WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries, Ltd v. Oneandone Private Registration, 1&1 Internet Inc / Kristin Beckman
Case No. D2018-1029
1. The Parties
Complainant is Teva Pharmaceutical Industries, Ltd of Jerusalem, Israel, represented by Steven M. Levy, United States of America ("United States").
Respondent is Oneandone Private Registration, 1&1 Internet Inc of Chesterbrook, Pennsylvania, United States / Kristin Beckman, Memphis, Tennessee, United States.
2. The Domain Names and Registrar
The disputed domain names <tevapharmsmiami.org>, <tevapharms.net> and <tevapharms.org> ("Domain Names") are registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 16, 2018.
The Center verified that the Complaint together with the amended Complaint 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 Respondent of the Complaint, and the proceedings commenced on May 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 6, 2018.
The Center appointed Gregor Vos as the sole panelist in this matter on June 8, 2018. 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
Complainant is a globally operating pharmaceutical company.
Complainant is the owner of the following trademark registrations (hereafter: the "Trademarks"):
- United States Trademark registration No. 1567918 for TEVA, registered on November 28, 1989;
- European Union Trade Mark registration No. 001192830 for TEVA, registered on July 18, 2000;
- International Trademark registration No. 851741 for TEVA BIOTECH, registered on April 29, 2005.
Further, Complainant owns the following domain name registrations which wholly incorporate the Trademarks:
The Domain Names were registered by Respondent on February 19, 2018. Respondent uses the Domain Names to redirect Internet users to Complainant's website "www.tevapharm.com".
5. Parties' Contentions
Complainant asserts that the Domain Names are confusingly similar to the Trademarks as the Domain Names consist merely of the Trademarks and an additional descriptive term that closely relates to and describes Complainants business activities. According to Complainant, the descriptive terms only serve to increase the confusing similarity between the Trademarks and the Domain Names.
Furthermore, Complainant claims that Respondent does not hold any rights or legitimate interests with respect to the Domain Names. Respondent is not authorized or licensed by Complainant to register domain names which incorporate the Trademarks. Also, Respondent is not using the Domain Names in connection with a bona fide offering of good or services under the Policy. Respondent would use the Domain Names to redirect Internet users to Complainant's website "www.tevapharm.com". This could in no way be considered a bona fide offering of goods and services under the Policy, or constitute a legitimate noncommercial or fair use of the Domain Names. In addition, Complainant states that there would be no evidence that Respondent is commonly known by the Domain Names, or that it has ever acquired any common law rights through the use of the Domain Names. The WhoIs information discloses that Respondent is named Kristin Beckman. According to Complainant, Respondent's use of the Domain Names was to confuse, mislead or to tarnish the Trademarks. This use could not be considered fair in any way.
Finally, Complainant asserts that the Domain Names have been registered and are being used in bad faith. Complainant states that the Trademarks are well known internationally. As a result, Respondent must have had knowledge of the Trademarks when it registered the Domain Names. In addition, Complainant puts forward that Respondent creates likelihood of confusion by registering the Domain Names which incorporate the Trademarks and by redirecting the Domain Names to Complainant's website. Respondent would thus use the public's awareness of the Trademarks to improperly increase traffic to the Domain Names for its own commercial gain. Further, according to Complainant, bad faith would be evidenced by fact that Respondent has registered three domain names that each infringe upon the Trademarks. This would demonstrate that Respondent is engaging in a pattern of cybersquatting. Complainant also points out that Respondent has utilized a privacy service to register the Domain Names. This would further support the conclusion of bad faith as Respondent caused confusion among Internet users as to the source of the Domain Names by hiding its identity. Finally, Complainant states that Respondent ignored its attempts to resolve the dispute outside of administrative proceedings by not responding to any of the correspondence sent by Complainant to Respondent. This would also be an indication of registration and use in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Based on paragraph 4(a) of the Policy, a request to transfer a domain name must meet three cumulative conditions:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Only if all three elements are fulfilled, the Panel is able to grant the remedies requested by Complainant. As Respondent has not filed a response, the Panel shall rule on the basis of the Complaint.
A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark in which it has rights.
Complainant has sufficiently proven that there are-TEVA trademarks in which it has rights.
The threshold test for confusing similarity under the Policy involves a comparison between the Trademarks and the Domain Names to assess whether the Trademarks are recognizable within the Domain Names. For the purpose of assessing confusing similarity under the Policy, the generic Top-Level Domain ("gTLD") suffix (in this case, ".org" and ".net") is generally ignored in the comparison between the Domain Names and the Trademarks (see-Bialetti-Industrie S.p.A. v. Onno-Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206;- Zions Bancorporation v. Mohammed-Akik-Miah, WIPO Case No. D2014-0269). This case does not contain any indications to the contrary.
The Domain Names incorporate the Trademarks entirely. Additionally, the Domain Names contain either the element "pharms" or "pharms" and "miami". The Panel finds that these elements do not avoid a finding of confusing similarity between the Domain Names and the Trademarks.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
A complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the domain name. If a complainant succeeds in making its prima facie case, the burden of evidentiary production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c) of the Policy provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; and (iii) making legitimate noncommercial or fair use of the domain name.
Complainant states that it has never authorized or licensed Respondent to use the Trademarks. In addition, Complainant submitted that there is no evidence that Respondent is commonly known by the Domain Names. Instead, the WhoIs information discloses that Respondent is named Kristin Beckman. Furthermore, there seems to be no evidence of Respondent's use, or demonstrable preparation of use, of the Domain Names in connection with a bona fide offering of goods and services, as the Domain Names redirects Internet users to Complainant's website "www.tevapharm.com".
The Panel finds that this sufficiently establishes Complainant's prima facie case. The burden of production therefore shifts to Respondent. On its part, Respondent has not provided any indications of rights or legitimate interests in the Domain Names.
Considering the file before it, the Panel holds that Respondent has no rights or legitimate interests in the Domain Names in the sense of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that given Complainant's longstanding, widespread and extensive use of the Trademarks, it would not be feasible to consider that Respondent – at the time of the registration of the Domain Names – could not have known the Trademarks. Respondent knowledge of the existence of the Trademarks is also evidenced by the fact that Respondent has registered three domain names which all incorporate the Trademarks.
In line with prior UDRP panel decisions, the Panel finds that registration of domain names that are confusingly similar (particularly domain names incorporating the trademark plus a descriptive term) to a widely-known trademark by an unaffiliated entity is supportive of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
In addition, the Panel finds that redirecting the Domain Names to Complainant's website "www.tevapharm.com" is further evidence of Respondent's awareness of the Trademarks, and does not provide any plausible basis for the Panel to conclude that the Domain Names were registered for any legitimate purpose. Respondent's use of a privacy service to mask its identity may, in the circumstances, be considered further evidence of Respondent's bad faith.
In light of the above, the Panel finds that Complainant has successfully evidenced that the Domain Names have been registered and are being used in bad faith.
Consequently, the Panel finds that the requirement under paragraph 4(a)(iii) of the Policy has also been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy, the Panel orders that the disputed domain names <tevapharmsmiami.org>, <tevapharms.net> and <tevapharms.org> be transferred to Complainant.
Date: June 22, 2018