mark does not distinguish the disputed domain names from the mark incorporated therein per Policy ¶ 4(a)(i). An addition to a complainant's mark such as a generic and/or descriptive term and a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum  July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant's registered mark).The Panel finds that the disputed domain name merely adds descriptive terms "isu" (an abbreviation for "Information Systems Unit") and "tpst" (an abbreviation for "Toxicity Prediction Software Tool") and the ".xyz" gTLD, and thus it is confusingly similar to Complainant's ABBVIE mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant claims Respondent does not have rights or legitimate interests in the disputed domain names as Respondent is not licensed or authorized to use Complainant's ABBVIE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The unmasked WHOIS information for the disputed domain names lists the registrant as "ZHOU BILI / SHANLAN ASDWW." The Panel finds that there is nothing in the records to suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant also argues Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant. The Panel finds that the disputed domain name's resolving website displays Complainant's mark and contains a page where users were asked to insert username and password information, in an attempt to phish for personal or confidential information of Internet users.

 

The Panel finds that such a fraudulent use of the disputed domain name to impersonate and create a false connection with Complainant, in an attempt to phish for personal information and defraud consumers does not make a legitimate use of the domain name or bona fide offering of goods and services. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) ("In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant's mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name."); see also Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (finding that the respondent's use of disputed domain name to phish for personal information of Internet users was not bona fide offering of goods or services or legitimate noncommercial or fair use of disputed domain name pursuant to Policy).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the disputed domain name in bad faith as Respondent registered and uses the disputed domain name to impersonate and create a false connection with Complainant. As noted above, Respondent attempted to impersonate Complainant in an attempt by Respondent to obtain personal and/or account information from unsuspecting Internet users. The Panel finds that such false association, passing off and phishing in violation of Complainant's intellectual property rights constitute bad faith use and registration. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) ("Respondent's use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used domain name to phish for personal information from Internet users).

 

Next, Complainant argues Respondent's registration of the disputed domain name with knowledge of Complainant's rights in its well-known ABBVIE mark is evidence of bad faith registration and use. The Panel infers, from the website which prominently uses the ABBVIE mark as well as the fame of the ABBVIE mark that Respondent had knowledge of Complainant's rights in the ABBVIE mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <abbvieisu-tpst.xyz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: August 20, 2024