DECISION

 

AbbVie Inc. v. Repossessed by Go Daddy

Claim Number: FA2409002114267

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard and Kim Boyle of Richard Law Group, Inc., Texas, USA. Respondent is Repossessed by Go Daddy ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abbv-ie.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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 5, 2024; Forum received payment on September 5, 2024.

 

On September 5, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <abbv-ie.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 September 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@abbv-ie.com. Also on September 9, 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 October 1, 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, as it incorporates the mark in its entirety, with the addition of a hyphen and the ".com" 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 has previously used the disputed domain name to display the mark "ABBVIE" at the top and a "copyright by AbbVie" located at the bottom. At present, the disputed domain is parked and does not resolve to an active website.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent was not only familiar with the ABBVIE mark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the ABBVIE mark in order to create an association with Complainant and its services. Respondent's registration, maintenance, and use 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. Respondent's failure to use the domain name is also indicative of bad faith. Respondent's nonuse of the confusingly similar domain name suggests its bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on August 4, 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. Respondent previously used the disputed domain name to display the mark "ABBVIE" at the top and a "copyright by AbbVie" located at the bottom.

 

4. At present, the disputed domain is parked and does not resolve to an active website.

 

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). The Panel thus finds that Complainant has established rights in the ABBVIE mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues the disputed domain name <abbv-ie.com> is confusingly similar to Complainant's ABBVIE mark as it incorporates the mark in its entirety with the addition of a hyphen and the ".com" gTLD. The Panel notes that the disputed domain name simply separates Complainant's ABBVIE mark into "ABBV" and "IE" with a hyphen. Therefore, the Panel finds that the disputed domain name is confusingly similar to the ABBVIE mark per 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 name 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 argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "Repossessed by Go Daddy" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. Complainant submits that (i) Respondent previously used the disputed domain name to display the "ABBVIE" mark at the top with a "copyright by AbbVie" notice at the bottom; and (ii) the disputed domain is currently parked and does not resolve to an active website. The Panel finds that Respondent's use of the disputed domain name is deceptive and confusing and amounts to passing off. As such it cannot amount to a bona fide offering of goods and services or a non-commercial legitimate or fair use. See JUUL Labs, Inc. v. Harry L. Werner, FA 1880938 (Forum Mar. 10, 2020) ("Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant's business by diverting internet users to a scam website where it sells unauthorized products. Use of a domain name to disrupt complainant's business in order to sell unauthorized products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii).").

 

The Panel also agrees and finds that under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the disputed domain name's resolving website that is blank and lacks content. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

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 contends that Respondent's deliberate selection, maintenance, and use of a domain name incorporating the ABBVIE mark, in connection with a site displaying the "ABBVIE" mark at the top and a "copyright by AbbVie" notice at the bottom, demonstrate intent to mislead or confuse consumers regarding the source or affiliation of its website. As noted above, Respondent previously used the disputed domain name to display the "ABBVIE" mark at the top with a "copyright by AbbVie" notice at the bottom. The Panel finds that Respondent used the disputed domain name to attempt to redirect Internet users by passing itself off as Complainant for commercial gain, and thus Respondent registered and used the disputed domain name in bad faith. See Spotify AB v. Haji Pacman, FA 1713362 (Forum Feb. 21, 2017) ("Respondent uses the disputed domain name to attempt to intercept Internet users by passing itself off as Complainant for commercial gain. . . The Panel finds that Respondent attempted to commercially benefit off Complainant's mark in bad faith.").

 

Next, Complainant argues Respondent's registration, maintenance, and use 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 <abbv-ie.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: October 1, 2024