DECISION

 

AbbVie Inc. v. Smith John

Claim Number: FA2601002197469

 

PARTIES

Complainant is AbbVie Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Smith John ("Respondent"), Oklahoma, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mexico-abbvie-ms.com>, 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 1, 2026; Forum received payment on January 1, 2026.

 

On January 5, 2026, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <mexico-abbvie-ms.com> 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 January 5, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2026 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@mexico-abbvie-ms.com. Also on January 5, 2026, 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 January 27, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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

Complainant contends in part as follows:

 

Complainant AbbVie Inc. is a specialty-focused research-based biopharmaceutical company that employs approximately 50,000 persons worldwide in over 70 countries, and the company has well over $54 billion in annual revenues.

 

Complainant is the owner of the ABBVIE trademark, which is registered in many countries around the world, for a variety of medical services, research and development, as well as a variety of pharmaceutical preparations and substances.

 

Complainant's registrations for the ABBVIE mark were applied for and issued well before the registration date for the disputed domain. Prior ICANN panelists have found that the ABBVIE mark is well-known and famous.

 

IDENTICAL OR CONFUSINGLY SIMILAR DOMAIN NAME. The domain name is confusingly similar to Complainant's ABBVIE trademark. It includes the ABBVIE trademark in its entirety preceded by the country name "Mexico" with a hyphen before ABBVIE and followed by a hyphen and the letters "ms" and adding the common domain name the gTLD, ".com." This is not sufficient to distinguish the domain name from the ABBVIE trademark.

 

NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME. Respondent is not commonly known by Complainant's ABBVIE mark, nor has Respondent used the at-issue domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

 

According to WHOIS, Respondent's identity is privacy protected. Respondent is "Smith John." Respondent is not commonly known by Complainant's ABBVIE mark or affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant's ABBVIE mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant's goods and services.

 

The at-issue domain does not currently resolve. Previously, the domain resolved to a site in Spanish that contains the ABBVIE mark and asks for usernames and passwords. This display is identical to a recent decision in AbbVie Inc. v. shen lei, FA 2192087 (Forum Dec. 29, 2025) involving the domain name <abbvie-ms.com>.

 

Based on the fame of the ABBVIE trademark there is no legitimate right or interest that Respondent could have in this domain name.

 

That the domain once resolved to a page which required a username and password for access, is an indication that Respondent may be engaging in conduct best characterized as "phishing."  This is also not a legitimate use.

 

Additionally and as mentioned, currently the at-issue domain name does not resolve. One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."

 

Respondent has registered a domain name that is confusingly similar to the famous ABBVIE trademark and is using it to impersonate Complainant and create a false connection with Complainant in an attempt to phish for personal information which is not a bona fide offering or goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

REGISTRATION AND USE IN BAD FAITH. There is no possible use that Respondent could make of the at-issue domain name that would not be in bad faith. Respondent registered the domain name with knowledge of Complainant's rights in the ABBVIE trademark and intended to create an association with Complainant and its products and services. Respondent's registration of the at-issue domain name with knowledge of Complainant's rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Respondent's nonuse of the confusingly similar domain name also indicates Respondent's bad faith under Policy ¶ 4(a)(iii). Respondent has registered a domain name that is confusingly similar to the famous ABBVIE trademark and is using it to impersonate Complainant and create a false connection with Complainant in an attempt to phish for personal information which is not 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). Further, because Respondent's previous resolving webpage sought to obtain users' personal information (username and password), bad faith is present. Finally, Respondent's failure to use the domain name is indicative of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the ABBVIE mark.

 

Respondent is not affiliated with Complainant and is not authorized to use the ABBVIE mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in ABBVIE.

 

Respondent holds the at-issue domain name passively and previously used the domain name to address a webpage that required a username and password to access.

 

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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's registration of the ABBVIE mark with the USPTO or any of its many other trademark registrations for such mark worldwide demonstrates Complainant's rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).

 

Respondent's <mexico-abbvie-ms.com> domain name contains Complainant's entire ABBVIE trademark, prefixed with the geographic term "Mexico" and an irrelevant hyphen followed by another hyphen and the letters "ms," with all followed by the ".com" top-level domain name. The differences between Complainant's ABBVIE trademark and Respondent's at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent's <mexico-abbvie-ms.com> domain name is confusingly similar to Complainant's ABBVIE trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.")

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. 

 

The WHOIS information for the at-issue domain name ultimately leads to identifying <mexico-abbvie-ms.com>'s registrant as "Smith John" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <mexico-abbvie-ms.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <mexico-abbvie-ms.com> for the purposes of Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 620789 (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).

 

Respondent's <mexico-abbvie-ms.com> domain name currently fails to address an active website and instead returns a system error message indicating that "this site can't be reached." Passively holding a confusingly similar at-issue domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) ("Respondent's domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).")

 

Likewise, Respondent's prior use of the domain name to address a webpage that required a username and password to access thereby suggesting that Respondent was using the page to fraudulently collect personal private information also shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See AbbVie Inc. v. ZHOU BILI / SHANLAN ASDWW, FA 2107910 (Forum Aug. 20, 2024) (finding that the at-issue domain name's website, where users were asked to insert username and password information in an attempt to phish for personal or confidential information of Internet users to defraud consumers, does not make a legitimate use of the domain name or bona fide offering of goods and services.

 

Given the foregoing, Respondent lacks rights and lacks legitimate interests in respect of the at-issue domain name.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, Respondent acted in bad faith.

 

Respondent's at-issue domain name currently fails to address any substantive content and can thus be considered inactive. Respondent's passive holding of the <mexico-abbvie-ms.com> domain name disrupts Complainant's business and demonstrates bad faith registration and use under Policy ¶ 4(b)(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."); see also, Solar Turbines v. Ogunade FA 1811640 (Forum Nov. 11, 2018) (". . . Respondent inactively holds the <solarsturbines.com> domain name, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(a)(iii).")

 

Respond previously used the at-issue domain name to address a webpage requiring a username and password to access thereby suggesting that Respondent may be engaged in "phishing." Respondent's "phishing" also shows Respondent's bad faith registration and use of the at-issue domain name. See McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA 1580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users' personal information).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the ABBVIE mark when Respondent registered <mexico-abbvie-ms.com> as a domain name. Respondent's actual knowledge is evident from the notoriety of Complainant's famous ABBVIE trademark. Respondent's registration and use of a confusingly similar domain name with knowledge of Complainant's rights in ABBVIE further demonstrates Respondent's bad faith. 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

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 <mexico-abbvie-ms.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Paul M. DeCicco, Panelist

Dated: January 28, 2026