WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Ltd v. Apex Domain Pty Ltd
Case No. DAU2014-0001
1. The Parties
The Complainant is Teva Pharmaceutical Industries Ltd of Jerusalem, Israel, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Apex Domain Pty Ltd of Bankstown, Australia.
2. The Domain Name and Registrar
The Disputed Domain Name <tevapharm.com.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2014. On January 14, 2014, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2014, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2014.
The Center appointed Philip N Argy as the sole panelist in this matter on February 19, 2014. 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint and its annexures, remain uncontested:
The Complainant is a global pharmaceutical company incorporated in Israel on February 13, 1944. It also has an Australian subsidiary which was incorporated on June 7, 1985. The Complainant has over 46,000 employees and operates in 60 countries, being ranked in the top 10 of global pharmaceutical companies. Its revenue for the three months ended September 30, 2013 amounted to USD 5.1 billion.
The Complainant is the registered proprietor of the trademark TEVA in numerous countries including the United States of America and Australia, and is the owner of the European Community trademark registration for this mark. The first registration was recorded on July 5, 1977. In addition, the Complainant is publicly listed on both the New York Stock Exchange and the Tel Aviv Stock Exchange and has been described by the financial press as “the world’s largest generic medicines group”. The Complainant’s US subsidiary registered the domain name <tevapharm.com> on June 14, 1996, 17 years prior to the Respondent’s registration of the Disputed Domain Name on June 1, 2013.
The Disputed Domain Name resolves to a website which contains pay-per-click (“PPC”) advertising links to websites at which pharmaceutical products are offered.
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered or is subsequently being used in bad faith.
In relation to the first ground of the Policy, the Complainant submits that the Disputed Domain Name is identical or confusingly similar to its registered trademark TEVA. It notes that the Disputed Domain Name wholly includes its registered trademark and that the “.com.au” second level domain identifier is not a distinguishing feature. Furthermore, it argues that the descriptive term “pharm” is likely to enhance rather than detract from the confusing similarity since it reinforces the assumption that any website to which the Disputed Domain Name might resolve would be associated with the Complainant’s business and products.
In relation to the second ground of the Policy the Complainant notes that the Respondent is not now and never has been known by the Disputed Domain Name and that there is no evidence, historical or present, to suggest that the Respondent registered the Disputed Domain Name as a trademark, trade name, personal name or that it has ever acquired any common law rights through the use of “tevapharm”. The Complainant notes that, at the time of registration of the Disputed Domain Name, it would have been remarkably difficult to avoid awareness of the Complainant’s brand considering the global scope and breadth of its business.
The Complainant cites in support the learned panel’s opinion in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, to the effect that “a sophisticated domainer who regularly registers domain names for use as pay-per-click landing pages cannot be wilfully blind to whether a particular domain may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge”. The Complainant also makes the point that if any of the links on a PPC landing page are taking advantage of the Complainant’s trademark, that is neither a fair nor a noncommercial use, citing Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753, in support of that proposition. It says that the PPC links have the sole purpose, and are intended to capitalize on, the goodwill that inheres in its trademarks.
In support of the third ground of the Policy the Complainant notes that the Respondent is associated with a vast portfolio of more than 4,000 domain names which it says constitutes “overwhelming and unrefuted evidence of the Respondent’s tactical activities as a serial cybersquatter”. (See Guccio Gucci S.p.A v. Zhao Ke/ Yeli / Corporate Domains, Inc / Li Ye, WIPO Case No. D2012-0357). The Complainant submits that this conduct, which includes the registration of <lufthansa.com.sg>, <andritzgroup.com> and <naturalizer.co>, comes within the operation of paragraphs 4(b)(ii) and (iii) of the Policy and shows that the Respondent or its associates has a history of registering multiple famous trademarks as domain names in an attempt to prevent the owners of those marks from reflecting them in corresponding domain names, and constitutes bad faith conduct to block or otherwise disrupt the business or activities of the trade mark owners. The Complainant also relies on the false, incomplete and inadequate WhoIs information as a sign of the Respondent’s bad faith.
The Complainant notes that the website to which the Disputed Domain Name resolves would be expected by the public to contain information about the Complainant’s products and services and will consequently be misled by the PPC links they encounter which take them to other sites at which products competitive with those sold by the Complainant are offered.
Finally, the Complainant notes that the Disputed Domain Name has resolved to a PPC page hosted by Sedo.com from the moment of its first registration, thus negating any intent on the part of the Respondent to create and use a bona fide website.
No communication has been received from the Respondent.
6. Discussion and Findings
As a preliminary matter the Panel notes that the Complaint names both Apex Domain Pty Ltd and Chistovich Vyacheslav as respondents. However, the WhoIs record clearly shows that Apex Domain Pty Ltd alone is the registrant of the Disputed Domain Name. Although Chistovich Vyacheslav is named as both Administrative and Technical contact with an id of VYCH1000, that does not make him or her liable as a respondent. Accordingly, the Panel determines that Chistovich Vyacheslav’s name should be removed as a respondent and has considered the matter on that basis.
Despite the lack of a Response, the Complainant bears the onus of proof in relation to each ground of the Policy, and the Panel must be persuaded on the balance of probabilities that each ground has been made out.
A. Identical or Confusingly Similar
The Disputed Domain Name incorporates the whole of the Complainant’s TEVA trademark, and adds “pharm” as a suffix together with the second level and country code Top Level Domain identifiers “.com.au”. Whilst the addition of “pharm” is enough to preclude the Disputed Domain Name from being identical to the Complainant’s registered trademark TEVA, it is also the element that ensures that the Disputed Domain Name is confusingly similar to that mark, and the Panel accepts the Complainant’s submissions in so finding.
B. Rights or Legitimate Interests
When a respondent remains completely silent in the face of a prima facie case that it lacks any rights or legitimate interests in respect of a domain name, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. Here the Complainant has presented an abundance of evidence to show that the Respondent has no plausible right or legitimate interest in respect of the Disputed Domain Name and the Panel so finds.
C. Registered or Subsequently Used in Bad Faith
The Disputed Domain Name was registered 17 years after the registration of <tevapharm.com> and 36 years after the first registration of TEVA as a trademark. Those two facts alone would create a suspicion on the part of the Panel that the Disputed Domain Name had been registered in bad faith. When combined with the clear pattern of behavior of people associated with the Respondent (the association being proven by common emails for admin contact for example) in registering over 4,000 famous marks as domain names, the Panel has no inhibition in finding the third ground of the Policy made out and it so finds for the reasons given by the Complainant.
7. Appropriate remedy
Unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the auDRP does not permit a Panel to order the transfer of a domain name to a complainant unless that complainant is “otherwise eligible to hold that domain name”. In this case the Complaint does not address that issue in terms. It does, however, indicate that the Complainant has an Australian subsidiary, which the Panel is prepared to assume could become the formal registrant of the Disputed Domain Name as the Complainant’s nominee.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tevapharm.com.au> be transferred to the Complainant.
Philip N Argy
Dated: March 3, 2014