WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Ltd v. Domain Administrator, PrivacyGuardian.org / Ikbal Tanca
Case No. D2019-0393
1. The Parties
The Complainant is Teva Pharmaceutical Industries Ltd of Jerusalem, Israel, represented by SILKA Law AB, Sweden.
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Ikbal Tanca of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <copaxone-pen.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 22, 2019.
The Center verified that the Complaint together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on February 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 21, 2019. 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 a pharmaceutical company founded in 1901. The Complainant is active in over 60 countries and employs 45,000 people. Among the pharmaceutical products sold by the Complainant is a treatment for multiple sclerosis sold under the name “Copaxone”, which has been available in the United States since 1996 and the European Union since 2001.
The Complainant is the owner of United States Trade mark registration No. 1816603 for a mark consisting of the word “copaxone” (the “COPAXONE Mark”), registered on January 18,1994. The Complainant is also the owner of a European Union Trade Mark for COPAXONE-PEN (the “COPAXONE PEN Mark”), registration No. 017900942 which was registered on October 18, 2018 and applied for on May 17, 2018, which is the date the Domain Name was registered.
The Domain Name was registered on May 17, 2018. The Domain Name redirects to a parking page which states that “This domain is parked free of charge with NameSilo.com.” and provides additional information on the Registrar’s services.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s COPAXONE and COPAXONE PEN Marks;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the COPAXONE and COPAXONE PEN Marks, being the owner of trade marks registered in the United States and the European Union for the COPAXONE and COPAXONE PEN Marks. The Domain Name incorporates the COPAXONE and COPAXONE PEN Marks in their entirety and hence is confusingly similar to the COPAXONE and COPAXONE PEN Marks.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the COPAXONE and COPAXONE PEN Marks. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name has been used to resolve to a parked website which does not indicate a legitimate interest in the Domain Name.
The Respondent has registered and proposes to use the Domain Name in bad faith. The COPAXONE and COPAXONE PEN Marks are or contain invented words with no meaning which suggests that the Respondent must have known of the Complainant at the time of registration and there is no way to use the Domain Name other than by reference to the Complainant. There is no plausible circumstance under which the Respondent could legitimately use the Domain Name other than in bad faith. The Respondent failed to respond to a cease and desist letter sent by the Complainant. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the COPAXONE and COPAXONE PEN Marks, having registrations for the COPAXONE PEN Mark as a trade mark in the EU and the COPAXONE Mark as a trade mark in the United States.
Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is identical to the COPAXONE PEN Mark and confusingly similar to the COPAXONE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the COPAXONE and COPAXONE PEN Marks or a mark similar to the COPAXONE and COPAXONE PEN Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent must have been aware of the Complainant and its reputation in the COPAXONE and COPAXONE PEN Marks at the time the Respondent registered the Domain Name. “Copaxone” is not an ordinary English word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the COPAXONE Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the COPAXONE Mark. Furthermore the decision of the Respondent to register a domain name identical to the COPAXONE PEN Mark on the day the application to register the COPAXONE PEN Mark was filed is unlikely to be coincidence and further suggests that the Respondent registered the Domain Name with the Complainant in mind.
The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name, the failure to reply to the Complainant’s cease-and-desist letter, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that is identical to the name of the Complainant’s COPAXONE PEN Mark and the lack of any apparent legitimate reason for the registration and use of the Domain Name, that the Domain Name is most likely being held pending use as website that, without the license of the Complainant, will offer or make reference to the Complainant’s Copaxone Pen product, or products that purport to compete with the Complainant’s Copaxone Pen product. As such Panel finds that the passive holding of Domain Name does not prevent a finding of in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that Domain Name <copaxone-pen.com> be transferred to the Complainant.
Date: March 23, 2019