WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Limited v. Ahmed Rahul, Dry
Case No. D2019-2488
1. The Parties
The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA Law AB, Sweden.
The Respondent is Ahmed Rahul, Dry, India.
2. The Domain Name and Registrar
The disputed domain name <legalonlineteva.com> (“Disputed Domain Name”) is registered with Nicenic International Group Co., Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 2019, 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.
The Center verified that 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 October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 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 operates an New York Stock Exchange (“NYSE”) listed life sciences business with operations in more than 60 countries. The Complainant holds registrations for the trademark TEVA in a number of countries including Indian registration No. 572847, for example, that has been in effect since May 11, 1992.
The Complainant is also the owner of, inter alia, the domain name <tevapharma.com>, which was registered in 2013.
The Disputed Domain Name <legalonlineteva.com> was registered on March 2, 2019 and it used to resolve to a site claiming to be an online pharmacy where customers could buy medicines without prescription. The site used to request sensitive information such as username and password from the customers.
5. Parties’ Contentions
The Complainant cites its trademark registrations for TEVA in various countries as prima facie evidence of ownership.
The Complainant submits that the trademark TEVA is well known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name <legalonlineteva.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the TEVA trademark and that the similarity is not removed by the addition of the words “legal” and “online” and addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is being used to divert internet users to “an online pharmacy that purports to be a Teva website where customers can buy medicines without prescription” and cites F. Hoffmann-La Roche AG v. Veselko Dragic, Wuntux Trade Ltd., WIPO Case No. D2017-0034, in support of the contention that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademark, and that it was being used to further the perpetration of a fraud as part of a scheme to “impersonate” the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark TEVA. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the TEVA trademark, the Panel observes that the Disputed Domain Name comprises: (a) the word “legal”, (b) followed by the word “online,” (c) followed by an exact reproduction of the Complainant’s trademark TEVA, and (d) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “legalonlineteva.”
It is also well-established that where a domain name incorporates a complainant’s trademark in its entirety, it may be confusingly similar to that mark despite the addition of dictionary words such as, in this case, “legal” and “online” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, supra).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the trademark TEVA is not a dictionary word but rather a highly distinctive name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. The Complainant submits that the Respondent “has not used the Domain Name for a bona fide offering of goods or services” and cites F. Hoffmann-La Roche AG v. Veselko Dragic, Wuntux Trade Ltd., supra, involving an online pharmacy where the Panel stated:
“A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that an online pharmacy, selling or purporting to sell ‘brand and generic mediciations [sic] ...’ from a variety of ‘legit manufacturers ...’, to which a confusingly similar domain name resolves, (particularly one that is confusingly similar because it incorporates a widely‑known mark of one particular pharmaceutical manufacturer out of many mentioned on the website concerned), could amount to a bona fide offering of goods or services. There is no evidence before this Panel that suggests that the Respondent has rights or legitimate interests in the Disputed Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.”
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website at the Disputed Domain Name, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an online scam by pretending to be associated with the Complainant for the purpose of misleading consumers based on the wide recognition of the Complainants’ mark TEVA. It could therefore be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web pages.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark TEVA is so famous a mark for generic pharmaceuticals that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator WIPO Case No. D2010-0532(“The Complainant provides evidence of being widely-known, and of having a large portfolio of registered marks in many jurisdictions”); Teva Pharmaceutical Industries, Ltd v. Oneandone Private Registration, 1&1 Internet Inc / Kristin Beckman, WIPO Case No. D2018-1029 (“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”).
The Panel finds that the trademark TEVA is so wellknown internationally that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, the Panel notes that the Disputed Domain Name used to resolve to an online website that offers pharmaceuticals for sale. In line with prior UDRP panel decisions, the Panel finds that the obvious danger of consumers being afforded inaccurate, incomplete or misleading information about medical products, services and applications and the probable diversion of actual sales reinforces the Respondent’s bad faith (see Roche Products Inc. v. Michael Robert, WIPO Case No. D2008-1155; Parrot S.A. v Whois Service, Belize Domain WHOIS Service, WIPO Case No. D2007-0779; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474).
This Panel finds that the Respondent has taken the Complainant’s trademark TEVA and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 the Disputed Domain Name <legalonlineteva.com> be transferred to the Complainant.
Date: December 5, 2019