The Complainants are Teva Pharmaceutical Industries Ltd., Israel, and Auspex Pharmaceuticals, Inc., United States of America (“United States” or “US”), represented by SILKA AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Elan Katz, Katz Ventures, United States.
The disputed domain names <austedorx.com> and <copaxonerx.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 2, 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 13, 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.
Along with the Complaint, the Complainants have filed a Request to Consolidate, with reference to Paragraph 10(e) of the UDRP Rules which provides that a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The first Complainant, Teva Pharmaceutical Industries Ltd., was established in 1935 and is a leading global pharmaceutical company that delivers patient-centric healthcare solutions used by millions of patients every day. The Complainant was the world’s largest generic medicines producer in 2018, leveraging a portfolio of more than 1,800 molecules to produce a wide range of generic products in nearly every therapeutic area. In specialty medicines, the Complainant 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 first Complainant ranks among the leading pharmaceutical companies in the world and is active in over 60 countries and employs approximately 42,000 people around the world. Among the pharmaceutical products sold by the First Complainant, there is a prescription medicine for treatment of relapsing forms of multiple sclerosis, sold under the trade mark COPAXONE. This medicine has been available in the United States since 1996 and in the European Union (“EU”) since 2001 and the first Complainant hosts a website that displays information about this medicine under the domain name <copaxone.com>.
In May 2015, the first Complainant acquired the company of the second Complainant, Auspex Pharmaceuticals, Inc. This company is specialized in applying deuterium chemistry to known molecules to create novel therapies with the potential for improved safety and efficacy profiles. One of the pharmaceutical products developed by the second Complainant is sold under the trade mark AUSTEDO, a prescription medicine that is used to treat the involuntary movements characteristic of Huntington’s disease. The second Complainant hosts a website that displays information about this medicine under the domain name <austedo.com>.
The first Complainant, Teva Pharmaceuticals Industries Ltd. holds inter alia the following trade marks consisting of COPAXONE (the “COPAXONE Trade Marks”):
- EU word mark registration No. 002183986 COPAXONE, registered on June 17, 2002;
- US word mark registration No. 1816603 COPAXONE, registered on January 18, 1994.
The second Complainant, Auspex Pharmaceuticals, Inc. holds inter alia the following trade marks consisting of AUSTEDO (the “AUSTEDO Trade Marks”):
- US word mark registration No. 5223588 AUSTEDO, registered on June 13, 2017.
- US device mark registration No. 5223589 AUSTEDO, registered on June 13, 2017.
- EU device mark registration No. 014585401 AUSTEDO, registered on February 10, 2016.
The Respondent, Elan Katz, Katz Ventures has registered the Domain Name <copaxonerx.com> on March 2, 2021 (the “Copaxonerx Domain Name”), and the Domain Name <austedorx.com> on February 8, 2021 (the “Austedorx Domain Name”).
According to its website under the domain name <katzventures.com>, the Respondent is active in “Healthcare & Real Estate Investments”. The website contains, inter alia, links to the websites of, inter alia, QuickRX pharmacy, Cure Urgent Care, and Specialty Infusion Centres, companies in which the Respondent apparently invests.
By email of March 26, 2021, the second Complainant, Auspex Pharmaceuticals, Inc. sent a cease and desist letter to the Respondent, to which no response was received.
Consolidation
The Complainants have filed a Request to Consolidate multiple domain name disputes, both with respect to the Complainants and the Respondents.
The Complainants have pointed out that Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
The Complainants have submitted that in 2015, the second Complainant, Auspex Pharmaceuticals, Inc., became a wholly owned subsidiary of the first Complainant Teva Pharmaceuticals Industries Ltd. by acquisition and that, as a result, the activities and business of each Complainant are under the same legal control, and each Complainant shares a common legal interest in the trade marks held collectively by one another as directly related companies.
For these reasons, the Complainants contend that they make out a common grievance against the Respondents, and that it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single consolidated complaint. In this context, the Complainants refer to Altria Group, Inc. and Philip Morris USA Inc. v. Leonard Di Bari, WIPO Case No. D2014-0181.
In addition, the Complainants have put forward that, in accordance with Section 4.11.2 of the WIPO Overview 3.0, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
According to the Complainants, the Domain Names are indeed subject to a common control and consolidation would be fair and equitable to all Parties, taking into consideration that the Domain Names (i) were registered with the same Registrar (GoDaddy.com, LLC); (ii) were registered within a month (February 8, 2021, and March 2, 2021); (ii) contain the same structure (the Complainants’ trade marks plus the letters “rx”, which are internationally recognized as “prescription medication”); and (iv) resolve to the same content (parking site with “pay-per-click” (“PPC”) links).
Merits
Based on the assumption that the request for consolidation will be granted, the Complainants argue that the Austedorx Domain Name be transferred to the second Complainant, Auspex Pharmaceuticals, Inc. and the Copaxonerx Domain Name be transferred to the first Complainant, Teva Pharmaceutical Industries Ltd.
To this end, the Complainants basically argue that the Copaxone Domain Name is confusingly similar to the Copaxone Trade Marks and that the Austedo Domain Name is confusingly similar to the Austedo Trade Marks, that the Respondent has no rights to or legitimate interest in the Copaxone Domain Name or in the Austedorx Domain Name, and that both the Copaxone Domain Name and the Austedorx Domain Name were registered and are being used in bad faith.
According to the Complainants, the company of the first Complainant was established in 1935 and is a leading global pharmaceutical company that delivers high-quality, patient-centric healthcare solutions used by millions of patients every day. The Complainants submit that the first Complainant was the world’s largest generic medicines producer in 2018 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 Complainants state that in 2017 the first Complainant produced approximately 120 billion tablets and capsules at dozens of manufacturing facilities worldwide.
The Complainants contend that the first Complainant ranks among the leading pharmaceutical companies in the world and is active in over 60 countries and employs approximately 42,000 people around the world. Furthermore, the Complainants state that among the pharmaceutical products sold by the first Complainant is a prescription medicine for treatment of relapsing forms of multiple sclerosis, sold under the COPAXONE Trade Marks, which has been available in the US since 1996 and the EU since 2001. The Complainants point out that the first Complainant hosts a website that displays information about this medicine under the domain name <copaxone.com>.
According to the Complainants, in May 2015, the first Complainant acquired the second Complainant, an innovative company specialized in applying deuterium chemistry to known molecules to create novel therapies with the potential for improved safety and efficacy profiles. The Complainants state that one of the pharmaceutical products developed by the second Complainant, a prescription medicine that is used to treat the involuntary movements characteristic of Huntington’s disease, is marketed under the AUSTEDO Trade Marks. The Complainants note that the second Complainant hosts a website that displays information about this medicine under the domain name <austedo.com>.
The Complainants note that the Domain Names consist of the COPAXONE and AUSTEDO Trade Marks respectively, in each case together with the term “rx” and the generic Top Level Domain (“gTLD”) “.com”. According to the Complainants, the term “rx” is internationally recognized as “prescription medication” as the medicines sold under the AUSTEDO and COPAXONE Trade Marks are, and such term does not therefore alleviate the confusing similarity between the respective Trade Marks and Domain Names. The Complainants submit that the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark and that the addition of the gTLD “.com” is viewed as a standard registration requirement and is, therefore, inconsequential to determine similarities between the Complainants’ marks and the Domain Names.
Taking into consideration all of the above, the Complainants contend that it is established that the Austedorx Domain Name and the Copaxonerx Domain Name are confusingly similar to the Complainants’ AUSTEDO and COPAXONE Trade Marks respectively.
Furthermore, the Complainants submit that the Respondent does not have rights or legitimate interests to the Domain Names, since:
- the Respondent is not a licensee of the Complainants, and it has not received anyconsent, permission or acquiescence from the Complainants to use the Trade Marks in association with the registration of the Domain Names;
- the Complainants have found nothing to suggest that the Respondent holds any trademarks on either “Austedorx” or Copaxonerx”;
- the Complainants have found no evidence that the Respondent has been commonly known by the Domain Names or has ever operated under the names “Copaxonerx” or “Austedorx”, while a Google search for these names has mainly shown results referring to the Complainants and their activities, so that it is more than likely that Internet users will associate the Domain Names with the Complainants and their activities, when in fact they are not related;
- the Domain Names have not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, as they resolve to parking sites with PPC links which (in the case of the Copaxonerx Domain Name) refer to medical products;
- in view of the similarity between the respective Domain Names and Trade Marks, the Domain Names seek to capitalize on the reputation and goodwill of the Trade Marks;
- as the Respondent operates in the healthcare industry and given the Complainants’ prominence in this field, it is more than reasonable to believe that the Respondent must have had knowledge of the Complainants and the Trade Marks when registering the Domain Names, and that the Respondent had the aim of capitalizing on the reputation and goodwill of the Trade Marks;
- as the Domain Names solely comprise the respective Trade Marks with the addition of the term “rx”, (related to the Complainants’ activities) and since Internet users commonly associate both Domain Names with the Complainants, the Domain Names imply a high risk of implied false affiliation with the Complainants and their activities;
- the second Complainant sent a cease-and-desist letter to the Respondent on March 26, 2021 and a subsequent reminder on April 13, 2021 to which the Respondent did not reply.
According to the Complainants, the Trade Marks were registered and have been in use well before the registration of the Domain Names. As the Respondent operates in healthcare industry, the Complainants claim that the Respondent must have been aware of the Trade Marks when the Domain Names were registered. Moreover, the Complainants submit, considering that the Domain Names comprise the Trade Marks in full, that Internet users commonly associate “copaxonerx” and “austedorx” with the Complainants and their activities, and that the Domain Names are almost identical to the domain names <copaxone.com> and <austedo.com> (under which the Complainants operate their websites related to COPAXONE and AUSTEDO branded goods), it is impossible to believe that the Respondent would have chosen the Domain Names if it did not have the Trade Marks and the Complainants’ activities in mind.
Finally, the Complainants point out that a simple search in an online trademark register or in the Google search engine when the Domain Names were registered would have informed the Respondent on the existence of the Trade Marks.
In view of all these circumstances, the Complainants assert that the Respondent had the Trade Marks in mind at the time of registering the Domain Names, which amounts to a registration in bad faith.
With respect to bad faith use, the Complainants point out that the Domain Names resolve to parking sites with PPC links which in the case of the Copaxonerx Domain Name refer to medical products. In the Complainants’ view, bearing in mind a) that the Trade Marks predate and are reproduced in full in the Domain Names; b) the similarities between the Domain Names and the Complainants’ domain names <copaxone.com> and <austedo.com>; c) the content of the websites hosted under the Domain Names; and d) the fact that the Respondent operates within the healthcare industry, it can be concluded that the Respondent is intentionally attempting to attract Internet users who intend to access a website operated or endorsed by the Complainants to Respondent’s own directory websites, seeking to take unfair advantage of the Complainants’ goodwill by profiting from the confusion so caused. Furthermore, according to the Complainants the use of domain names that are confusingly similar to trademarks to obtain click-through-revenue constitutes bad faith use. The Complainants point out that the fact that the PPC links may be automatically generated by a third party cannot discharge Respondent of any responsibility for the content appearing on the website connected to the Domain Names under its control.
Finally, the Complainants state, although the Respondent could have responded to the second Complainant’s cease-and-desist letter to provide an explanation of its choice of the Domain Names and show any evidence of any actual or contemplated good faith use of the Domain Names, the Respondent failed to respond.
In view of all these circumstances, the Complainants conclude that the Respondent’s conduct proves that the Domain Names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Before discussing the merits of this case, the Panel needs to address, as a preliminary matter, the request for consolidation of multiple domain name disputes, submitted by the Complainants.
The Complainants have filed their Request to consolidate as there are on the face of it multiple Domain Names registered by multiple Respondents. Paragraph 10(e) of the UDRP Rules provides that a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
The Panel points out that neither the Policy nor the Rules expressly provide for the consolidation of disputes between multiple complainants or respondents in a single complaint and both the Policy and Rules use the singular terms “complainant” and “respondent” throughout. However, that in itself is not decisive.
With respect to multiple complainants, many WIPO Panels have concluded in the past that the use of the singular term in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief, in a single administrative proceeding under the Policy (see e.g. MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985 and the cases referred to in WIPO Overview Section 4.11.1).
In assessing whether a complaint filed by multiple complainants may be brought against (multiple domain names registered by) a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (see Section 4.11.1 of the WIPO Overview 3.0 and e.g., Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331).
In order to establish a common grievance against the respondent, the panel in the Fulham Football Club, supra held that multiple complainants must either (i) have a common legal interest in the trade mark rights on which the complaint is based; or (ii) be the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.1 As examples of a common legal interest, the panel mentioned the situation where the complainants have a shared interest in a trade mark such as may exist between a licensor and a licensee, or where the complainants form part of a single (corporate group or joint venture). In the latter situation, the panel considered that each company has a common legal interest in trade marks held collectively by or within such entity.
In the matter at hand, the Complainants are part of the same group, with the second Complainant, Auspex Pharmaceuticals, Inc. being a wholly owned subsidiary of the first Complainant, Teva Pharmaceutical Industries Ltd., so that, in accordance with existing UDRP case law, the Complainants are considered to have a common legal interest and, therefore, a common grievance against the Respondent.
It follows that, in respect of multiple Complainants, the disputes in this matter can be consolidated.
Paragraph 3(c) of the Rules provides that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In this case, while one domain name was identified in the Complaint as being registered by a privacy service and the other by an identified registrant, the Registrar has confirmed that the Domain Names are both registered by the Respondent Elan Katz, Katz Ventures.
Strictly speaking therefore, this is not a case where a complaint is filed against multiple respondents, and it is therefore not necessary to consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties (see Section 4.11.2 of the WIPO Overview 3.0).
The Complainant has in any event submitted that the Domain Names are under common control, since they were registered with the same Registrar (GoDaddy.com, LLC), within a month of each other (February 8, 2021 and March 2, 2021), have the same structure (meaning that they both contain a trade mark of one of the Complainants plus the letters “rx”, denoting “prescription medication”) and resolve to the same content (a parking site with PPC links).
Leaving aside whether these arguments in general would suffice to enable consolidation of multiple domain name cases with multiple respondents, since, as noted above, both Respondents are in fact the same, the consolidation request in respect of multiple respondents need not be discussed.
Therefore, the Panel concludes that he Complainants may proceed with a single consolidated complaint in respect of the Domain Names.
The first Complainant has shown that it has registered rights in the COPAXONE Trade Marks and the second Complainant has shown that it has registered rights in the AUSTEDO Trade Marks. The Copaxonerx Domain Name is confusingly similar to the COPAXONE Trade Marks as it incorporates those Trade Marks in their entirety (see also WIPO Overview 3.0, section 1.7). For the same reason, there is confusing similarity between the Austedorx Domain Name and the AUSTEDO Trade Marks. The addition of “rx” does not prevent a finding of confusing similarity (the abbreviation “rx” is generally recognized as denoting prescription medication which the products sold by the Complainants under the AUSTEDO and COPAXONE Trade Marks are). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that (i) the Copaxonerx Domain Name is confusingly similar to the COPAXONE Trade Marks in which the first Complainant has rights and (ii) the Austedorx Domain Name is confusingly similar to the AUSTEDO Trade Marks in which the second Complainant has rights.
Under paragraph 4(c) of the Policy, each of the Complainants has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name to which its claim pertains, upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in each of the Domain Names (WIPO Overview 3.0, section 2.1). The Panel finds that, since the Domain Names incorporate the COPAXONE Trade Marks respectively the AUSTEDO Trade Marks in their entirety, they carry a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1). Furthermore, based on the evidence and the undisputed submissions of the Complainants, the Panel concludes that the Respondent has not received either Complainant’s consent to use its Trade Marks in the respective Domain Names nor is it an authorized retailer or distributor of either Complainant’s products or otherwise authorized to use the COPAXONE or AUSTEDO Trade Marks. The Respondent has not provided evidence, nor is there any indication in the record of this case that the Respondent is commonly known by either of the Domain Names. Furthermore, in view of the fact that the Domain Names resolve to parking sites with sponsored hyperlinks, of which it is commonly known that the owner and/or the operator of such websites may benefit from revenue generated by such links, and which in the case of the Copanerx Domain Name refer to medical products, the Respondent’s use of the Domain Names does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(i) of the Policy.
The Panel concludes that the Complainants have established that the Respondent has no rights or legitimate interests in the Domain Names.
Based on the undisputed information and the evidence provided by the Complainants, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks, since
- the Respondent’s registration of the Copaxonerx Domain Name occurred twenty-one years after the registration of the earliest of the COPAXONE Trade Marks and the registration of the Austedorx Domain Name occurred five years after the registration of the earliest of the AUSTEDO Trade Marks;
- the Respondent operates within the healthcare industry, where the Complainants have been active for many years;
- a simple trademark register search, or even an Internet search, prior to registration of the Domain Names would have informed the Respondent of the existence of the Trade Marks.
Since the Respondent has no authorization from or other affiliation with the Complainants and was or should have been aware of the Complainant's rights at the time of registration, the Domain Names were registered in bad faith.
With regard to bad faith use the Panel finds that the following circumstances taken together warrant a finding of bad faith use of the Domain Names:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the use of the Domain Names for websites containing sponsored links to websites offering paid products or services, indicating that by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of its website and the products sold on that website;
- the lack of a response to the cease-and-desist letter from the second Complainant;
- the lack of a formal Response to the Complaint.
Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith.
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 <copaxonerx.com> be transferred to the first Complainant and the disputed domain name <austedorx.com> be transferred to the second Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: September 16, 2021
1 The panel refers in this respect to criteria developed by the panel in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021), noting that the auDRP under which that case was decided in many respects mirrors the UDRP.