WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceuticals USA, Inc v. Private Registration / Hola Domains, Hola Dominios Limitada
Case No. D2020-0569
1. The Parties
The Complainant is Teva Pharmaceuticals USA, Inc., United States of America (“United States” or “U.S.”), represented by Silka Law AB, Sweden.
The Respondent is Private Registration, United States / Hola Domains, Hola Dominios Limitada, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <meltev.com> is registered with DropCatch.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2020, 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 March 24, 2020.
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 March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2020.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 5, 2020. 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 was established in 1901, and operates a pharmaceutical company producing generic medicine in many therapeutic areas. The Complainant has produced pharmaceuticals for a wide range of health problems, including disorders of the central nervous system, pain relief and a portfolio of respiratory products. In 2017, the Complainant produced approximately 120 billion tablets and capsules at dozens of manufacturing facilities worldwide. The Complainant has a business presence in over 60 countries and employs approximately 45,000 around the world.
The Complainant owns a trademark registration and an allowed application for MELTEV as listed below:
Benelux registration No. 1410970 for MELTEV registered on February 2, 2010;
U.S. application No. 88/227,614 for MELTEV filed on December 13, 2018.
The disputed domain name <meltev.com> was registered on February 25, 2020. At the time the Complainant was filed, the disputed domain name reverted to a parking page indicating that the disputed domain name was available for purchase.
5. Parties’ Contentions
The Complainant submits that the disputed domain incorporates its unique registered trademark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) designation “.com” does not differentiate the disputed domain name from the MELTEV trademark in any meaningful manner, and is therefore confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The disputed domain name <meltev.com> was originally registered just three days after the Complainant filed its application for MELTEV in the U.S. The disputed domain name then expired on February 27, 2020 and before the Complainant could acquire it, the disputed domain name was purchased by the Respondent. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services. The disputed domain name reverts to a parking page where it is offered for sale in the amount of USD 6,799, which is much higher than the Respondent’s expense in purchasing or renewing the disputed domain name.
The Complainant also submits that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name <meltev.com> for the purpose of resale for an amount greater than the cost of registering the disputed domain name. The trademark MELTEV is unique and distinctive, and the Respondent must have known that it was a pharmaceutical trademark owned by the Complainant. The fact that the disputed domain name was originally registered three days after the Complainant filed its trademark registration in the U.S. is evidence that the disputed domain name was clearly registered with the Complainant in mind.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the trademark MELTEV by virtue of the registration and allowed application listed in section 4 of this Decision. The MELTEV trademark is distinctive and unique, as it appears to have no meaning as a word in English or otherwise.
The Panel finds that the disputed domain name <meltev.com> is identical to the Complainant’s trademark as the disputed domain name incorporates the Complainant’s MELTEV trademark in its entirety. The addition of the gTLD does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests. The Complainant owns rights in the MELTEV trademark as noted in section 4 of this Decision. The disputed domain name consists of the distinctive trademark MELTEV itself. Respondent was never authorized or licensed to use the MELTEV mark. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was likely aware of the Complainant’s trademark. The Respondent chose to use the disputed domain name to direct customers to a parking site which offers to sell the disputed domain name in excess of the Respondent’s expenses for purposes of monetary gain, which is not a bona fide offering of goods and services under the Policy.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The circumstances of this case, as disclosed in the Complainant’s evidence, lead to the inference that the Respondent must have registered (or acquired) and thereafter used the disputed domain name with the Complainant in mind. The disputed domain name <meltev.com> contains the Complainant’s unique registered trademark in its entirety. The Respondent immediately confirmed its intention to capitalize on Complainant’s brand by offering to sell the disputed domain name for a substantial amount (USD 6,779), representing a significant monetary gain. This kind of conduct, for which Respondent has offered no explanation or justification, supports a finding of registration and use in bad faith.
The Complainant has therefore satisfied the requirements 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 the disputed domain name <meltev.com> be transferred to the Complainant.
Christopher J. Pibus
Date: May 19, 2020