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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-1337

1. The Parties

The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA Law AB, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“US”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <tevaseverancebenefit.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2020. On May 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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 June 3, 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 June 4, 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 June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2020.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 8, 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 Teva Pharmaceutical Industries Ltd is one of the largest pharmaceutical companies worldwide, established since 1901. The Complainant is one of the world’s largest generic medicines producer, leveraging a portfolio of more than 1,800 molecules to produce a wide range of generic products in numerous therapeutic areas.

The Complainant is active at dozens of manufacturing facilities worldwide. It is present in over 60 countries and employs approximately 45,000 employees around the world. Evidence of these allegations was presented as Annex 4 of the Complaint.

As shown in Annex 6, the Complainant owns several registrations for the mark TEVA throughout the world, with attention to the registrations granted in the US, where the Respondent is seated, including the mark TEVA, United States registration number 1,567,918, registered on November 28, 1989.

The Complainant has registered a comprehensive number of domain names incorporating the mark TEVA. Among these, it is important to mention the domain name <tevaseverancebenefits.com>, registered since 2019 and used for the employees of the Complainant. Evidence of these registrations appear as Annex 7.

The disputed domain name was registered on April 6, 2020. The disputed domain name dynamically redirects to various third party websites, including to a page that provides links to several different websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s marks registered and used worldwide. In fact, the only distinctive term included in the disputed domain name is “teva”, which is identical to the Complainant’s registered mark.

The expression chosen by the Respondent to compose the disputed domain name together with “teva” is “severance benefit”, which is virtually identical to the expression adopted by the Complainant to compose a domain name used for its employees and registered since 2019, namely <tevaseverancebenefits.com>.

As one can observe, the disputed domain name is virtually identical to the one previously registered by the Complainant, differing for just one “s” at the end. This similitude clearly leads to confusion, given the presence of the Complainant’s mark and the difference of just one letter.

The Complainant owns several registrations worldwide for the trademark TEVA, as well as several domain names bearing this mark, as evidenced by Annexes 6, 7, and 8 of the Complaint. Also, robust evidence of the renown of the mark TEVA was produced, as shown in Annex 5 of the Complaint.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark and of a domain name used by the Complainant for its employees – shows a clear intention of misleading Internet users and redirects to various websites which asks the user to download software with malware. The Complainant underlines that the disputed domain name gives the impression that it is associated with the Complainant.
The Complainant tried to contact the Respondent by a cease and desist letter, that was further readdressed two times, but no response was received from the other party.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii. the Respondent has no rights or legitimate interests in respect to 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

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark TEVA, registered throughout the world.

Further, the Panel finds that disputed domain name is indeed confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name registered by the Respondent with the addition of descriptive terms that are identical to the ones adopted by the Complainant in one of its domain names. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel notes the Complaint provides clear evidence that the trademark TEVA is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent. Furthermore, there is no evidence before the Panel that the disputed domain name has been used for a legitimate noncommercial or fair use, or that the Respondent has made a bona fide offering of goods or services under the disputed domain name. Accordingly, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.

The use of the disputed domain name is intentionally misleading for consumers – the adoption of a domain name that reproduces the one owned by the Complainant differing by just one “s” supports this finding.

The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights and legitimate interests in the disputed domain name, noting also that the cease and desist letter and present proceeding were ignored by the Respondent, that has not been rebutted by the Respondent.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Panel finds that the disputed domain name was likely registered to mislead Internet consumers.

Further, the additional expression can surely be considered an allusion to the Complainant’s business, giving Internet users the impression that the disputed domain name belongs to the Complainant – which is even more highlighted by the fact that the disputed domain name is virtually identical to one of the domain names owned and used by the Complainant, <tevaseverancebenefits.com>, with the exception of a final “s”.

The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may be intended for illegitimate purposes.

The use of the disputed domain name to dynamically resolve to various websites, including some that may contain malware, supports a finding of bad faith in the circumstances of this case.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant when registering the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved the third element of the Policy.

7. Decision

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 <tevaseverancebenefit.com> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: July 22, 2020

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