WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Limited v. Robert Varasano

Case No. D2021-3347

1. The Parties

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

The Respondent is Robert Varasano, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tevapharmainc.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 9, 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 leading global pharmaceutical company that was established in 1901 and delivers healthcare solutions used by millions of patients every day.

The Complainant is one of the world’s largest generic medicines producer and has a world leading position in innovative treatments for disorders of the central nervous system, including pain, as well as a strong portfolio of respiratory products.

The Complainant produced approximately 120 billion tablets and capsules in 2017 at dozens of manufacturing facilities worldwide, and thus ranks among the leading pharmaceutical companies in the world, being active in over 60 countries and employing approximately 45,000 around the world.

For the purpose of its activities, the Complainant holds several trademarks, including (the “TEVA and TEVAPHARM trademarks”):

- the United States trademark TEVA No. 1567918, registered on November 28, 1989 for goods in class 5;
- the United States trademark TEVA No. 2353386, registered on May 30, 2000 for goods in class 5;
- the European Union trademark TEVAPHARM No. 018285645, registered on January 9, 2021 for goods and services in classes 5 and 44.

The Complainant also owns several domain names, including the following:

- the <tevapharm.com>, registered on June 14, 1996;
- the <tevapharma.com>, registered on December 18, 2000;
- the <tevapharm.us>, registered on April 24, 2002.

The disputed domain name was registered on September 9, 2021.

According to the evidence included in the Complaint, the disputed domain name resolved to an inactive / parked website. Currently, the disputed domain name directs to an error website.

The Complainant requests the transfer of the disputed domain name.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First, the Complainant stands that the disputed domain name is identical or confusingly similar to its registered TEVA and TEVAPHARM trademarks, since it directly incorporates it with the addition of “inc” which can be interpreted as a reference to the Complainant’s US headquarters or local US entity.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the Respondent has not made demonstrable good faith preparations to use it in connection with a good faith offering of goods or services, or operation of a business, since it resolves to an inactive site/parked website.

The Complainant contends that the disputed domain name seeks to capitalize the reputation and goodwill of the TEVA and TEVAPHARM trademarks, and that it is highly unlikely that the Respondent intended to use it for any legitimate or fair use.

At last, the Complainant finds that the Respondent has registered and is using the disputed domain name in bad faith, since the TEVA and TEVAPHARM trademarks and the domain name <tevapharm.com> were registered and have been in use before the registration of the disputed domain name.

The Complainant considers that since the disputed domain name solely comprises the TEVA and TEVAPHARM trademarks, with the addition of legal company status “inc” and the letter “a” in “pharm(a)”, it is impossible to believe that the Respondent would have chosen the disputed domain name without having the Complainant’s trademark and activities in mind.

Moreover, the Complainant states that considering the fact the disputed domain name resolves to an inactive webpage, the doctrine of passive holding must be applied.

Indeed, the Complainant underlines that the contact information provided by the Respondent when registering the disputed domain name is most likely false, as it corresponds to that of an employee of the Complainant.

Finally, the Complainant highlights that MX records are attached to the disputed domain name, meaning that the Respondent has the ability of sending and receiving emails using an email address ending in “@tevapharmainc.com” which poses a real threat of consumer confusion.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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 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

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the TEVA and TEVAPHARM trademarks.

Then, the Panel notices that the disputed domain name <tevapharmainc.com> is composed of (i) the TEVA and TEVAPHARM trademarks, (ii) the addition of the letter “a” to “pharm(a)” and of the term “inc”, and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel finds that it incorporates the entirety of the TEVA and TEVAPHARM trademarks, to which has only been added the letter “a” to the term “pharm(a)”, which is not sufficient to differentiate the disputed domain name from the Complainant’s trademarks, and the term “inc”, which is an abbreviation of the term “incorporation” and thus refers to the US headquarters or local entity of the Complainant.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 prima facie 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 (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Indeed, it appears that the Complainant did not authorize the Respondent to register and use the TEVA and TEVAPHARM trademarks.

Moreover, as stated by the Complainant, the Panel finds that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Nor is there any evidence that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate non-commercial or faire use of the disputed domain name, without intent for commercial gain.

In any case, the Respondent did not reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <tevapharmainc.com>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including:

(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 or use of false contact details (noted to be in breach of its registration agreement), and

(iv) the implausibility of any good faith use to which the domain name may be put.

First, the Panel finds that it is established that the Complainant’s TEVA and TEVAPHARM trademarks were registered before the registration of the disputed domain name, and considers that, given the reputation of the Complainant and the fact that the disputed domain name wholly reproduces the TEVA and TEVAPHARM trademarks, with the mere addition of the letter “a” and the term “inc”, which can clearly be considered as referring to the Complainant’s US headquarters or local entity, it is unlikely that the Respondent was unaware of its existence.

Then, the Panel notes that MX records are linked to the disputed domain name, which suggests that it may be actively used for email purposes, and recalls that bad faith use may result from the threat of an abusive use of the disputed domain name at issue by the Respondent.

Finally, the Panel finds that the disputed domain name is not currently used, given that it points to an error page, but wishes to remind that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Indeed, the Panel considers that the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:

- the fact that the Respondent has not provided no reply to the Complainant’s contentions;
- the fact that there is no evidence of any intent of the Respondent to use the disputed domain name, nor of -any beginning of such use in connection with a good faith offering of goods or services;
- the fact that the contact details provided by the Respondent when registering the disputed domain name are most likely false, as they correspond to those of an employee of the Complainant;
- the fact that the disputed domain name has been set up with MX records, which poses a threat of an abusive use of the disputed domain name by the Respondent through impersonation of the Complainant;
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.

Therefore, in view of all the circumstances of this case the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 <tevapharmainc.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: November 23, 2021