WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TEVA Respiratory, LLC v. Whois Privacy Protection Foundation / June Oneal
Case No. D2021-3984
1. The Parties
Complainant is TEVA Respiratory, LLC, United States of America (“United States”), represented by SILKA AB, Sweden.
Respondent is Whois Privacy Protection Foundation, Netherlands / June Oneal, United States.
2. The Domain Name and Registrar
The disputed domain name <proairinhalerr.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 Complainant on December 6, 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 on December 7, 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 Respondent of the Complaint, and the proceedings commenced on December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 30, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 18, 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
Complainant, TEVA Respiratory, LLC, is the United States based division of TEVA Pharmaceuticals Ltd, a global pharmaceutical company that produces and markets a wide range of generic products and specialty pharmaceuticals. Complainant develops, produces and markets respiratory products such as inhalers. Complainant uses the name and mark PROAIR in connection with its various inhalers, such as PROAIR Inhaler, PROAIR HFA Inhalation Aerosol and PROAIR Respiclick. Of relevance to this proceeding, Complainant owns trademark registrations for its PROAIR mark in connection with its inhaler products in the United States, including (i) Registration No. 3166297, that issued to registration on October 31, 2006, and (ii) Registration No. 4720393, that issued to registration on April 14, 2015. Complainant also owns a number of PROAIR formative trademark registrations in the United States in connection with its various inhaler products such as, by way of example, PROAIR RESPICLICK (Registration No. 4847572). Lastly, Complainant owns and uses the domain name <proair.com> for a website providing information on Complainant’s PROAIR inhalers.
Respondent is an individual based in the State of Maryland in the United States. The disputed domain name was registered on October 20, 2020. Respondent has used the disputed domain name in connection with a website that has offered, and continues to offer, for sale a variety of pharmaceutical products and medicines, including a “Generic ProAIr Inhaler”.
5. Parties’ Contentions
Complainant asserts that it has strong rights in its PROAIR mark with respect to inhalers, particularly as one of Complainant’s PROAIR inhalers, the PROAIR HFA Inhalation Aerosol, is the number one selling dispensed quick relief inhaler in the United States. Complainant also asserts that its PROAIR mark is well known in the “albuterol category in relation to Inhalers, world over. Lastly, Complainant maintains that it has strong rights in PROAIR by virtue of its use of the mark since 2004 and its many longstanding trademark registrations for PROAIR alone as a word mark or in combination with other terms.
Complainant contends that the disputed domain name is identical or confusingly to Complainant’s PROAIR mark as it fully incorporates the PROAIR mark along with a typo version of the descriptive word “inhaler”, a word that relates directly to Complainant’s products under the PROAIR mark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is “pretending to be an online pharmacy at the disputed Domain Name”, (ii) has no affiliation or connection to Complainant, (iii) has no authorization from Complainant to use the PROAIR mark or to sell Complainant’s PROAIR products, (iv) is not commonly known by the PROAIR trademark, and (v) is using the disputed domain name which copies the PROAIR mark and includes the very product Complainant is known for, namely, inhalers, to divert consumers to Respondent’s purported online pharmacy for Respondent’s profit.
Finally, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith as Respondent likely had knowledge of Complainant’s well-known PROAIR mark in relation to inhalers when Respondent registered the disputed domain name that combines the PROAIR mark with a typo version of the word “inhaler” (“inhalerr”). Complainant also contends that Respondent’s knowledge of Complainant’s PROAIR mark is evident from Respondent’s use of the disputed domain name for a website promoting the sale of generic PROAIR inhalers along with other pharmaceutical products and medicines. Complainant also argues that Respondent has acted in bad faith by using the disputed domain name based on the well-known PROAIR mark to attract and redirect consumers to Respondent’s alleged online pharmacy to sell a variety of pharmaceutical and other products for Respondent’s profit.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
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 section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns and uses the PROAIR mark in connection with its inhaler products. Complainant has also provided evidence that the PROAIR mark has been registered in the United States, where Respondent is located, well before Respondent registered the disputed domain name.
With Complainant’s rights in the PROAIR mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s PROAIR mark as it fully and clearly incorporates the PROAIR mark at the head of the disputed domain name with a typo version of the word “inhaler”. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PROAIR mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the 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.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website with the title “Tablets Online Purchase” that purports to sell a variety of medications and pharmaceuticals products for a variety of conditions, such as, by way of example, asthma, arthritis, birth control, diabetes, cholesterol, hair loss, men’s health and many other categories. The page that the disputed domain name resolves to in Respondent’s website offers for sale a “Generic Proair Inhaler (Salbutamol)” and includes a product description that repeatedly uses the PROAIR mark. If the web user attempts to purchase the inhaler being offered on Respondent’s website, the consumer is taken to yet another website currently at <meds4you.site> (and previously to <medsformens.site>). That website purports to offer a wide variety of pharmaceutical and medicinal products for a variety of conditions.
Using the disputed domain name based on the PROAIR mark with the very product Complainant’s PROAIR mark is known for in order to redirect web users to a website purporting to sell a wide variety of third party pharmaceutical and medicines for many different conditions is not legitimate and a clear act of riding on the goodwill of another’s well known-mark. Whether Respondent is actually selling a genuine PROAIR inhaler product or a generic version of such is not altogether clear, but to this Panel such does not provide Respondent with a legitimate interest in the disputed domain name under the “Oki Data test” adopted by numerous UDRP Panels. See Oki Data Americas, Inc. v. ASD, Inc,, WIPO Case No. D2001-0903; see alsoWIPO Overview 3.0 at section 2.8.
Here, Respondent has registered a disputed domain name that on its face suggests a connection to Complainant, or which likely will be seen as a domain name related to Complainant and its PROAIR inhaler products. Respondent has done so in order to attract and redirect consumers to a likely unregulated “online pharmacy” in order to promote and sell various products under well-known brands, such as, by way of example, Claritin, Cialis, Viagra. Zithromax, or generics thereof. Most of the products on Respondent’s online pharmacy website, and the associated linked to website, are completely unrelated to Complainant’s PROAIR mark and products. Respondent, who has chosen not to appear in this proceeding to explain its actions, is clearly using Complainant’s PROAIR mark to simply attract web traffic to its websites to promote the sale of various pharmaceuticals and other products for Respondent’s profit. Such actions by Respondent are the antithesis of what could conceivably be legitimate under the “Oki Data Test”. WIPO Overview at sections 2.5.1 and 2.8.1.
Given that Complainant has established with sufficient evidence that it owns rights in the PROAIR mark, and given Respondent’s above noted actions and failure to respond, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given that Respondent has (i) registered the disputed domain name that fully incorporates Complainant’s PROAIR mark in connection with the very product Complainant is known for and (ii) used the disputed domain name to attract and redirect consumers to Respondent’s alleged online pharmacy promoting and offering pharmaceutical and other products unrelated to Complainant and its PROAIR inhalers, it is easy to infer that Respondent was likely well aware of Complainant’s PROAIR mark when Respondent registered the disputed domain name.
Given the likely popularity of Complainant PROAIR inhaler products, particularly in the United States, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a website that is authorized to sell Complainant’s PROAIR inhaler products. Simply put, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s PROAIR mark with a typo version of the word “inhaler”, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein).
Accordingly, the Panel finds that Complainant succeeds under this element 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 disputed domain name, <proairinhalerr.com> be transferred to Complainant.
Date: February 1, 2022