WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Limited v. Registration Private, Domains By Proxy, LLC / Pacifico Costa Rica
Case No. D2021-0298
1. The Parties
The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Pacifico Costa Rica, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <tevapaharm.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2021, 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 February 4, 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 February 8, 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 February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on March 31, 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 a global pharmaceutical company that produces generic medicines. It was established in 1901 and is active in approximately 60 countries, employing around 45,000 people.
The Complainant is the owner of a number of trade mark registrations for TEVA (the “Mark”), including United States trade mark registration number 1567918, which was applied for on February 17, 1989 and registered on November 28, 1989. The protected goods and services for that registration are recorded as “House mark for a full line of pharmaceutical, veterinary and sanitary preparations”.
The Complainant is the owner of the domain names <tevapharm.com> and <tevapharma.com>.
The disputed domain name was registered on January 14, 2021, and while it is not currently connected to an active website, it appears that the MX records for the disputed domain name are active.
5. Parties’ Contentions
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of a misspelling of the word “pharma”, under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name or even by the Mark, or is using the disputed domain name for a bona fide offering of goods or services. The Complainant cannot conceive of a legitimate reason as to why the Respondent has registered the disputed domain name.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name, since the Mark is well known. The Complainant further notes that although the disputed domain name does not currently point to an active website, its MX records are active, indicating that it is being used to send emails. The Complainant believes that such emails may be being used to impersonate the Complainant. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety. The addition of a misspelling of the word “pharma”, that is, the principal area of the Complainant’s business and the industry for which the Mark has become well-known, in the disputed domain name does not prevent a finding of confusing similarity, nor does the addition of the gTLD “.com”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that the Respondent has not been commonly known by the disputed domain name and there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.
The disputed domain name is a clear example of a typo-squatting domain name; that is, one which was chosen with a trade mark owner in mind, usually after the relevant trade mark has been registered, and for the purpose of misleading Internet users as to the origin of communications sent using the disputed domain name. This conclusion is inevitable from the fact that the disputed domain name has no meaning other than as a reference to the Mark.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith.
Although the Complainant has been unable to demonstrate that the disputed domain name is being used to send emails impersonating the Complainant, the Panel accepts that the Respondent is using the disputed domain name in bad faith, under the doctrine of passive holding.
“(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is distinctive of the Complainant; that the Respondent has not participated in these proceedings or sought to explain its registration and use of the disputed domain name; and that the Respondent has sought to conceal its identity through a privacy service. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate. The fact that the disputed domain name appears to be active for email addresses, even if it is not also active to provide access to a webpage, is further evidence of bad faith.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name to is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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, <tevapaharm.com> be transferred to the Complainant.
Date: April 14, 2021