WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Limited v. DomainName WebSelf, WebSelf.net
Case No. D2021-0173
1. The Parties
The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
The Respondent is DomainName WebSelf, WebSelf.net, Canada.
2. The Domain Name and Registrar
The disputed domain name <teva-pharmaceutical.org> (the “Domain Name”) is registered with eNom, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2021, 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 January 22, 2021, 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 January 25, 2021.
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 January 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2021. There is no email communication received from the Registrar confirmed email address for the Respondent. However, email communications were received on January 22, and January 29, 2021, from a technical director for NovAxis Solutions Inc. (“NovAxis”), which will be discussed in details below. Accordingly, the Center notified the Parties of the commencement of Panel Appointment on February 17, 2021,
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 24, 2021. 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 an Israeli limited company originally established in 1901. It is the world’s largest generic medicines producer, manufacturing a wide range of generic products in nearly every therapeutic area at dozens of manufacturing facilities in over 60 countries, employing approximately 45,000 workers. The company’s shares are traded on the New York Stock Exchange, and it reported revenues of nearly USD 17 billion in 2019. The Complainant operates several websites using the TEVA mark in domain names, including a principal website at “www.tevapharm.com” since 1996.
The Complainant holds registrations for TEVA as a word mark in numerous countries, including United States of America trademark registration number 1567918 (registered November 28, 1989), Canadian trademark registration number TMA411063 (registered April 16, 1993), and European Union trademark registration number 007258081 (registered January 3, 2011).
The Complainant attaches screenshots of the website to which the Domain Name formerly resolved, presumably in January 2021. These pages are headed with two of the Complainant’s trademarked figurative logos and filled with text and images that appear to be copied from portions of the Complainant’s website. The content is a cut-and-paste job that is not coherent but gives a superficial appearance of a genuine Teva Pharmaceutical website. The copyright notice is dated 2014, and the page tabs are labelled in a mix of French and English, while the text boxes are mostly in English. The “Contact” form is in French and encourages site visitors to send a message to the company and provide the visitor’s name and email address. This may, of course, be the point of the fake website: to harvest personal contact details.
The Registrar reports that the Domain Name was created on December 24, 2020, registered in the name of the Respondent “DomainName WebSelf” of the organization “WebSelf.net”, showing a postal address in the city of Quebec, Canada. WebSelf.net is a website design and hosting business (“www.webself.net”), registered since 2005 with the Quebec Registraire des entreprises, according to its online database. WebSelf.net is affiliated with NovAxis, which shares the same address. A technical director for NovAxis sent two identical email communications to the Center on January 22, and January 29, 2021, before and after receiving notice of this dispute, stating as follows:
“Webself is a platform where every user can create his own website with the content that he likes. As a company responsible for hosting millions of websites for our clients we do have control over some aspects of the website content. Nevertheless we also respect the freedom of speech in our platform. In order to create a healthy environment, we wrote our terms and conditions in order to make clear the boundaries of the content.
With that being said, we are truly sorry that one client stepped outside of the rules applied by our company. This user is already blocked from our system.
In this case we do have the name and address of the responsible for creating the website concerned by this dispute. However we cannot confirm if the information that we have is real, so sharing this information right now would only make the situation worse.”
No further information has been provided about the party “responsible for creating the website” formerly associated with the Domain Name. At the time of this Decision, the Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant asserts that its TEVA trademark is “clearly recognizable” in the Domain Name and that the Respondent has no permission or other evident rights or legitimate interests in the Domain Name. The Respondent masked its identity, appropriated the Complainant’s marks and product images on the website associated with the Domain Name, and created an impression of affiliation with the Complainant, which must be considered bad faith. The Complainant contends that the Respondent must have been aware of the Complainant’s trademark, and there is no way the Respondent could have used the Domain Name legitimately.
There is no email communication received from the Registrar-confirmed email address for the Respondent. However, as described above, email communications were received on January 22, and January 29, 2021, from a technical director for NovAxis.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the 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.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds registered TEVA trademarks. The Domain Name incorporates this mark in its entirety and adds the term “pharmaceutical”, which does not avoid confusion (see id. section 1.8). As usual, the generic Top-Level Domain (“gTLD”) “.org” is disregarded as a standard registration requirement. See id. section 1.11.1.
The Panel concludes that the first Policy element is established on these facts.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See id. section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s use of the Domain Name for a website mimicking the Complainant’s website and seeking personal contact information from site visitors. This shifts the burden to the Respondent to produce evidence of rights or legitimate interests. The Respondent has failed to do so, and the Panel finds that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is evident from the copying of the Complainant’s trademarked logos and website content on the website formerly associated with the Domain Name that the Respondent was aware of the Complainant’s TEVA trademark. The Respondent’s former website requested personal contact information from site visitors, and it may be presumed that this was in pursuit of commercial advantage or a fraudulent scheme. In either case, the deceptive practices of obscuring the Respondent’s true identity and falsely presenting itself as the Complainant are indicative of bad faith within the meaning of the Policy.
The Panel notes that the Respondent, a website “platform”, does not identify its client and is vague about their respective roles in selecting the Domain Name and reviewing content on the associated website, referring to the existence of certain obligations under the terms and conditions governing the use of the platform. This does not avoid the Respondent’s responsibility as the Domain Name registrant for lawful use of the Domain Name and compliance with the Policy. Moreover, taking down the offending website does not end the potential harm from this inherently misleading Domain Name, as it could be hosted elsewhere and lends itself to other fraudulent uses such as phishing emails.
In any event, irrespective of who is the final user of the Domain Name, the use described in this Decision is objectively a bad faith use for the purposes of the Policy.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith in the registration and use of the Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <teva-pharmaceutical.org>, be transferred to the Complainant.
W. Scott Blackmer
Date: March 10, 2021