WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Abbott Laboratories v. Li Jian Fu, Li Jian Fu
Case No. D2016-0501
1. The Parties
The Complainant is Abbott Laboratories of Abbott Park, Illinois, United States of America, represented by Accent Law Group, Inc., United States of America.
The Respondent is Li Jian Fu, Li Jian Fu of Jinan City, Shandong, China.
2. The Domain Name and Registrar
The disputed domain name <abbott.space> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center asking the Complainant to confirm that the Complaint has been transmitted to the Registrar, the Complainant filed two amended Complaints on March 17, 2016.
On March 16, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 16, 2016, the Complainant confirmed its request that English be the language of the proceeding. On March 17, 2016, the Respondent requested that Chinese be the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it will proceed to Panel Appointment on April 24, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on May 2, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner of the ABBOTT trade mark which it asserts to be distinctive and world famous. The name originated from its founder, Dr. Wallace C. Abbott, a physician and drug store proprietor from the 1880's who produced scientifically-formulated medications. The Complainant has since grown into one of the world's leading creators and providers of products and services which promote human health and well-being, with operations in many countries across the world.
The Complainant produces and sells diagnostic, vascular, vision, diabetes and pharmaceutical products in around 120 countries. Its pharmaceutical portion of the business was split off in 2012 to a separate entity, Abbvie.
The Complainant's ABBOTT trade mark has been registered in many countries. The Complainant submitted evidence of its ABBOTT trade mark registrations in the United States of America, China and the European Community. As a result of the Complainant's long and extensive use and efforts to promote the ABBOTT mark, the mark has become globally famous and indicates the source of the Complainant's products and services to the public.
The disputed domain name was registered on December 14, 2015.
5. Parties' Contentions
The disputed domain name is identical or confusingly similar to the Complainant's ABBOTT trade mark. The disputed domain name incorporates the ABBOTT trade mark entirely, and the addition of the generic Top-Level Domain ("gTLD") ".space" does nothing to alleviate confusion with the Complainant's mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name initially resolved to a page with numerous mentions of the Complainant, its "medication", "what does it cure?" and the Complainant's SIMILAC infant feeding formula. The page concluded with the note "If this infringes your right, please contact us immediately. We will delete the infringing content". After a few seconds, the page automatically redirected visitors to a third-party site called "51qgj.com" ("the said site") which showed a number of women's apparel items as well as advertisements for other goods such as coffee and makeup. None of these items bear the ABBOTT trade mark but if a search for the word "Abbott" were conducted at the said site, the results display many of the Complainant's products, specifically its SIMILAC-branded product.
After receipt of notice of this administrative proceeding, the disputed domain name initially resolved to a page with two links labelled "Dresses" and "Webmaster Statistics". When the former is clicked, the Internet user is redirected to the said site; when the latter is clicked, the user is brought to a page for "CNZZ.com", a company offering website traffic analysis, and which features many advertisements.
The capitalizing of a famous trade mark in a domain name for the purpose of redirecting visitors to other commercial websites is not a bona fide use of that domain name. Upon information and belief, the Respondent is not commonly known by the disputed domain name or "Abbott", nor does the Respondent operate a business or other organization under this name or trade mark. Neither does the Respondent own any trademark rights in ABBOTT.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead, the Respondent is using the disputed domain name to confuse and misleadingly divert consumers. Searchers for the Complainant's ABBOTT products or services would be confused into thinking that they were visiting a site of the Complainant until after they redirected to another website offering a variety of other goods. The Respondent's use of the disputed domain name has tarnished and diluted the Complainant's ABBOTT trade mark as the Respondent has diminished the capacity of consumers to associate the ABBOTT mark exclusively with the Complainant. The Respondent cannot legitimately claim it is using the word "Abbott" in some descriptive or generic sense as the products featured at the said site which relate to the word "Abbott" are those sold by the Complainant.
The Respondent has registered and used the disputed domain name in bad faith. The Respondent must have known of and intentionally used the ABBOTT mark without the Complainant's consent. Panelists in previous UDRP cases have recognized the ABBOTT mark to be famous (e.g. Abbott Laboratories v. Richard Dean, NAF Claim No. 1649146; Abbott Laboratories v. Kumar Patel, NAF Claim No. 740337). The Respondent is obtaining commercial gain from its use of the disputed domain name by receiving either affiliate revenue or some other form of compensation for redirecting visitors to the third-party sites. Such use of the disputed domain name disrupts the Complainant's business and is evidence of bad faith use and registration under the Policy. The Respondent is solely responsible for the content of its website including all third-party sites that users are redirected to and advertisements which result therefrom.
Evidence of bad faith is also supported by the fact that the Respondent is the owner of another domain name <psoriasis365.com> which refers to a certain medical condition of the skin which is treated by a medication called HUMIRA. HUMIRA is a trade mark of Abbvie, a former entity of the Complainant. This shows that the Respondent was aware of the Complainant and targeted its ABBOTT mark with the registration of the disputed domain name.
After a letter of demand was sent to the Respondent on January 15, 2016, the Respondent's representative replied, offering to sell the disputed domain name for approximately USD 3,070. The amount was lowered to about USD 2,302 after further correspondence. The Policy states that offering to sell an infringing domain name to a brand owner for a price far in excess of the registration cost is an obvious display of the Respondent's bad faith. The Respondent's registration and renewal expenses must have been small since the disputed domain name was registered only in 2015. The asking price in the tens of thousands of Chinese Renminbi is clearly excessive and demonstrates the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Language of the Proceeding
The Registration Agreement applicable to the disputed domain name is Chinese. The Complaint was filed in English and it was requested by the Complainant for English to be the language of the proceeding. The following reasons were given in support:
(i) The Respondent responded to the Complainant's representative's demand letter of January 2016 which had been written in English, albeit the response was written in Chinese. It shows the Respondent's ability to understand the demand letter.
(ii) There was a communication from the Respondent on January 25, 2016 which stated "I read your email", in reference to the Complainant's demand letter (written in English).
(iii) The ABBOTT trade mark and disputed domain name are composed of words which appear in the English language.
(iv) It would not be fair nor equitable to require the Complainant to incur time and expense or translating the Complaint and evidence into Chinese. The Complainant and its affiliates operate their internationally-diverse offices in the English language.
(v) The Respondent is intentionally seeking to put the Complainant to the added work of translating the Complaint and evidence so as to gain leverage in negotiating a sale of the disputed domain name.
The Respondent requested that Chinese be the language of the proceeding (without providing additional reasons).
Paragraph 11(a) of the Rules stipulates that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
Paragraph 10(b) and (c) of the Rules state as follows:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. … ".
Having considered the circumstances of this case, the Panel is persuaded that the Respondent is capable of comprehending and communicating in English. This is quite evident from the exchange of emails between the Complainant's representative and the Respondent. Whilst the Rules prescribe that the language to be adopted in the proceeding should typically accord with the language of the Registration Agreement, the Panel has also to ensure that the proceeding takes place with due expedition and fairness.
The disputed domain name in this case contains English terms including the Complainant's English-language trade mark. Requiring the Complainant to submit English translations of the documents into Chinese would undoubtedly delay the proceeding. The Panel believes that the Respondent well understands the contents of the Complainant and nature of the proceeding especially since the communications from the Center and applicable deadlines for the administrative proceeding were made in English as well as in Chinese. The Respondent did not, in its email to the Center on February 2016, claim not to understand English.
The Panel therefore determines that English should be the language of the proceeding in this case.
B. Identical or Confusingly Similar
The Complainant has established it has rights in the ABBOTT trade mark. The Panel is further of the view that the ABBOTT trade mark is famous and well-recognized across the world. The disputed domain name is, in effect, identical to the Complainant's ABBOTT trade mark: it incorporates the Complainant's ABBOTT mark in its entirety and the only difference lies in the gTLD, ".space". It is a well-recognized principle that elements such as gTLDs, ".com" and ".biz" are an intrinsic feature of domain name registrations and are to be disregarded for the purposes of paragraph 4(a)(i) of the Policy.
The first criterion of Paragraph 4(a) of the Policy is therefore established.
C. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. The Respondent thereafter has the burden of rebutting the Complainant's case with evidence in support showing its rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established a prima facie case of the Respondent's absence of rights or legitimate interests in the disputed domain name. The ABBOTT mark is well-known and there is no evidence which shows that the Respondent is commonly known by or has rights in the the disputed domain name or a name comprising the word "abbott".
The Panel finds that the Respondent is not making a "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" (paragraph 4(c)(iii) of the Policy).
In the absence of any circumstances evidenced by the Respondent or available in the case file giving rise to any rights or legitimate interests, the second criterion of Paragraph 4(a) is therefore established.
D. Registered and Used in Bad Faith
The Panel finds that the Complainant has established the circumstances set out in paragraph 4(b)(iv) of the Policy, namely that "by using the [disputed] domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location".
The Panel finds that the incorporation of the entire trade mark ABBOTT in the disputed domain name and the way in which the Respondent has used the disputed domain name shows an intention to trade off the goodwill of the Complainant's mark. The Respondent's use of the disputed domain name fits squarely within paragraph 4(b)(iv) of the Policy. It is evident that the Respondent is familiar with the Complainant, its trade marks (ABBOTT and SIMILAC), and its products. The wholesale adoption of the Complainant's well-known mark within the disputed domain name must have been for the sole purpose of attracting Internet users to the Respondent's website. In not filing any Response to the Complainant's case, the Respondent has failed to explain its choice of the disputed domain name or to show its registration and use thereof have been in good faith.
The Panel further notes the Respondent, when put on notice of the dispute, responded by offering to sell the disputed domain name for an amount apparently in excess of its out-of-pocket costs, falling within paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <abbott.space> be transferred to the Complainant.
Date: May 9, 2016