Abbott Laboratories v. Kumar Patel
Claim Number: FA0606000740337
Complainant is Abbott Laboratories (“Complainant”), represented by Mark V.B. Partridge, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Kumar Patel (“Respondent”), 5 Stanborough House, Wisbech, Cambs PE14 9QB, UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abbott-laboratories.com>, registered with Totalregistrations of Cheshire, England.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On June 28, 2006, Totalregistrations confirmed by e-mail to the National Arbitration Forum that the <abbott-laboratories.com> domain name is registered with Totalregistrations and that the Respondent is the current registrant of the name. Totalregistrations has verified that Respondent is bound by the Totalregistrations registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 24, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A Response was received on July 24, 2006 but determined to be deficient because the National Arbitration Forum did not receive the Response in hard copy form pursuant to ICANN Supplemental Rule #5(a).
Although Respondent has not complied with the letter of the rules in filing its Response, the Panel has determined, in the interests of justice, to consider the entire content of the deficient Response in rendering this Decision.
Complainant timely filed an Additional Submission under date of July 31, 2006. That Additional Submission was filed in compliance with Supplemental Rule 7, and will therefore be considered by the Panel in the ordinary course.
On August 1, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends, among other things, that:
Complainant is a global healthcare company with sales in 2005 totaling more than USD 22 billion.
Since at least as early as 1888, Complainant and its predecessors have used the trademarks ABBOTT and ABBOTT LABORATORIES in connection with their marketing of a wide variety of goods and services in the healthcare industry.
Complainant has longstanding common law rights to the ABBOTT LABORATORIES mark and has registered its ABBOTT mark with the pertinent authorities in the United States, the United Kingdom and the European Union.
Complainant’s marks have become famous worldwide and represent valuable goodwill.
Respondent registered the disputed domain name on June 1, 2005, long after Complainant had acquired both its common law and statutory rights in its marks.
The web site located at the contested domain name displays Complainant’s marks, as well as its registered logo.
The same web site purports to be a complaint site featuring articles critical of Complainant and its products and services.
Respondent is a cyber-squatter who has been involved in numerous UDRP proceedings, including those brought by Eastman Chemical Co., Endo Pharmaceuticals Inc. and Auxilium Pharmaceuticals, Inc.
The subject domain name is confusingly similar to Complainant’s ABBOTT mark and identical to its ABBOTT LABORATORIES mark.
Respondent is not commonly known by either of Complainant’s marks, and has not acquired any trademark, service mark or other rights in either of them.
Complainant has not licensed or otherwise authorized Respondent to use its marks in any domain names.
The contested domain name falsely implies an association between Complainant and Respondent’s web site, which Respondent exploits to lure unsuspecting Internet users to that site.
Respondent registered and uses the offending domain name in bad faith.
Respondent contends, among other things, that:
Respondent’s use of Complainant’s marks in its domain name is not done in connection with any aspect of trade or commerce.
Complainant is the rightful owner of both its ABBOTT and ABBOTT LABORATORIES trademarks.
Respondent’s web site is devoted entirely to criticism of Complainant.
The web site to which Respondent’s domain name resolves contains a prominent disclaimer of any affiliation with Complainant.
This proceeding is no more than an attempt by Complainant to shield itself from criticism by Respondent or members of the public.
There is no dispute that the subject domain name is confusingly similar to Complainant’s trademarks.
Respondent has the right to use Complainant’s marks in non-commercial activity consisting entirely of criticism of Complainant and its goods and services, which is a permitted fair use under the Policy.
There is no dispute that Respondent has never been commonly known by the subject domain name.
In bringing this proceeding, Complainant is guilty of reverse domain name hijacking.
Respondent is not a commercial competitor of Complainant, and Respondent’s web site does not disrupt Complainant’s business.
Complainant’s Complaint makes clear that this proceeding represents a misuse of the Policy to pursue what is at base a trademark infringement dispute that ought properly to be left to the appropriate national courts.
C. Additional Submissions
Complainant, in its Additional Submission, contends, among other things, that:
Respondent is not a customer or former employee of Complainant, and so cannot legitimately claim the right to use its domain name in fair use criticism of Complainant.
Respondent’s true purpose in registering and using its domain name is to harass Complainant and to interfere with its business.
Complainant does not contest Respondent’s right of free speech, but only its illicit use of Complainant’s marks in pursuing its objectives.
(1) the domain name registered by Respondent is identical and confusingly similar to trademarks in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the domain name;
iii. the domain name has been registered and is being used in bad faith.
Preliminary Issue: The Panel’s Jurisdiction Under the Policy
Before addressing the substantive questions posed by the parties’ contentions, we first note that Respondent contends that Complainant’s contentions consist of what is essentially a complaint for trademark infringement which ought to be decided in the appropriate national courts. It is of course true that the Policy’s dispute resolution procedure is intended solely to address a narrow class of abusive domain name registrations, and necessarily relegates all other disputes between the parties to the courts. See, e.g., AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002):
[A]ssertions [of trademark infringement] are entirely misplaced and totally inappropriate for resolution through an ICANN proceeding. The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else.
It is also true that some of the language used by Complainant in its submissions in this proceeding is reminiscent of that commonly found in trademark infringement cases. The Panel will, however, limit its consideration of the allegations of the Complaint to those directly pertinent to issues properly considered under the Policy.
To satisfy the requirements of ¶ 4(a)(i) of the Policy, Complainant must first demonstrate that it has rights in the mark(s) on which it bases its Complaint. One of Complainant’s marks is registered with the pertinent national authorities. The other is not. Registration of a mark satisfies the terms of the Policy perforce. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). It is also true, however, that the Policy recognizes rights in a mark that are not so registered, provided that a complainant’s use of a mark meets the standards of the common law. In this instance, Complainant alleges that its unregistered mark has been in longstanding and widespread use in commerce within the healthcare industry and has thus become famous and acquired valuable good will. This is sufficient to establish Complainant’s common law rights in the mark for purposes of the Policy. See Sydney Markets Ltd. v. Rakis, D2001-0932 (WIPO Oct. 8, 2001).
For these reasons, and because Respondent does not dispute that Complainant has rights in its marks, we may turn to the companion question under Policy ¶ 4(a)(i), which is whether Respondent’s domain name is identical or confusingly similar to Complainant’s marks, or either of them. In this regard, Complainant argues that the contested domain name is confusingly similar to its registered ABBOTT mark and substantively identical to its unregistered ABBOTT LABORATORIES mark. We consider these claims separately.
As to the registered ABBOTT mark, it is well established that the addition to a mark of a generic term (here “laboratories”), which is descriptive of Complainant and its business, does not distinguish a domain name from the mark sufficiently to avoid condemnation under the Policy. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000). As to the unregistered ABBOTT LABORATORIES mark, the domain name is indeed substantively identical to that mark, differing from it only by the addition of a hyphen between the two terms. Such a superficial difference cannot save the domain name from the reach of the Policy. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005). Likewise, the presence of the required top level domain name to Complainant’s marks in each instance does not change this outcome. See Eastman, supra.
Accordingly, and because Respondent does not contest Complainant’s contentions under this heading, the Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the subject domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it has such rights or interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent upon that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, an assertion by a complainant that a respondent has no rights or legitimate interests in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In its defense, Respondent relies entirely upon the provisions of Policy ¶ 4(c)(iii) in asserting that its use of Complainant’s marks constitutes a “legitimate non-commercial or fair use” aimed at fair criticism of Complainant and its products and services, which use the Policy does not condemn. Respondent also asserts that the web site to which its domain name resolves contains a prominent disclaimer of any affiliation with Complainant. The contentions of the parties thus frame what has come to be called a “trademark-plus-top-level-domain” or “TM.TLD” criticism case.
It appears from its submission that Respondent takes the view that, so long as it exercises free speech rights at its web site, it may employ Complainant’s entire ABBOTT LABORATORIES mark in its domain name to attract Internet users to that site, and that the posting of a non-affiliation disclaimer on the site answers all related questions. In this Respondent is mistaken. See Prem Rawat Found. v. Leason, FA 231883 (Nat. Arb. Forum Mar. 27, 2004):
[W]hile the content of Respondent’s website may enjoy First Amendment protection, such protection does not spawn rights or legitimate interests with respect to a domain name which is confusingly similar to another’s trademark.
The error of Respondent’s thesis arises from the fact that the use of Complainant’s entire protected mark as the sole core of the disputed domain name impermissibly lures unsuspecting Internet users to the offending site in the belief that they are visiting a site sponsored by Complainant. See Covance, Inc. v. The Covance Campaign, D2004-0206 (WIPO Apr. 30, 2004):
[T]he Policy does not countenance any type of ‘initial confusion’ of the sort which occurs when a member of the public sees the disputed domain name and thinks that it may lead to a website associated with the Complainant. Even where there is a very clear disclaimer on the website which disabuses any notion that the website is endorsed by the Complainant, the consensus view is that the requirement of the Policy that the Respondent makes a “legitimate noncommercial or fair use of the domain name” prohibits any type of initial confusion from being created.
This being so, and notwithstanding that Respondent’s web site contains materials which would qualify as fair criticism of Complainant of the kind contemplated by Policy ¶ 4(c)(iii), Respondent’s creation of a domain name which consists entirely of Complainant’s mark yields the result that Respondent cannot enjoy cover under that proviso.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
In assessing the question whether Respondent has registered and is using the disputed domain name in bad faith, it is customary to resort to the provisions of Policy ¶ 4(b), which recites a list of circumstances which, if found present in a particular case, may be deemed evidence of bad faith. However, where, as here, none of the situations described in Policy ¶ 4(b) is fairly found in the facts of the proceeding, we are permitted to search outside of that proviso for such evidence as may exist on the issue of bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO Jun. 19, 2000).
In this connection, Respondent’s foreknowledge of Complainant’s rights in its marks, and particularly of its registered mark, is pertinent to our inquiry. This is so because it is evident that Respondent registered the contested domain name with actual or constructive knowledge of Complainant’s rights in its ABBOTT mark by virtue of Complainant’s prior registration of that mark with the pertinent national authorities in the United States and Europe. Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration and use of a domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Moreover, we are persuaded that, in the circumstances here presented, Respondent’s use of Complainant’s entire mark as the sole substantive element of its domain name, so as to create initial confusion among Internet users in luring them to its web site, constitutes further evidence of Respondent’s bad faith.
Finally, it is likewise significant in this connection that Respondent has been involved in numerous UDRP proceedings of a similar sort and that his many supposed criticism web sites similarly appropriate famous marks. See CASRO v. Consumer Information Org. LLC, D2002-0377 (WIPO Jul. 19, 2002).
For all of these reasons, the Panel concludes that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Collateral Issue: Reverse Domain Name Hijacking
Respondent accuses Complainant of attempted “reverse domain name hijacking” in filing its Complaint in this proceeding. “Reverse domain name hijacking” is an effort aimed at using the Policy in bad faith to deprive a domain name holder of a name to which it is entitled. Suffice to say that, the Complaint having been upheld, Respondent cannot hope to succeed on this argument. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Macesic, D2000-1698 (WIPO Jan. 25, 2001).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <abbott-laboratories.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 15, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum