Complainant is Teva Pharmaceutical Industries Ltd, Israel, represented by SILKA Law AB, Sweden.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.
The disputed domain names <bropairspiromax.com> and <seffalairspiromax.com> are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 21, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on December 27, 2019. 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.
On January 6, 2020, the Panel issued Administrative Procedural Order No. 1, requesting Complainant to provide a statement by IVAX International B.V. (“IVAX”), the owner of the trademark marks, that it is aware of the present proceeding, and that it agrees to the transfer of the disputed domain names to Complainant, should the Complaint be decided in its favor. On the same day, Complainant provided a signed statement from IVAX`s authorized representative.
Complainant, established in 1901, is a pharmaceutical company active in over 60 countries with approximately 45,000 employees around the world. According to the Complaint, Complainant is one of the largest producers of generic medicines.
Complainant is the parent company to IVAX.
IVAX owns the following European Union trademark registrations:
SPIROMAX, Registration Number 001381938, registered on April 25, 2001, filed on November 12, 1999, duly renewed (expiry date November 12, 2029), covering pharmaceutical preparations and substances for human use for the treatment of respiratory diseases in Class 5, and inhalers in Class 10.
SEFFALAIR SPIROMAX, Registration Number 018008690, registered on May 10, 2019, filed on January 10, 2019, covering pharmaceutical preparations and substances for human use, all for the treatment of respiratory diseases, in Class 5, and surgical, medical, dental, veterinary, and diagnostic apparatus, devices and instruments, inhalation devices, inhalers, metered dose inhalers, dry powder inhalers, aerosol inhalers, aqueous inhalers, nebulizers, all for the treatment of respiratory conditions or ailments; parts, components and fittings for all the aforesaid goods, in Class 10.
BROPAIR SPIROMAX, Registration Number 018050448, registered on August 21, 2019, filed on April 10, 2019, covering pharmaceutical preparations and substances for human use for the treatment of respiratory diseases in Class 5, and surgical, medical, dental, veterinary, and diagnostic apparatus, devices and instruments, inhalation devices, inhalers, metered dose inhalers, dry powder inhalers, aerosol inhalers, aqueous inhalers, nebulizers, all for the treatment of respiratory conditions or ailments; parts, components and fittings for all the aforesaid goods, in Class 10.
The disputed domain name <seffalairspiromax.com> was registered on January 10, 2019. The disputed domain name <bropairspiromax.com> was registered on April 10, 2019.
The websites at the disputed domain names prominently show a legend reading, “Available for sale. Make offer”. These websites also display a form to be completed by interested visitors, by stating their names, amount offered and email addresses.
Complainant contends that the disputed domain names are identical or confusingly similar to trademarks in which Complainant has rights. The disputed domain names directly incorporate Complainant’s registered trademarks in their entirety. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not differentiate the disputed domain names from Complainant’s trademarks.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no bona fide offering of goods or services as the disputed domain names incorporate a trademark not owned by Respondent. Respondent is not known by a name corresponding to Complainant’s trademarks. One would not legitimately choose as a domain name the terms registered by Complainant unless having specific rights to such names. The disputed domain names are certainly not descriptive or apt to indicate specific characteristics of any goods or services. The registrations by Respondent of the disputed domain names on the same date when the trademarks were applied by Complainant’s affiliate company was an opportunistic act by Respondent, seeking to disrupt Complainant’s business by preventing Complainant from using the disputed domain names.
Respondent probably registered the disputed domain names in the expectation of selling them to Complainant. This is also evident from the website information, stating that the disputed domain names are for sale at USD 990. Such timing indicates Respondent’s desire to register the disputed domain names before Complainant did so. This demonstrates Respondent’s knowledge of and familiarity with Complainant’s brands and business and reveals Respondent’s intent to unfairly capitalize on Complainant’s nascent trademark rights. The practice of registering domain names as soon as the corresponding trademarks have been filed with the relevant trademark office is a well-known practice among cybersquatters.
The websites at the disputed domain names resolve to parked websites stating that the disputed domain names are for sale. Respondent’s registration of two domain names reflecting Complainant’s trademarks demonstrates a pattern of cybersquatting, calculated to prevent Complainant from using its trademarks in cyberspace. Merely having domain names similar to a complainant’s trademark does not constitute noncommercial or fair use of the domain name.
Lastly, Complainant contends that the disputed domain names were registered and are being used in bad faith. Respondent is using a privacy shield. Although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can constitute in certain circumstances a factor indicating bad faith. A motive for using a domain privacy service in this instance has been to increase the difficulty for Complainant to identify Respondent, which does not show good faith.
In addition, the use of the disputed domain names to advertise they are for sale – for an amount well in excess of the actual costs of registration – has no imaginable good faith use. Further, the registration of the disputed domain names on the very same day Complainant applied to the European Union Intellectual Property Office (“EUIPO”) for registration of the trademarks indicates that the registration of the disputed domain names targeted Complainant’s trademarks in an effort to subsequently sell the disputed domain names to Complainant.
There is no indication that Respondent owns registered trademarks or trade names corresponding to the trademarks or to the disputed domain names. There is no possible link between Respondent and the disputed domain names that could be inferred from the details known of Respondent from the webpage relating to the disputed domain names. These circumstances support a finding that the disputed domain names were registered and are being used in bad faith.
It is highly unlikely that at the time of the registrations, Respondent was not aware of the rights Complainant would assume in the trademarks by registering them, or of the value of said trademarks. Respondent bears no relationship to Complainant’s trademarks and the disputed domain names have no other meaning except for referring to Complainant’s names and trademarks. There is no way in which Respondent could use the disputed domain names legitimately. Respondent should be considered to have registered and to be using the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
Complainant has shown that it is the parent company to IVAX. Annexes 6 and 6.1, where Complainant’s legal counsel declares that IVAX, a registered company incorporated in the Netherlands, is wholly-owned, directly or indirectly, by Complainant. Complainant also has shown that IVAX is the owner of trademark registrations for SPIROMAX, SEFFALAIR SPIROMAX, and BROPAIR SPIROMAX. See section 4 above.
On January 6, 2020, the Panel issued Administrative Procedural Order No. 1, requesting Complainant to submit a signed statement by IVAX that it is aware of the present proceeding and that it agrees – should the remedy requested in the Complaint be granted – that the disputed domain names be transferred to Complainant. On the same day, Complainant complied with the procedural order by providing a statement, duly signed and dated by IVAX’s authorized signatory, declaring that IVAX is aware of the present proceedings and that it authorizes Complainant Teva Pharmaceutical Industries Ltd. to become the owner of the disputed domain names, should this Panel decide in favor of Complainant. Therefore the Panel is satisfied that Complainant has rights in the SPIROMAX, SEFFALAIR SPIROMAX, and BROPAIR SPIROMAX marks for purposes of Policy paragraph 4(a)(i) and, in particular, that it had such rights at the time of filing the Complaint.
In this regard, the Panel notes that the disputed domain names were registered on the same dates where the applications for the marks SEFFALAIR SPIROMAX and BROPAIR SPIROMAX were filed with EUIPO. This fact does not deprive Complainant of its standing in this proceeding because, as seen above, its rights in the marks existed at the time of filing the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3 (“While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed”).
The Panel also notes that - disregarding the addition of the top level domain and the deletion of the spaces - the disputed domain name <seffalairspiromax.com> is identical to the SEFFALAIR SPIROMAX trademark, while the disputed domain name <bropairspiromax.com> is identical to the BROPAIR SPIROMAX trademark.
In addition, the disputed domain names entirely incorporate the SPIROMAX mark and are confusingly similar thereto, considering that “spiromax” is not a dictionary, descriptive, or common term.
The Panel concludes that the first requirement of paragraph 4(a) of the Policy is met.
The Panel further notes that, as reported by the Registrar, the registrant or record of the disputed domain names, i.e. Respondent, is “Super Privacy Service LTD c/o Dynadot”. Since there is no evidence that such entity is known, commonly or otherwise, by either of the disputed domain names, Policy paragraph 4(c)(ii) does not apply.
Complainant also has shown that the websites at the disputed domain names are being used exclusively to offer the disputed domain names for sale, previously for USD 990, an amount in excess of the registration costs, and presently by asking interested visitors to the websites to post their offers to purchase the disputed domain names.
As stated above, the disputed domain names contain Complainant’s mark SPIROMAX in its entirety, and nothing on the casefile suggests that Respondent is a legitimate user of this mark. There is no evidence of any appointment, authorization or license given by IVAX. Instead, Respondent is clearly behaving as a typical cybersquatter attempting to extract monies from the legitimate owner of the SPIROMAX marks, by eliciting offers to purchase the disputed domain names. In addition, Respondent is diverting Internet users presumably looking for Complainant’s trademarks and medicinal products to Respondent’s own websites at the disputed domain names. Obviously, this use of the disputed domain names is neither bona fide, nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraphs 4(c)(i) and 4(c)(iii). Therefore, Complainant has succeeded in making a prima facie case that Respondent does not have any rights or legitimate interests in the disputed domain names.
Since Respondent failed to submit any explanation whatsoever for its reasons for having registered and used the disputed domain names as shown, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain names. Thus, the second requirement of the Policy is also met.
Complainant has shown that IVAX registered the SPIROMAX trademark some eighteen years before the registration of the disputed domain names. See section 4 above. Complainant also has shown that the registration of the disputed domain names was made on the same dates IVAX filed for the registration of the SEFFALAIR SPIROMAX and BROPAIR SPIROMAX trademarks with EUIPO. The Panel is of the view that Respondent must have been aware of IVAX’s marks, products, since it was closely observing IVAX’s activities with regard to the registration of its trademarks, and registered the disputed domain names presumably to interfere with IVAX’s nascent trademark rights. In all likelihood, and discarding miraculous coincidences - in fact two of them - Respondent must have been targeting IVAX when it registered the disputed domain names, identical to the marks just being filed. For these reasons, the Panel finds that the registration of the disputed domain names was in bad faith.
Complainant also has shown that Respondent’s use of the disputed domain names was offering them for sale for a sum presumably in excess of their registration costs, in a classical example of cybersquatting. In the terms of the Policy paragraph 4(b)(i), Respondent registered the disputed domain names primarily for the purpose of selling, or otherwise transferring their registrations to the owner of the trademarks for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names. This is a circumstance of registration and use in bad faith of the disputed domain names.
The fact that Respondent failed to reply to any of Complainant’s contentions in this proceeding reinforces the Panel’s overall impression that Respondent is acting in bad faith.
For the above reasons, the Panel finds that the disputed domain names were 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 names <bropairspiromax.com> and <seffalairspiromax.com> be transferred to Complainant.
Roberto A. Bianchi
Sole Panelist
Date: January 8, 2020