WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Ltd., Teva Respiratory, LLC v. Privacy Protection, Privacy Protection / Bamboo Lin

Case No. D2021-3961

1. The Parties

The Complainants are Teva Pharmaceutical Industries Ltd., Israel, and Teva Respiratory, LLC, United States of America (“United States”), represented by SILKA AB, Sweden.

The Respondent is Privacy Protection, Privacy Protection, United States / Bamboo Lin, United States.

2. The Domain Names and Registrar

The disputed domain names <copaxone.xyz> and <proair.xyz> are registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 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 December 6, 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 December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. Informal communications were sent by a third party to the Center on December 29, 2021, January 19 and 20, 2022. The Respondent did not submit any formal response. Accordingly, the Center notified Commencement of Panel Appointment Process on January 19, 2022.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 28, 2022. 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

Teva Respiratory, LLC is an affiliated company of Teva Pharmaceutical Industries Ltd., both being part of the same corporate group, therefore they will be collectively referred to in this proceeding as “the Complainant”.

The Complainant is a leading global pharmaceutical company that was established in 1935 (with its predecessor starting its activities in 1901), currently being one of the world’s largest generic medicines producer, levereging a portfolio of more than 1,800 molecules to produce a wide range of generic products. The Complainant produced approximately 120 billion tablets and capsules in 2017 at dozens of manufacturing facilities worldwide, being active in over 60 countries and employing approximately 42,000 people around the world.

The Complainant offers the products under the name “Copaxone” in the United States since 1996 and in the European Union since 2001. The Complainant displays information about the Copaxone product on its website available at <copaxone.com>.

Also, the Complainant offers products under the name “Proair” and displays information about this product on its website available at <proair.com>.

The Complaint (through its group of companies) holds trademark registrations for COPAXONE and PROAIR in various countries and territories through the world such as the following:

- the United States Trademark Registration No. 1816603 for COPAXONE (word), filed on January 15, 1993, and registered on January 18, 1994, covering goods in Nice class 5;

- the European Union Trademark registration number 02183986 for the COPAXONE (word), filed on April 19, 2001, and registered on June 17, 2002, covering goods in Nice class 5; and

- the United States Trademark Registration No. 3166297 for PROAIR (word), filed on December 17, 2004, and registered on October 31, 2006, covering goods in Nice class 5.

The disputed domain names <copaxone.xyz> and <proair.xyz> were both registered on October 20, 2021.
According to evidence provided as Annexes 24 and 25 to Complaint, at the time of filing the Complaint, the disputed domain names resolve to parking sites where they were offered for sale for USD 688 each.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to its trademarks COPAXONE and PROAIR, the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names to it.

B. Respondent

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

On December 29, 2021, and on January 19 and 20, 2022, the Center received email communications from a third party’s address connected to the platform where the domain names are offered for sale stating particularly that “we are merely a marketplace we have no control nor ownership over the names involved”.

6. Discussion and Findings

In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain names are 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 the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1 establishes that: “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” The Panel finds that the Complainant (directly and through its group of companies) has rights in the registrations for the word trademarks COPAXONE and PROAIR.

The disputed domain names <copaxone.xyz> and <proair.xyz> reproduce the Complainant’s trademarks exactly.

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.xyz”, “.org”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain names are identical to the Complainant’s trademarks COPAXONE and PROAIR, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that it has given no license or other right to use its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain names, and that the Respondent has not used the disputed domain names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain names. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not substantially replied to the Complainant’s contentions to advance a claim to any rights or legitimate interests in the disputed domain names.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by this disputed domain names, or is making any legitimate noncommercial or fair use of the disputed domain names. In fact, at the time of filing the Complaint the disputed domain names resolved to parking websites where they were offered for public sale.

In addition, and without prejudice to the above, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark rights in COPAXONE and PROAIR since at least 1993, respectively 2004.

Both disputed domain names were created in the same day, October 20, 2021, and reproduce the Complainant’s trademarks, product name and are identical to the corresponding domain names of the Complainant (except for the gTLD).

From the above, the Panel finds that the disputed domain names were registered in bad faith, with knowledge of the Complainant, its business, and particularly targeting its COPAXONE and PROAIR trademarks.

According to the case file documents before it, the Panel finds no evidence of actual use of the disputed domain names. From the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the complainant’s mark and the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use. See section 3.3 of the WIPO Overview 3.0. As previously mentioned, the disputed domain names incorporate exactly the Complainant’s trademarks and product names and the Respondent refused to participate in this proceeding.

Further, the disputed domain names were offered for public sale on a third party website for the amount of USD 688 each. Consequently, the Panel deems applicable the circumstances listed under paragraph 4(b)(i) of the Policy providing that the Respondent has registered the disputed domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant or its competitors for an amount likely in excess of the documented out-of-pockets costs.

The Respondent registered the disputed domain names under a privacy service and refused to participate in the present proceedings in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <copaxone.xyz> be transferred to the Complainant Teva Pharmaceutical Industries Ltd., and <proair.xyz> be transferred to the Complainant Teva Respiratory, LLC.

Marilena Comanescu
Sole Panelist
Date: February 11, 2022