WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Limited v. 石磊 (Shi Lei)
Case No. D2021-1522
1. The Parties
Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
Respondent is 石磊 (Shi Lei), China.
2. The Domain Names and Registrar
The disputed domain names <tevaseverancebenfits.com> and <tevaseverancebenifits.com> (the “Domain Names”) are registered with DNSPod, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on May 24, 2021.
On May 22, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 25, 2021, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 20, 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
Complainant, Teva Pharmaceutical Industries Ltd (“Teva”) was established in 1901. Complainant is a pharmaceutical company that delivers medicine and healthcare solutions globally. Complainant produced approximately 120 billion tablets and capsules in 2017 at dozens of manufacturing facilities worldwide. It is active in over 60 countries and employs approximately 45,000 worldwide.
Complainant is the owner of the registered trademark TEVA in numerous countries including in the United States of America (“US”). Examples include the US trademark registration for TEVA registered on November 28, 1989 under registration number 1567918 and US trademark registration for TEVA registered on May 30, 2000 under registration number 2353386. Complainant also operates under the website “www.tevapharm.com” and has owned the domain name <tevaseverancebenefits.com> since 2019 which they use for their employees.
Complainant has also registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “teva”, for example, <tevapharm.com> (created on June 14, 1996), <tevapharm.us> (created on April, 24, 2002).
Respondent registered the Domain Names on March 24, 2021. At the time of the filing of the Complaint, the Domain Names resolved to third party websites, including at times to a website that requests the user to download malware. At the time of the Decision, the Domain Names resolve to pay per click websites.
5. Parties’ Contentions
Complainant contends that (i) the Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith.
In particular, Complainant contends that it has trademark registrations for the TEVA marks and owns domain names incorporating the TEVA marks. Complainant contends that Respondent registered and is using the Domain Names, to confuse Internet users looking for bona fide and well-known TEVA products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submits in its email communication to the Center on May 25, 2021 and in the Complaint and the amended Complaint, that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.
Complainant contends that the Domain Names are comprised exclusively of English characters. In addition, the content on the websites the Domain Names resolve to, are also in English. Complainant also contends that it would involve unfairly high costs and delay for Complainant to translate and conduct the proceeding in Chinese. Complainant notes it is not in a position to conduct the proceeding in Chinese without an additional large expense and delay due to the need for translation.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notify Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Names were registered in characters using Latin characters and target a global audience.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the TEVA marks, which have been registered since at least as early as 1989 (well before Respondent registered the Domain Names on March 24, 2021 as noted above). Complainant has also owned the domain name <tevaseverancebenefits.com> since 2019. Complainant has also submitted evidence, which supports that the TEVA marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the TEVA marks.
With Complainant’s rights in the TEVA mark established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the Top-Level Domain (“TLD”) in which they are registered (in this case, “.com”), are identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Names are confusingly similar to Complainant’s TEVA mark. The TEVA mark is recognizable in the Domain Names. The incorporation of the TEVA mark with the absence of the letter “e” in the word “benefits” in the Domain Name <tevaseverancebenfits.com> and the misspelling or replacement of the letter “e” with “i” in the word “benefits” in the Domain Name <tevaseverancebenifits.com> does not prevent a finding of confusing similarity between Complainant’s trademark and the Domain Names registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the TEVA marks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the TEVA trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the TEVA marks.
In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provided evidence that at the time of the filing of the Complaint, the Domain Names resolved to third party websites, including at times to a website which requests the user to download malware. At the time of the Decision, the Domain Names resolve to pay per click sites. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Names and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Names.
Further, the nature of the Domain Names carry a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the TEVA marks long predate the registration of the Domain Names by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s TEVA marks and related services are widely known and recognized. Therefore, the Panel finds that Respondent knew or should have known the TEVA marks when it registered the Domain Names. See WIPO Overview 3.0, section 3.2.2; See also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The Panel also finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
As discussed above, each of the Domain Names previously redirected to third party websites, including at times to a website that requests the user to download information which has malware. Such use of a domain name for illegal activity, including distribution of malware can never confer rights or legitimate interest on a respondent. See BJ’s Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, WIPO Case No. D2015-1601. It is also potentially disruptive to Complainant’s business activities and may result in tarnishing Complainant’s reputation and good will. Such use is also misleading to Internet users, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. At the time of the filing of the Complaint, the websites were inactive. However, also noting the current direction to pay per click sites, this would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Names <tevaseverancebenfits.com> and <tevaseverancebenifits.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: August 3, 2021