The Complainant is Teva Pharmaceutical Industries Ltd. of Jerusalem, Israel and Horsham, Pennsylvania, United States of America, represented by Kenyon & Kenyon, United States.
The Respondent is Protected Domain Services / Dworld c/o Basil Administrator of Denver, Colorado, United States.
The disputed domain name <myteva.com> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on or about April 8, 2010. On April 8, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On April 13, 2010, Name.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed a supplemental submission on April 8, 2010, and a first amended Complaint on April 14, 2010. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on April 16, 2010. (The Panel has treated all these submissions as “the Complaint” for the purpose of this proceeding. This includes the additional communication named as a “supplemental submission” by the Complainant. A supplemental submission is one ordinarily made by a party in response to a submission by the other party, where that submission is not invited by the panel or otherwise allowed in the Rules. The Complainant's supplemental submission was not of that kind.)
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2010. The Response was filed with the Center on May 6, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on May 14, 2010. 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.
After the due date for this decision, on June 3, 2010 the Complainant filed a supplemental submission and, on the same day, the Respondent requested that this supplemental filing be disregarded. Neither the Policy nor the Rules explicitly provide for supplemental filings. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule, in accordance with the streamlined nature of the Policy. The Panel considered that the Complaint and Response contained sufficient argument and evidence for the Panel to proceed to an informed decision. Accordingly, the Panel did not consider the parties supplemental communications, in the consideration of the elements which follow.
The Complainant is a global pharmaceutical company specializing in the development, production and marketing of generic and branded pharmaceuticals. The Complainant has its headquarters in Israel. It has more than 80% of its sales in North America and Europe.
The Complainant is the owner of a large number of registered marks in various jurisdictions that comprise or contain the term TEVA. For example, the Complainant provides evidence of having a word mark for TEVA registered on the principal register of the USPTO since 1989. The registration details for that mark notes that “The English translation of the word ‘TEVA' in the mark is ‘Nature'.”
As evidenced in the Complaint, on March 8 and 9, 2010, the disputed domain name reverted to a “pay-per–click” landing website. The website contains the statement “Myteva.com – Drug Resources and Information. This website is for sale!”. The website includes a miscellany of links, including for example under headings such as “Walgreens: Erectile Info”, “Erectile dysfunction”, “Male Infertility Center”, and “Little Blue Pill Compared”.
The Complainant maintains websites at, for example, “www.tevapharm.com” and “www.tevausa.com”.
The disputed domain name was registered on October 12, 2006.
When it first learned of the registration of the disputed domain name in March 2010, the Complainant sent a protest letter to the then named registrant “Dworld” on March 9, 2010. In response, someone under the moniker “Basil” emailed the Complainant's counsel refusing to transfer the disputed domain name unless it was paid USD 2,500, and offering to point the disputed domain name to an “under construction” link in the meantime. The Complainant refused that offer and asked the Respondent to provide its full legal name. The Respondent refused that request stating: “You have no right over this domain since we have owned it since 2006. What makes you think you are the only teva out there?”.
The Complainant claims that the disputed domain name is virtually identical, and therefore confusingly similar to, its TEVA mark. The Respondent has simply added the generic word “my” which does not alter the fact of confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has used the disputed domain name to obviously ride on the goodwill and fame of the Complainant's TEVA mark, and prior panels have held that such use cannot found a right or legitimate interest. Diverting Internet users to a website offering sponsored links to the Complainant's competitors is prima facie evidence of a lack of rights.
The Respondent is also precluded from having rights or legitimate interests because it had at least constructive notice of the Complainant's prior registered mark. Even if the Panel does not find that the Respondent had constructive notice of the mark, because of the fame of its mark, any claim by the Respondent that it was not aware of the mark is meritless. The Complainant never consented to the Respondent's use of its mark and is not aware of any other ground on which the Respondent might claim rights or legitimate interests.
The disputed domain name was registered and is being used in bad faith. The Respondent obviously chose the disputed domain name to free ride on the goodwill in the Complainant's mark. The Respondent has registered the disputed domain name to disrupt the Complainant's business. The Respondent's unsolicited offer to sell the disputed domain name to the Complainant, for an amount in excess of its out-of-pocket costs, also constitutes evidence of bad faith.
The Respondent is not using the disputed domain name for a bona fide offering of goods or services, and the Respondent's knowledge of the Complainant's mark supports a finding of bad faith.
The Respondent states that it was started in Denver, Colorado, in 2003 to acquire and build websites. The Respondent says that it generates revenue from advertising and clicks generated from users of its sites, and that it also chargers customers for site development. The Respondent says that its websites are often parked or hosted for periods of time for the purpose of gathering traffic information. It is not uncommon for its domain names to be parked or hosted with a registrar or parking service such as Sedo. The Respondent says that the links generated by the registrars or hosts are not generated by it.
The Respondent says that it had never heard of the Complainant until it received its letter of complaint dated March 9, 2010. The Respondent does not dispute that the Complainant has trademark rights “in the pharmaceutical world”.
The Respondent says that the Complaint is baseless and contrived, since its use of its website is unrelated to the Complainant's business and that the Respondent has never tried to confuse Internet users.
The Respondent says that the dominant links on its website are related to “Teva shoes”. Links to erectile dysfunction drugs are present in thousands if not millions of parked and hosted websites. The fact that such links exist on the Respondent's website does not necessarily imply that the disputed domain name is related to the pharmaceutical industry. The Respondent says that the word “teva” is descriptive, is used as a brand name by a widely known sandal manufacturer, and is used in the Hebrew language to mean “nature” or “of nature”. The Respondent says that prior decisions under the UDRP confirm that a claim cannot succeed in relation to a word that is “generically utilized”. The Respondent also says that there is substantial third party use of the term “teva”. The Respondent says that when a search for the phrase “myteva” is done using Google, Yahoo, and Bing search engines, the Complainant's website fails to appear in the top 20 search results. On this basis, the Respondent says that the disputed domain name is not confusingly similar to the Complainant's mark.
The Respondent says that it has a right or legitimate interest in the disputed domain name because the inspiration for “myteva” comes from a public event held in Colorado every year - the Teva Mountain Games. The Respondent says that its plan “moving forward is to try and create a review site for Teva shoes rather than keep it as a blog”.
The Respondent says that it did not register the disputed domain name in bad faith because the word “teva” is used as a brand name by a widely known sandal manufacturer, and because the word has a generic meaning in Hebrew. The Respondent says that it made no meaningful financial gain from pay-per-click revenue. The Respondent does not dispute that it offered the disputed domain name for sale to the Complainant, but insists that its primary purpose in acquiring it was not to sell it. Had this been the case, the Respondent would have made prior attempts to contact the Complainant. Its offer should be viewed as an attempt to resolve the dispute.
The Respondent seeks to distinguish previous decisions under the Policy, cited by the Complainant.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed as follows.
The Complainant has clearly established that it has registered trademarks for TEVA, including on the principal register of the USPTO, in the jurisdiction where the Respondent has its address. The Respondent does not dispute that the Complainant has such registered rights.
This mark is not identical to the disputed domain name. As such, the issue is whether the disputed domain name is confusingly similar to the Complainant's mark. Such confusing similarity can be determined on the overall impression given by the mark and the domain name, bearing in mind any particular distinctive or dominant components, and having regard to visual, phonetic, conceptual similarities. Amanresorts Limited v. Melissa Perlman, WIPO Case No. D2003-0383.
Against a finding that the disputed domain name contains any components distinctively identified with the Complainant, the Respondent argues that the word “teva” is “generically utilized”, as it is used in the Hebrew language to mean “nature” or “of nature”. The Respondent also points to various third party use of the term “teva”. Even accepting this evidence however, the Respondent's argument cannot succeed for the following reasons.
The Complainant has registered trademark rights, including rights in a word mark registered on the principal register of the USPTO for TEVA. As noted previously in relation to registration on the principal register of the USPTO, “This registration is prima facie evidence of the validity of [c]omplainant's registration, and creates a rebuttable presumption that [the complainant's] mark is inherently distinctive.” EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. In the same vein, see e.g. Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903.
It is also of significance that the term “teva”, in the disputed domain name, is preceded by the English word “my” (no evidence was provided by either party that the term “my” is used in the domain name other than in connection with its English meaning). While the term “teva” might have meaning in Hebrew, there was no evidence that it has any meaning in English. The Panel does not consider that an ordinary Internet user would see the combination “myteva” and naturally think that the first word was used with its English meaning, while the second was used with its Hebrew meaning. The Panel considers that it is unusual to expect that terms in different languages would be mixed in a single domain name. As such, the Panel considers that an ordinary Internet user would look at the first occuring term “my” and consider that the term “teva” had some significance or distinctiveness in English. This suggests that the term “teva” in this context would be looked at for its trademark significance, rather than any generic meaning it might have in Hebrew, or otherwise.
In this context, as noted by an earlier panel “[t]he addition of the letters ‘my' has the effect of focusing the reader's attention on the Complainant's trademark.” Robert Bosch GmbH v. Gurol Yardimci, WIPO Case No. D2005-0147. In a similar vein, see MacDonald Communications Corporation v. Westchester Women in Business Network, WIPO Case No. D2001-0547.
Accordingly, bearing in mind that “teva” would be more likely seen as the distinctive component in the disputed domain name, the Panel considers that the disputed domain name is confusingly similar to the Complainant's mark. The Complainant's mark is also wholly incorporated in the disputed domain name. It is well established that the entire incorporation of a trademark in a domain name, including within a domain name that that adds a generic word, may be sufficient for a finding of confusing similarity: See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited therein; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The second element which the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name. It is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the onus shifts to the respondent to demonstrate that it has some right or legitimate interest. See e.g. Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025.
The Complainant in this case has put up its arguments and demonstrated its prima facie case, which shifts the onus to the Respondent to demonstrate its rights or legitimate interests. The Panel considers that the Respondent has not sufficiently demonstrated its case in response.
The Respondent has sought to base its rights or legitimate interests on various grounds. One is the supposed generic nature of the term “teva”. But the Respondent provided no evidence that it intended to, or actually used, the disputed domain name in connection with any generic meaning of a word it incorporates. Further, for the reasons set out above, the Panel considers that the inclusion of the English word “my” in the disputed domain name, does not suggest that the term “teva” was included because of any meaning it might have in Hebrew. The content of the Respondent's website, which is entirely in English, further confirms this.
Somewhat inconsistently with its argument that it has used the word for its generic association, the Respondent also claims that it was inspired to register the disputed domain name by “the Teva Mountain Games”, and that it intends to use the disputed domain name in the future in connection with “Teva shoes”. The Panel finds these claims implausible, having regard to the other evidence set out above. The Respondent provided no evidence of it having any connection with “the Teva Mountain Games”, or any demonstrable preparations to use the disputed domain name in connection with shoes, notwithstanding the fact that as of the date of this Decision, the disputed domain name resolves to a website which concerns Teva footwear. According to evidence submitted by the Complainant, the Respondent's website previously displayed sponsored links related to the pharmaceutical industry. It would appear from the present record and the information before this Panel that the content of the Respondent's website changed, following the Complainant's letter of protest of March 9, 2010. The Respondent's assertion in its Response that the website at the disputed domain name is the “original site that was developed in 2008” is without factual support and does not overcome the Complainant's prima facie case.
It is also relevant that the Respondent has used the disputed domain name in connection with a “pay-per-click” website. The evidence in this case (discussed further below in relation to bad faith) suggests that the Respondent selected the disputed domain name because of its association with the Complainant's trademark. The fact that links on the “pay-per-click” website referred to the products in the Complainant's field of business supports this finding. There is nothing in the nature of the website which suggests that it is being used because of any generic meaning of the term “teva”. Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally constitute abusive cybersquatting. See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562, and the cases cited therein. Such a practice cannot form the basis for a right or legitimate interest.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
The Respondent denies that it registered and has used the disputed domain name in bad faith. The Respondent makes this argument in a number of ways.
Firstly, the Respondent says the word “teva” is used as a brand name by a widely known sandal manufacturer, and that it intends to use the disputed domain name in that connection. However, the Respondent provides no demonstrable evidence of preparations to use the disputed domain name in this connection. Neither does the Respondent demonstrate that it has any business relating to “teva” shoes, or any agreement with a legitimate business in that industry. Without more, the Respondent has gone no further than indicating that a third party may have rights relating to the brand “teva”. But the existence of any such third party rights does nothing to show that the Respondent has such rights.
Secondly, as noted above, the Respondent denies acting in bad faith because the word “teva” has a generic meaning in Hebrew. For the reasons set out above, the evidence does not however suggest that the Respondent was motivated to register the disputed domain name for its generic meaning.
The Respondent, thirdly, says that it made no meaningful financial gain from pay-per-click revenue. Whether or not this is true does not affect the issue of whether the Respondent registered and used the disputed domain name intending to obtain some commercial benefit. Relevantly, paragraph 4(b)(iv) of the Policy provides that a panel may find evidence of bad faith where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. The evidence in this case supports a finding under this paragraph of the Policy. The Respondent admits that it registered the disputed domain name to make money. As noted above, the Panel considers that the disputed domain name is confusingly similar to the Complainant's mark. The links earlier placed on the Respondent's website suggest that the Respondent intended to profit from Internet traffic in a similar field of business as that of the Complainant.
The evidence also suggests that the Respondent was aware of the Complainant when it registered the mark. The Complainant provides evidence of being widely-known, and of having a large portfolio of registered marks in many jurisdictions, including in the United States where the Respondent has its address. The Respondent's inability to demonstrate any legitimate interest in the disputed domain name, and the internal inconsistency of its explanations for why it registered the disputed domain name, further support a finding against it on this ground.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all 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, <myteva.com>, be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: May 28, 2010